4:14-cv-01094
S.D. Tex.Jul 24, 2015Background
- Lennar (plaintiff) designed and registered two townhome plans (Burgundy and Bordeaux) and alleged Perry (defendant) copied them when Perry prepared competing townhome plans (Perry 2249 and 2255) for a nearby development project.
- Perry's architect inspected Lennar's units and obtained Lennar floor plans shortly before submitting Perry's bid; Perry won the lot and built the homes Lennar claims infringe.
- Lennar registered the Burgundy and Bordeaux with the Copyright Office but did not disclose in the applications that those designs were modified iterations of earlier Lennar designs.
- Perry moved for summary judgment arguing (inter alia) Lennar’s registrations are invalid, many plan elements are unprotectable (dictated by lot size, development rules, and market demands), and any copying concerned unprotectable elements.
- The court found genuine factual disputes on copying and on ownership of underlying iterations, but held as a matter of law that the similarities concern unprotectable elements (general layouts constrained by external factors) and granted summary judgment for Perry.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity of registrations / failure to disclose derivative nature | Lennar: registrations suffice; ownership of underlying iterations means omission is immaterial | Perry: omission of derivative status to Copyright Office invalidates registrations | Court: registrations withstand challenge — omission would not have been material because Lennar likely owned underlying works; referral to Register unnecessary here |
| Ability to sue on elements that derive from prior works | Lennar: registering derivative work owned by same party permits suit on entire design | Perry: registration of derivative should only permit suit on newly original elements | Court: registration of derivative owned by same party is sufficient to sue on the entire design (owner may enforce underlying and added elements) |
| Originality / copyrightability (thin copyright due to constraints) | Lennar: overall arrangement and "look and feel" of plans are protectable as a whole | Perry: lot size, development criteria, market forces and standard features leave only limited expressive choices; copyright, if any, is thin or nonexistent | Court: many layout choices were dictated or heavily constrained; original contribution is slight (thin copyright) and most shared features are unprotectable |
| Copying / substantial similarity to protectable elements | Lennar: Perry copied the overall layouts and expressive combination of elements | Perry: even if there was copying, it was of unprotectable elements (general layout, standard features) | Court: fact issue exists on factual copying, but after filtering out unprotectable elements no reasonable juror could find infringement — summary judgment for Perry |
Key Cases Cited
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (originality requires independent creation and minimal creativity; facts/ideas not protected)
- Positive Black Talk, Inc. v. Cash Money Records, Inc., 394 F.3d 357 (5th Cir. 2004) (factual copying requires proof of access and probative similarity; compare works as a whole)
- Gen. Universal Sys., Inc. v. Lee, 379 F.3d 131 (5th Cir. 2004) (registration is prerequisite to suit; side-by-side substantial-similarity test)
- Eng’g Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335 (5th Cir. 1994) (copyright protects original constituent elements; apply idea/expression and scenes-a-faire doctrines)
- Nola Spice Designs, LLC v. Haydel Enters., Inc., 783 F.3d 527 (5th Cir. 2015) (filter out unprotectable elements before assessing substantial similarity)
- Zalewski v. Cicero Builder Dev., Inc., 754 F.3d 95 (2d Cir. 2014) (apply merger and scenes-a-faire to architectural works; constrained design options produce a "thin" copyright)