Architect that was terminated from a project filed a copyright infringement complaint against an architect that “re-designed” the project allegedly copying the essence of the original design as well as a number of specific design features.  The federal district trial court granted a 12(b)(6) motion to dismiss the action — making a determination that the two designs were not substantially similar and that the original copyrighted design was not infringed.   On appeal, it was held that the district court acted properly in considering the question of non-infringement as a matter of law on a motion to dismiss instead of having to allow the question to go to a jury as a question of fact.    The complaint, together with the architectural drawings that were attached as an exhibit to the complaint, provided sufficient information for the district court to evaluate the allegations on the face of the complaint and reach a determination that the complaint did not adequately allege substantial similarity between the second architect’s work and that of the original architect.

In Peter F. Gaito Architecture, LLC v. Simone Development Corp., 602 F.3d 57 (3rd Cir. 2010), the plaintiff architect, Peter F. Gaito, teamed with a development company to jointly submit a proposal to the City of New Rochelle, NY for a project.  The architect drafted plans that included the design contents, concepts, zoning information and statistics regarding the proposal to make to the city.  The proposal consisted of plans for a residential high-rise tower, retail space at the base of the tower, a new pedestrian plaza, a public park, and an above-ground parking garage.  The city awarded the project to this team, and the architect then proceeded to prepare additional schematics and registered its designs with the U.S. Copyright Office.   A couple months later, the architect and the developer got into a fee dispute.  Due to the fee dispute, the developer terminated its agreement with the architect and retained the services of a different architect (“defendant” or “second architect”).

The first architect filed suit against the developer and the second architect alleging that the “re-design” for the project was based largely on the plaintiff architect’s designs.  Thirty five similarities between the designs were alleged.   According to the court:

“They include similarities as to location (such as the placement of a new park, parking garage, public plaza, “plaza connection,” “elevator stair entry tower,” and “public landscaped open space”); similarities as to certain features and functions (such as the inclusion of a new parking garage, a “landscaped street level plaza,” “on site parking for both residential and retail use,” a water feature, public art, active retail space at the base of a residential tower, boutique shops with “the flexibility for a potential single larger tenant,” “architecture that was light, airy, transparent, made of glass with hints of traditional materials,” a tower with a “slender profile,” balconies for the residential units, a parking garage with a pre-cast masonry facade, as well as certain similarities with respect to the orientation of the project); and similarities as to parameters (such as a floor-area-ratio of 5.5, a parking garage with 850 parking spaces, retail space of 44,000 square feet, and professional office space of 2,500 square feet). Id. ¶¶ 131-204. Plaintiffs’ designs and SLCE’s re-designs are attached to the Amended Complaint as Exhibits C and N.”

In affirming the district court decision that there was no substantial similarity in the designs, the appellate court explained that:

“With respect to that question, the district court compared the various features and design elements of the “predominant” high-rise building in each design, and concluded that “[t]he overall visual impressions of the two designs are entirely different,” and that “[n]o reasonable juror would be disposed to … regard their aesthetic appeal as the same.” Id. at 9 (internal quotation marks omitted). With respect to the various specific similarities identified by plaintiffs, the district court concluded that such “features are common to countless other urban high-rise residential developments,” and thus amounted to mere “abstract ideas or concepts” that are not protected under the Copyright Act. at 10. Based on this analysis, the district court dismissed plaintiffs’ copyright infringement claim, concluding that there was no substantial similarity between defendants’ re-design and the protectable elements of plaintiffs’ design.”

The appellate court acknowledge that the test for infringement of a copyright is vague, and that the “determination of the extent of similarity that will constitute a substantial, and hence infringing, similarity presents one of the most difficult questions in copyright law, and one that is the least susceptible of helpful generalizations.”  But the court states that the question of substantial similarity is not exclusively reserved for resolution by jury, and that a trial court can resolve that question as a matter of law, and that indeed,

“Where, as here, the works in question are attached to a plaintiff’s complaint, it is entirely appropriate for the district court to consider the similarity between those works in connection with a motion to dismiss, because the court has before it all that is necessary in order to make such an evaluation. If, in making that evaluation, the district court determines that the two works are “not substantially similar as a matter of law,”[citation omitted] the district court can properly conclude that the plaintiff’s complaint, together with the works incorporated therein, do not “plausibly give rise to an entitlement to relief.”

Having found that the district court was entitled to determine the question of copyright infringement as a matter of law, the appellate court turned to the question of whether the decision by the judge should be sustained on a de novo review of the case.  In this regard, the court states:

“The standard test for substantial similarity between two items is whether an ‘ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the same.’ ” [citation omitted]  In applying the so-called “ordinary observer test,” we ask whether “an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.”

The court went on to explain the appropriate analysis as follows:

“[W]e have disavowed any notion that “we are required to dissect [the works] into their separate components, and compare only those elements which are in themselves copyrightable.” [citation omitted].  Instead, we are principally guided “by comparing the contested design’s ‘total concept and overall feel’ with that of the allegedly infringed work,” [citation omitted] as instructed by our “good eyes and common sense,” [citation omitted] (alteration omitted). This is so because “the defendant may infringe on the plaintiff’s work not only through literal copying of a portion of it, but also by parroting properties that are apparent only when numerous aesthetic decisions embodied in the plaintiff’s work of art-the excerpting, modifying, and arranging of [unprotectable components] …-are considered in relation to one another.”[citation omitted]  Thus, in the end, our inquiry necessarily focuses on whether the alleged infringer has misappropriated “the original way in which the author has ‘selected, coordinated, and arranged’ the elements of his or her work.”

After explaining key differences in the design details between the two designs in question, the court concluded that most critically, “it is patent that the overall visual impressions of the two designs are entirely different,” and that “after carefully considering the various alleged similarities between plaintiff’s design and defendants’ re-design, it is clear ‘that no more was taken than ideas and concepts.’”  Accordingly, the judgment of the district court was affirmed.