United States District Court, N.D. Ohio, Western Division
G. Carr Sr. U.S. District Judge
a copyright-infringement case.
Design Basics, LLC (DB), creates, markets, and licenses
architectural plans for single-family homes. (Doc. 58 at
¶1). It contends that defendants - Forrester Wehrle
Homes, Inc.; Wehrle Development, Ltd.; and their principals
Jeffrey, Richard, and Joseph Wehrle (collectively, FWH) -
infringed DB's copyrights in twenty-three architectural
plans. (Id. at ¶¶35-36). The defendants
allegedly did so by copying DB's plans, marketing the
copied plans, creating unauthorized derivative works, and
using DB's plans to build homes. (Id. at
are, inter alia, the defendants' motions for
summary judgment on the issue of substantial similarity (Doc.
82) and to exclude the declaration of Carl Cuozzo. (Doc. 97).
Because FWH has not shown that no reasonable jury could find
that its designs are substantially similar to DB's works
at the protected level of expression, I deny the motion for
summary judgment. I also deny the motion to strike.
an architectural-design firm based in Omaha, Nebraska. (Doc.
58 at ¶¶1, 10). Since the 1980s, DB has
“marketed its original custom and ready-made home plans
for single and multi-family homes through plan catalogs, home
building industry publications . . . client-specific
publications, and the internet.” (Doc. 83-1 at 2). DB
holds copyrights in roughly 2, 000 home designs. (Doc. 82-1
at 8); see also Design Basics, LLC v. Lexington Homes,
Inc., 858 F.3d 1093, 1096 (7th Cir. 2017) (“[DB]
and their affiliates claim rights to some 2700 home
itself as “a leader in the residential home plan
industry” (Doc. 83-2 at ¶19), DB observes that,
each year between 1998 and 2005, it generated an average of
$4 million by licensing its design plans. (Id. at
¶20). After the housing-market collapse of 2008,
however, DB's licensing revenues shrank by seventy-five
percent. (Id. at ¶¶20). DB's owners
started looking for someone to take over the business, and,
in 2009, Myles Sherman and Patrick Carmichael purchased DB.
(Id. at ¶¶4, 7).
the change in ownership, DB has “authored approximately
350 new original architectural works[.]” (Id.
company also began undertaking copyright litigation in
federal courts across the country. Lexington,
supra, 858 F.3d 1096-97 (noting Carmichael's
testimony that “proceeds from litigation have become a
principal revenue stream for [DB]”). Based on a search
of the Public Access to Court Electronic Records (PACER)
database, it appears that DB has filed at least 103 copyright
infringement lawsuits since June, 2009, with the vast
majority of the filings coming in or after 2013. As the
Seventh Circuit recognized, the flood of litigation is a
product of the company's internal and acknowledged
“bounty program.” According to Sherman,
“[t]heft of DB's readily available copyrighted
works is rampant and has been for nearly two decades - since
the rise of the internet and the ready availability of its
plans.” (Doc. 83-2 at ¶10). Accordingly, DB
“offers its employees incentives to scout out potential
copyright infringement cases, paying its employees a
finder's fee in the form of a percentage of the net
recovery relating to any home plans that they located”
on the Internet. Lexington, supra, 858 F.3d
DB's Relationship with FWH
a family-run business located in Maumee, Ohio, that builds
homes in Northwest Ohio and Southeastern Michigan. (Doc. 81-1
at 4-10; Doc. 87-2 at ¶¶1-2).
relationship between DB and FWH dates back to 1993, when DB
licensed two of its architectural plans - the Ashton and the
Albany - to FWH. (Doc. 58 at ¶37). Since then, DB,
whether on its own initiative or at the request of FWH,
mailed at least fifteen of its catalogs containing additional
architectural designs to FWH. (Id.; Doc. 83-3 at
March, 2013, while DB was preparing “marketing
efforts” in Ohio, the company “became aware that
[FWH] had violated its copyrights in one or more distinct
ways.” (Doc. 58 at ¶35). DB acquired this
information when its “senior designer, ” Carl
Cuozzo, visited FWH's website and concluded that
FWH's designs infringed DB's copyrighted plans. (Doc.
83-3 at ¶4).
filed this suit in April, 2015, alleging that FWH's
designs infringed DB's copyright in fifteen copyright
works. (Doc. 1 at ¶26).
November, 2016, DB filed its second amended complaint. This
complaint alleged that twenty-nine of FWH's plans
infringed DB's copyright in twenty-three of its own
designs. (Doc. 58 at ¶¶35-36). It also alleged that
FWH used either DB's plans, or plans FWH made by copying
DB's plans, to build more than three hundred homes in
are nine counts in the second amended complaint:
• Count One: Infringement of DB's copyrighted works
by “scanning, copying, and/or reproducing unauthorized
copies thereof, ” in violation of 17 U.S.C. §
• Count Two: Infringement of DB's copyrighted works
by “publicly displaying on [FWH's] website(s) and
elsewhere, for purposes of advertising and marketing,
unauthorized copies or derivatives thereof, ” in
violation of 17 U.S.C. § 106(5).
• Count Three: Infringement of DB's copyrighted
works by “creating derivatives therefrom in the form of
two dimensional plans and fully constructed residences,
” in violation of 17 U.S.C. § 106(2).
• Count Four: Infringement of DB's copyrighted works
by “advertising, marketing, and/or selling one or more
houses based upon copies or derivatives of said works,
” in violation of 17 U.S.C. § 106(3).
• Counts Five through Eight: Infringement as described
in Counts One through Four committed “willfully.”
• Count Nine: Violation of the Digital Millennium
Copyright Act, 17 U.S.C. § 1202, et seq., by
“remov[ing] and omitt[ing] DB's copyright
management information from copies of DB's works, ”
and distributing copies or derivatives of such works with the
knowledge that distributing them without DB's copyright
management information would induce and facilitate further
infringement of DB's copyrights.
(Doc. 58 at ¶¶45, 47, 49, 51, 53, 55, 57, 59,
originally asserted an “independent creation”
defense to DB's claims, but it later withdrew the defense
“with prejudice” as to all of the allegedly
infringing works except FWH's Franklin design. (Doc. 49
closed in mid-April, 2017, and, after I denied FWH's
belated, eleventh-hour motion to extend fact discovery (Docs.
73, 77), summary-judgment practice got underway in July,
2017. The defendants filed: 1) a motion for partial summary
judgment on statute-of-limitations grounds (Doc. 81); 2) a
motion for summary judgment on the issue of the substantial
similarity of the parties' works (Doc. 82); and 3) the
motion to strike Cuozzo's declaration (Doc. 97).
filed its own motion for partial summary on the issues of
FWH's access to its designs and the validity of DB's
copyrights. (Doc. 83). It also filed motions to strike and
exclude the reports of defendants' experts John D.
Gugliotta and Richard Kraly. (Docs. 84, 89).
order entered November 14, 2017, I granted in part and denied
in part FWH's motion to exclude Kraly's original
report and granted in full the motion to exclude Kraly's
supplemental report. Design Basics, LLC v. Forrester
Wehrle Homes, Inc., 2017 WL 5467152 (N.D. Ohio)
(Design Basics I).
separate order issued that day, I concluded that the
parties' briefs were insufficient to allow me to
determine “whether there is a triable issue on the
question of the works' substantial similarity.”
Design Basics, LLC v. Forrester Wehrle Homes, Inc.,
2017 WL 5444569, *1 (N.D. Ohio) (Design Basics II).
thing, DB misrepresented the state of the law by claiming
that the Sixth Circuit had yet to provide “a clear and
unequivocal method of analyzing substantial similarity for
architectural works.” (Doc. 89 at 32). As I explained -
and as a Magistrate Judge of this District had previously
explained to DB's counsel when counsel raised this same
argument in an earlier case, see Design Basics,
LLC v. Petros Homes, Inc., 2017 WL 2842783, *2 (N.D.
Ohio) (Parker, J.) - the Sixth Circuit evaluates the
substantial similarity of all copyrighted works under a
[T]he first step requires identifying which aspects of the
artist's work, if any, are protectible by copyright; the
second involves determining whether the allegedly infringing
work is substantially similar to protectible elements of the
artist's work. We approve this method and adopt it.
The essence of the first step is to filter out the
unoriginal, unprotectible elements - elements that were not
independently created by the inventor, and that possess no
minimal degree of creativity - through a variety of analyses.
Design Basics II, supra, 2017 WL 5444569 at
*2 (quoting Kohus v. Mariol, 328 F.3d 848, 853 (6th
to DB's representation, the Circuit had applied this
two-step filtration test to architectural works specifically
in Tiseo Architects, Inc. v. B & B Pools Serv. &
Supply Co., 495 F.3d 344, 345 (6th Cir. 2007)
(“Because the district court properly analyzed the
similarity of the works after filtering out the unprotectable
elements of Tiseo Architects' drawings, the judgment of
the district court is affirmed.”).
part, FWH focused on explaining “why certain
constituent elements of DB's plans . . . are not
themselves original or copyrightable.” Design
Basics II, supra, 2017 WL 5444569 at *3.
focus was misguided, I concluded, because:
I do not understand DB to be claiming a copyright in these
kinds of standard features or elements, which the Copyright
Act in any event excludes from protection. See 17
U.S.C. § 101. Rather, DB seems to claim copyright
protection in the allegedly unique way in which it has
arranged these kinds of elements in each of its home designs.
Yet the defendants' briefs and supporting materials
devote less attention to that question.
I directed the parties to file supplemental briefs on the
question whether, “viewing the evidence in the light
most favorable to DB, a reasonable jury could find that
FWH's design plans are substantially similar to DB's
plans at the protected level of expression.”
Id. at *3.
specifically, I ordered FWH to identify “what parts of
DB's architectural work - the overall look and feel, the
selection, composition, and arrangement of standard or
unprotected elements, or other design choices and elements -
amount to unprotected expression and to protected
expression.” Id. at *5. In doing so, I
directed FWH to “support such claims by citing to the
record, ” with all citations in compliance with
Fed.R.Civ.P. 56(c)(1). Id. As to DB, I ordered it to
“identify, with as much specificity as the record
permits - and by citing to the record in accordance with
Fed.R.Civ.P. 56(c)(1) - what parts of its architectural works
amount to protected expression.” Id. at *6.
Summary judgment is appropriate under Fed.R.Civ.P. 56 where
the opposing party fails to show the existence of an
essential element for which that party bears the burden of
proof. Celotex Corp. v. Catrett, 477 U.S. 317, 322
(1986). The movant must initially show the absence of a
genuine issue of material fact. Id. at 323.
the movant meets that burden, the “burden shifts to the
nonmoving party [to] set forth specific facts showing there
is a genuine issue for trial.” Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 250 (1986). Rule 56
“requires the nonmoving party to go beyond the
[unverified] pleadings” and submit admissible evidence
supporting its position. Celotex, supra,
477 U.S. at 324.
accept the non-movant's evidence as true and construe all
evidence in its favor. Eastman Kodak Co. v. Image Tech.
Servs., Inc., 504 U.S. 451, 456 (1992).
prevail on an infringement claim, a copyright holder must
establish that: 1) it owns a valid copyright in the work at
issue; 2) the defendant copied its work; and 3) the copying
was wrongful. Kohus, supra, 328 F.3d at
853. As I explained in Design Basics II,
supra, 2017 WL 5444569 at *1:
The plaintiff can prove copying “with either direct
evidence of copying, ” or, as DB attempts to do here,
“through an inference of copying.” Robert L.
Stark Enterprises, Inc. v. Neptune Designs Grp., LLC,
2017 WL 1345195, *5 (N.D. Ohio) (Gaughan, J.).
To generate an inference of copying, the copyright owner must
show “(1) access to the allegedly-infringed work by the
[infringer] and (2) a substantial similarity between the two
works at issue.'” Id. (quoting
Kohus, supra, 328 F.3d at 853-54).
Because “[n]ot all copying . . . is copyright
infringement, ” Feist Publ'ns, Inc. v. Rural
Tel. Serv. Co., 499 U.S. 340, 348 (1991), the plaintiff
must establish that “the defendant's work is
‘substantially similar' to protectible elements of
the plaintiff's work, ” Sturdza v. United Arab
Emirates, 281 F.3d 1287, 1295 (D.C. Cir. 2002). Thus
“the term substantial similarity is properly reserved
for similarity that exists between the protected elements of
a work and another work.” Zalewski [v.
Cicero Builder Dev., Inc., ] 754 F.3d , 101 [(2d
determine whether an instance of copying is legally
actionable, a side-by-side comparison must be made between
the original and the copy to determine whether a layman would
view the two works as substantially similar.”
Lennar Homes of Tex. Sales & Marketing, Ltd. v.
Perry Homes, LLC, 117 F.Supp.3d 913, 933 (S.D.
Tex. 2015); see Kohus, supra, 328 F.3d at
857 (“the inquiry in the second prong of the
substantial similarity test should focus on the intended
audience, ” which “will ordinarily be the lay
public”) (internal emphasis omitted).
Protected Level of Expression in Architectural Works
architectural work” is “the design of a building
as embodied in any tangible medium of expression, including a
building, architectural plans, or drawings.” 17 U.S.C.
protection in such works extends to “the overall form
as well as the arrangement and composition of spaces and
elements in the design, but does not include individual
standard features.” Id. Nor does protection
extend to the “standard configurations of spaces as
well as common windows, doors, ...