Precedents In The Realm of Copyright Protection For Architectural Works
Shine v. Childs et al., 2005 U.S. Dist. LEXIS 16525 (S.D.N.Y.) is the first decision from a Second Circuit court interpreting the 1990 Architectural Works Copyright Protection Act (the “AWCPA”), and establishes several key precedents in the realm of copyright protection for architectural works.
In the fall of 1999, Mr. Shine was a graduate student at the Yale School of Architecture (“YSOA”). For his studio class on skyscraper design, Mr. Shine created a work entitled Olympic Tower. Mr. Shine’s Olympic Tower contains a unique twisting structural grid that creates an undulating façade with a pattern of interlocking and protruding diamonds. In December of 1999, Shine presented his Olympic Tower design to a panel of judges which included Mr. Childs. Also included in the presentation was an earlier study model for a skyscraper known as “Shine 99”. Childs expressed enthusiasm for Shine’s Olympic Tower design and was quoted in the YSOA’s annual alumni magazine that “it is a very beautiful shape. [Mr. Shine] took the skin and developed it around the form – great!”
The defendants’ design for the Freedom Tower, first disclosed to the public in December 2003, shows numerous similarities to Shine’s Olympic Tower. Specifically, the defendants’ design consists of a building that tapers and twists as it rises, much like Shine’s Olympic Tower. Also, both buildings incorporate a twisting structural grid of symmetrical, elongated, diagonal columns that follow the outer surface of the building. The structural grid of both buildings is enclosed by a façade composed of uniformly sized, elongated diamonds set tip to center that expresses the underlying structural grid. Based on the similarities, Shine brought suit against the defendants, alleging infringement of his copyrights in both Olympic Tower and Shine 99. Defendants moved to dismiss or, in the alternative, for summary judgment.
In an August 10, 2005 opinion, Chief Judge Michael Mukasey ruled that questions of fact remained as to the substantial similarity between Mr. Shine’s Olympic Tower and defendants’ Freedom Tower design for the World Trade Center Site. In reaching its decision, the Court clarified the standard for determining protectability of an architectural work, as well as the appropriate test for assessing substantial similarity of two architectural works and the role of experts in such an assessment.
The Court first considered defendants’ contention that Shine’s works did not qualify for protection under the AWCPA. In making this determination, the court was faced with having to decide at what point along the design continuum an architectural work becomes protectable as a “design of a building.” The defendants argued that the AWCPA extended protection only to the design of a building that was capable of enabling construction. The Court disagreed. Relying upon earlier cases involving the protectability of architectural plans as pictorial, graphical and sculptural works, the court held that architectural works are subject to the same standard as other copyrightable works and therefore do not need to enable construction before they qualify for protection. Rather, an architectural work, like any other copyrightable work, must merely invoke “the specific expression and realization…of ideas.” Applying this standard to Shine’s works, the court held that both Shine ’99 and Olympic Tower satisfied the threshold of level of expression and constituted the “design of building” under the AWCPA.
The Court then considered whether Shine’s works were sufficiently original to qualify for protection. Again, the Court held that the standard for originality under the AWCPA is the same as the standard which applies to other architectural works. It noted that although individual elements of Shine’s works may have been used in previous works, the plaintiff’s arrangement of the elements resulted in two entirely original designs. Therefore, Shine’s works were entitled to full protection under the AWCPA.
The Court then found that there was no evidence of “actual copying” of Shine 99, and dismissed plaintiff’s claim of infringement of that copyright. However, the Court found a substantial dispute over the “actual copying” of Olympic Tower, and therefore turned to the issue of whether a reasonable jury could find substantial similarity. Defendants contended that substantial similarity should be analyzed using the test announced in Computer Assocs., Int’l v. Altai, 982 F2d. 693 (2d Cir. 1992), in which the Second Circuit dissected the copyrighted work to reveal a protectable “kernel” of expression and then compared the “kernel” to the infringing work. The shine court rejected this invitation and again applied the traditional copyright law. It held that the “total concept and feel test” standard should be applied in AWCPA cases. The Court noted that the standard was particularly appropriate in light of the language of the AWCPA, which extends to protection to the “overall form” of an architectural design as well as individually copyrightable elements.
Finally, the Court considered admissibility of expert testimony on the issue of substantial similarity. Defendants argued that expert testimony should be considered -- a position which the Court found strange, since both sides had submitted conflicting declarations from well-qualified experts. Yet again, the Court applied traditional copyright law and determined that expert testimony would be inadmissible on this issue, and that substantial similarity is to be assessed from the perspective of the ordinary lay observer. The Court then found that reasonable jurors could disagree over whether the similarities in “total concept and feel” between the Olympic Tower and Freedom Tower were the result of impermissible appropriation, and denied defendants’ motion for summary judgment with respect to Olympic Tower.
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ramifications for intellectual property practice, please contact the
author of this issue, Managing Principal Andrew Baum
(email@example.com), at Darby & Darby P.C. (www.darbylaw.com) in New
York and Seattle.
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