T-Peg v. Isbitski, et al. 03-CV-462-SM 04/06/05 UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

T-Peg, Inc. and Timberpeg East, Inc., Plaintiffs

v. Crvrl No. 03-CV-462-SM Opinion No.

Stanley J. Isbitski, Vermont Timber Works, Inc. and Douglas S. Friant, Defendants

O R D E R

Plaintiffs move for reconsideration of the court's order of

February 9 ,2005, granting summary judgment in favor of defendants. Defendants Vermont Timber Works, Inc. ("VTW") and

Douglas Friant object. Plaintiffs' motion for reconsideration is

granted, but, on reconsideration, plaintiffs' additional reguests

for relief are denied, and the court's previous order stands.

The Legal Standard

"Under Fed. R. Civ. P. 59(e) a court may alter or amend a

judgment based on a manifest error of law or fact or newly

discovered evidence." Zukowski v. St. Luke Home Care Program,

, 282 n.3 (1st Cir. 2003) (internal guotation marks omitted) (quoting Aybar v. Crispin-Reys,

(1st

Cir. 1997) ) .

Question of Law: Impact the AWPA

Prior to the 1990 enactment of the Architectural Works

Protection Act ("AWPA"), architectural plans were given copyright

protection under

(a)(5), as "pictorial, graphic,

and sculptural works." The AWPA created a new category of

authorship subject to copyright protection: "architectural

works."

(a)(8).

An "architectural work" is the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features.

. The legislative history of the AWPA makes it

clear that "[a]n individual creating an architectural work by

depicting that work in plans or drawing will have two separate

copyrights, one in the architectural work (section 102(a)(8)),

the other in the plans or drawings (section 102(a)(5))." H.R.

Re p . 101-735, at 19, reprinted in 1990 U.S.C.C.A.N. at 6950. The

2 AWPA created a new category of protectable works, but did not, on

its face, create a new category of infringing acts or infringing

works.

It was well established under pre-AWPA decisional law that

"a building [was] not a 'copy' of the underlying plans, with the

result that construction of the structure [did] not constitute

infringement." 1 N immer on Copyright § 2.08 [D] [2] [a] at 2-124 (Rel.

63, Apr. 2004). Plaintiff contends, and defendant appears to

concede, that while a building cannot be a copy of an

architectural plan protected as a pictorial or graphic work

pursuant to

(a)(5), a building can be a copy of a

building design protected as an architectural work pursuant to §

102(a)(8). However, no court has so held. In Hunt v.

Pasternack,

(9th Cir. 1999), the only issue before

the court was "whether the district court erred as a matter of

law in ruling that a valid copyright in an architectural work can

subsist only in a work that has been constructed."

.

In other words, the Hunt court did not decide whether a building

can be a copy of a copyrighted architectural work.

3 Moreover, the Hunt court's characterization of the

legislative history of the AWPA does not support the proposition

that a building can be a copy of an architectural work.

According to the court, "[t]he House Report, in its explanation

of the effective date provisions, also makes clear that an

unconstructed work, embodied only in plans or drawings, can be

infringed by a structure that embodies the copied design."

at 880 (citing H.R. R e p . N o . 101-735, at 23 n.53, reprinted in

1990 U.S.C.C.A.N. at 6954). The court's reference to a structure

that embodies a copied design (rather than to a structure that

embodies a copyrighted design) suggests the court's understanding

that the act of copying must take place prior to the construction

of the infringing building. That is, the building is not the

copy, it is a tangible reflection of the design expressed in an

infringing copy of the design, presumably a reproduction of the

plans or drawings embodying the building design.

Under the law as it existed before 1990, a building was not

a copy of an architectural plan; only a reproduction of a plan

could be a copy of a plan. It would seem to follow logically

that when the copyrighted subject matter is, as in this case.

4 "the design of a building as embodied in . . . architectural

plans," a copy of the design would necessarily take the physical

form of an architectural plan. It may well be that when what is

protected is "the design of a building as embodied in . . . a

building," a copy of the design would take the form of a

building. But in this case, the protected design was never

embodied in a building; it was only embodied in the second set of

preliminary plans.

Assuming, however, that plaintiffs' architectural work could

be copied either by reproducing the second preliminary plans pr

by constructing the building depicted therein, plaintiffs go one

step further, arguing not that their architectural work was

infringed by construction of a building, but that their work was

infringed by the design and construction of a structural frame

for a building, namely VTW's timberframe.

It is indisputable that the timberframe VTW designed and

constructed was capable of supporting a building that reflects

plaintiffs' architectural work, i.e., the "overall form" and the

"arrangement and composition of spaces and elements" embodied in

5 the second preliminary plans. That alone, however, is

insufficient to make the VTW timberframe a copy of plaintiffs'

architectural work, because that frame is sufficiently

accommodating that it could support any number of buildings that

do not embody plaintiffs' architectural work.

Plaintiffs' architectural work includes a specific

arrangement and composition of interior partitions (forming

rooms) as well as door and window openings. While VTW's

timberframe allows for rooms, doors, and windows to be placed as

depicted in the second preliminary plans, nothing in VTW's

timberframe, either as designed in the shop drawings or as built,

reguires those elements to be so placed. To be sure, the

arrangement of the vertical posts in the VTW timberframe makes

some door and window placements impossible, but that arrangement

also leaves available many others that would not reflect

plaintiffs' architectural work. For example, there is no reason

why one could not have built out VTW's timber frame into a house

with many fewer windows and twice as many rooms than the house

depicted in the second preliminary plans. Such a structure, all

would agree, would hardly reflect the design embodied in the

6 second preliminary plans. In short, VTW's timberframe does not

reflect any particular "overall form" or "arrangement and

composition of spaces and elements" because one of its attractive

features is its flexibility - that frame can accommodate multiple

building designs including, but certainly not limited to, the

design embodied in the second preliminary plans.1

There is yet another difficulty with plaintiffs' theory.

Plaintiffs assert, in footnote 2 of their motion for

reconsideration, that their expert provided an opinion sufficient

to create a guestion of fact regarding whether VTW's timberframe

is substantially similar to plaintiffs' architectural work. That

1 Plaintiffs appear to have recognized the ability of the VTW timberframe to accommodate multiple building designs because in October 2003, long after the VTW timberframe had been erected on Isbitski's property, plaintiffs executed a license agreement with Sugar River Bank allowing the Bank "to use the Timberpeg Plans to complete construction of the [Isbitski] House." (Def.'s Mot. Summ. J., Ex. 21.) That license agreement also provided that the Bank was "under no obligation to use the Timberpeg Plans to complete construction of the House - i.e. Bank may complete construction of the House in any manner, including a manner unrelated to the Timberpeg Plans." (Def.'s Mot. Summ. J., Ex. 21.) If the VTW timberframe were a copy of the plaintiff's architectural work, it is difficult to see how it would have been possible to complete construction of the house in a manner unrelated to the Timberpeg Plans which were the sole embodiment of the architectural work plaintiffs claim to be infringed by VTW's timberframe.

7 plaintiffs' expert can identify similarities between VTW's

timberframe and plaintiffs' architectural work - which includes

no frame design - does not, however, create a triable issue of

fact on substantial similarity. Plaintiffs' reliance upon an

expert to establish substantial similarity runs afoul of the

First Circuit's "rule that expert testimony on the topic of

'substantial similarity' is not permissible . . . because the

test is an 'ordinary observer test.'" Segrets, Inc. v. Gillman

Knitware C o .,

, 66 n.ll (1st Cir. 2000) (citing

Concrete Mach. Co. v. Classic Lawn Ornaments,

(1st Cir. 1988)).

Here, the court has no difficulty concluding, as a matter of

law, that neither VTW's shop drawings nor its timberframe is so

similar to the architectural work embodied in plaintiffs' second

preliminary plans "that an ordinary reasonable person would

conclude that the defendant unlawfully appropriated the

plaintiff's protected expression by taking material of substance

and value." Yankee Candle Co. v. Bridgewater Candle Co.,

(1st Cir. 2001) (guoting Concrete Machine, 843 F.3d

at 607). While an ordinary reasonable person might find the house that was built on the VTW timberframe - its arrangement of

windows, exits, stairs, and interior walls and spaces - to be

substantially similar to plaintiff's architectural work, VTW did

not design or build that house; it only designed and built the

timberframe, which, as noted, hardly dictated the particular

interior and exterior arrangement that followed.

Question of Fact: Alleged Admission of Copying

Plaintiffs argue that the court overlooked evidence

purportedly containing admissions to the effect that defendants

copied plaintiffs' architectural plans. The letters from

defendants' counsel that plaintiffs point to state, among other

things: (1) "Timberpeg does not have a case against my client, my

client did not copy their drawings or their frame design." (Pl.'s

Obj. to Summ. J., Ex. H (Welch Ltr.) at 2); (2) "VTW never made

any photocopies of your plans." (Pl.'s Obj. to Summ. J., Ex. I

(Whittington Ltr.) at 2); (3) "VTW does not have a copy of the

plans." (Whittington Ltr. at 2.). No reasonable fact-finder

could conclude that the letters containing the foregoing

statement constitute admissions of unlawful copying. Conclusion

To the extent the February 9, 2005, order fails to give due

consideration to either the impact of the AWPA or to the

distinction between the protection afforded an architectural plan

under

(a) (5) and that afforded under § 102(a) (8),

that order is reconsidered as discussed herein. However,

plaintiffs' further requests for relief are denied, and the

judgment announced in the court's previous order stands, as

modified by this order.

SO ORDERED.

Steven J/McAuliffe ’ Chief Judge

April 6, 2005

cc: W. E. Whittington, IV, Esq. Daniel E. Will, Esq.

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