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Substantial Similarity Test: Altered by Reality?

September 17, 2007  |  from Womble Carlyle Construction Industry Blog

In a recent case in the United States Court of Appeals for the Sixth Circuit, two architectural firms sought the Court's guidance with respect to whether one of the firms had infringed the copyright of the other firms design and site plans. In Tiseo Architects, Inc. v. B&B Pools Service and Supply Co., ---F.3d ---, 2007 WL 2141375 (6th Cir. 2007), the Plaintiff, Tiseo Architects, were engaged by B&B Pools to design a site plan for an expansion project. Prior to Tiseo being hired, however, Gary Olson, another architect, was consulted and received a sketch of the proposed building plane. Mr. Olson indicated that due to time constraints in his schedule, he would be unable to work on the project.

Thereafter, Tiseo also used the sketch and other input from B&B's President to design the site plan which was used by B&B to gain approval from the city zoning board. After it completed the site plan design, B&B paid Tiseo in full, but did not use Tiseo to prepare the construction documents. Instead, B&B retained the original architect, Gary Olson. After the building addition was completed, Tiseo promptly filed its drawings with the Copyright Office and brought suit against B&B, its CEO and its architect, Mr. Olson.

The Sixth Circuit recently heard Tiseo's appeal of the lower court's rejection of its argument that B&B, through its architect, infringed its copyrighted drawings. The Court upheld the lower court's ruling relying finding that while the drawings were in fact similar, due to the reality of the zoning restrictions under which B&B had to operate in the construction of its new addition and the construction reality mandated by the presence of a "load-bearing wall", the Court found that there really weren't many other ways to design the addition. In so holding, the Court overlooked Olson's admitted access to Tiseo's drawings and the "substantial similarity" between the two drawings in upholding the lower court's finding that B&B's floor plans, as designed by Olson, did not infringe Tiseo's copyright.

What is significant about this case is the fact that the Court found against a copyright holder even in the face of the alleged infringer's 1) admitted access to the copyrighted drawings, and 2) the admitted (by the lower court) substantial similarity between the drawings. The reason this is significant is because, in most copyright cases, the two-pronged access and substantial similarity test is used to determine whether a work has infringed the copyright of another work. As a result, architects (especially those located in the jurisdiction of the 6th Circuit) whose designs are dictated in part by the circumstances of the project may not be able to completely rely on copyright protection as a complete solution to the protection of their work. (This blog posted by Culley Carson, a member of Womble Carlyle's construction and real estate development practice group.)

Filed: Construction-Law