Seventh Circuit: Modifications to Architectural Plan Made at Direction of Commissioning Party Held Not Sufficiently Original to Engender Copyright Protection

Creative Commons License photo credit: Johnnie Utah

On July 26, 2011, the Seventh Circuit affirmed the dismissal on summary judgment of an architectural copyright infringement claim in Nova Design Build, Inc. v. Grace Hotels, LLC.  The plaintiff architectural design firm sued a former client, alleging that the owner of a Holiday Inn Express location infringed the plaintiff’s “design copyright” (whatever that is) by building the hotel based upon the plaintiff’s plans after failing to pay all of the money allegedly due for those plans.

The district court had dismissed the case on the ground that the identifying materials submitted with the plaintiff’s copyright application were not “bona fide” copies and therefore the registration was invalid.  The court found that the original plans had been burgled from its offices (!) and therefore it had to re-construct the plans from memory.  The district court held that this fact was sufficient to invalidate the registration, foreclosing any relief for copyright infringement.

The Seventh Circuit panel, including Judges Easterbrook, Kanne and Wood, chose to affirm on other grounds.  The panel first disposed of an argument that was not made by any party or the district court, but was raised sua sponte by the panel itself at oral argument.  Apparently, the panel, unprompted, was concerned that the federal courts might not have jurisdiction under T.B. Harms, because the defendant raised the obvious defense on these facts that its use was licensed.  When it came time to write up the opinion, the panel had no trouble determining that the presence of a license defense to pleaded infringement did not pose jurisdictional problems (leading one to wonder why they bothered addressing the issue at all in the opinion) and moved on to the merits.

Next, while noting that in order to secure a valid copyright registration the applicant must submit a “bona fide” copy of the work that is virtually identical to the original and produced by directly referring to the original.  The Seventh Circuit noted that there appeared to be conflicting evidence in the record as to whether the plaintiff actually reconstructed the plans from memory or whether it also used hard copies and restored CAD files.  The appeals court affirmed the summary judgement against the defendant, nonetheless, on the ground that the architectural plans were not sufficiently original to warrant copyright protection.  The panel noted that the designs were based upon a pre-existing Holiday Inn Express “prototype” and that the changes or additions made to that prototype were all either unoriginal (e.g. adding an additional floor identical to the floor layout in the prototype) or were new features specifically requested by the defendant and therefore not truly original to the plaintiff.

Here is the decision, for your consideration: