In a recent unpublished decision in the case of Dream Custom Homes, Inc. v. Modern Day Construction, Inc., Anthony Piarulli , Par Custom Drafting, Inc. and Phillip Roush, Case No 11-11284, District Court Docket No. 8:08-cv-01189-EAK-AEP, the U.S. Court of Appeals in and for the Eleventh Circuit affirmed summary judgment in favor of the defendants.
The facts of the case revealed that Piarulli had acquired property in Hernando County and was interested in constructing a home. Piarulli visited a model home belonging to the plaintiff, and discussed the possibility of plaintiff constructing his home. Ultimately, due to several factors including price, standard features, etc., Piarulli decided to enter into a contract with defendant Modern Day for the construction of his home. Dream Custom Homes sued the defendants for construction copyright infringement of its architectural works and drawings. The district court granted defendants motions for summary judgment, and Dream Custom Homes appealed, asserting the following three main points of error against the district court:
- that the district court did not conduct a proper substantial similarity analysis of its claims;
- that the district court did not apply the inverse ratio rule to reduce the proof necessary to show substantial similarity; and
- that the district court did not take judicial notice of prior allegations of copyright infringement to reduce the proof necessary to show substantial similarity.
The Court of Appeals observed that a plaintiff in a copyright case must have a valid copyright and show that original elements of the protected work were copied. Feist Publns, Inc. v. Rural Tel. Serv.Co., Inc., 499 U.S. 340, 361, 111 S.Ct. 1282 (1991). The copying analysis consists of two parts: whether as a factual matter the defendant copied portions of the protected work, and whether as a mixed question of fact and law the copied elements are protected expression. Peter Letterese and Assocs., Inc. v. World Inst. Of Scientology Enters., 533 F.3d 1287, 1300 (11th Cir. 2008). The courts have held that factual copying may be inferred by establishing that the works are strikingly similar or by establishing access and probative similarity. Id. At 1300-1; Herzog v. Castle Rock Entmt, 193 F.3d 1241, 1248 (11th Cir. 1999). Probative similarity requires that an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work. Peter Letterese, 533 F.3d at 1301 n. 16. For the protected expression analysis, a plaintiff must show that there is substantial similarity between the defendant’s work and the original, protected elements of the copyrighted work. Peter Letterese, 533 F.3d at 1301. The Court of Appeals recognized that [A]t the level of protected expression, only the arrangement and coordination of common elements in architectural works is protected, not the common elements themselves; citing Intervest Constr., Inc. v. Canterbury Estate Homes, Inc., 554 F.3d 914, 919 (11th Cir. 2008). This was an important factor in the analysis, as the district court determined that there were approximately eighty (80) dissimilarities between the plaintiffs work and the defendants work.
The Court of Appeals held that Summary judgment is appropriate in copyright infringement cases where the similarities between works concern only non-copyrightable elements of the plaintiff’s work. citing Peter Letterese, 533 F.3d at 1302. The court also held that although there may be proof of access and substantial similarity with respect to the noncopyrightable elements of the works, there is substantial dissimilarity with respect to the protectable elements.Intervest, 554 F.3d at 920. Dream Custom Homes argued that the district court improperly analyzed infringement at the level of protected expression when it called infringement a question of fact. However, the Court of Appeals determined that the district court appropriately performed the substantial similarity analysis by separating what was protectable expression from what was not protectable and by examining the similarities and dissimilarities with respect to the protectable elements. The Court of Appeals held that the district court correctly determined that the differences in the protectable expression were so significant that, as a matter of law, no reasonable properly-instructed jury of lay observers could find the works substantially similar. Citing Intervest.
Dream Custom Homes also argued that the trial court erred in not applying the inverse-ratio rule, under which the proof of substantial similarity necessary to find infringement decreases with increasing proof of access. The Court of Appeals observed that as was noted in Beal v. Paramount Pictures Corp., 20 F.3d 454, 460 (11th Cir. 1994), the inverse-ratio rule had not been recognized in the Eleventh Circuit, and thus, declined to apply it in the instant case.
Finally, Dream Custom Homes argued that the district court erred in not taking notice of defendants alleged prior acts of infringement to lower the substantial similarity threshold. Dream Custom Homes argued that the use of prior act evidence should be used to show willfulness in determining statutory damages. The Court of Appeals reasoned that the use of prior act evidence in determining damages is not an appropriate method to lower the threshold for proof of liability. The court further opined that prior act evidence is not admissible to prove character to demonstrate action in conformity with that character pursuant to the Federal Rules of Evidence, and that the district court was correct in not taking notice of purported prior acts to lower the threshold for substantial similarity.