Eleventh Circuit combs over copyright law, idea-expression dichotomy in affirming noninfringementMay 16, 2008

In a decision this week, the Eleventh Circuit upheld the district court's decision granting summary judgment of no copyright infringement to individuals and entities associated with two Trump buildings and denying the plaintiff leave to file a third amended complaint. In this regard, the court affirmed a finding that no reasonable, properly instructed jury could find substantial similarity between the plaintiff's copyrighted architectural designs and the design, development, and construction of two Trump Buildings in Sunny Isles Beach, Florida. To conclude otherwise, the court explained, would require a finding the plaintiff owned a copyright in the concept of particular building design features rather than the particular expression of those design features, a conclusion that would improperly extend the protections of copyright law well beyond their proper scope. More concerning Oravec v. Sunny Isles Luxury Ventures, L.C. after the jump.

Plaintiff, Paul Oravec, brought an action for copyright infringement against several parties associated with the construction of the Trump Palace and the Trump Royale, twin high-rise condominiums in Sunny Isles Beach, Florida. Oravec alleged that the defendants infringed his copyrighted architectural designs. In 1995 and 1996, Oravec developed a design for a high-rise building that featured the use of alternating concave and convex segments and elevator cores protruding through the building's roofline. Oravec obtained copyrights on his building designs on July 1, 1996 ("the 1996 Copyright") and May 2, 1997 ("the 1997 Copyright"). Between 1996 and 1999, Oravec mailed versions of his design to as many as 120 individuals and companies and made several in-person presentations to developers. During the same time period, defendants Michael and and Gil Dezer initiated the process of developing the beachfront resort that would be the site of the Trump Buildings. The design of the building was complete in 2000. The copyrighted design and the design of the Trump buildings are depicted below:

On February 15, 2003, Oravec saw a newspaper advertisement featuring a photograph of a model of the Trump Palace. The following day, he visited the resort's sales office and viewed models and brochures depicting the Trump Buildings. Believing the designs resembled his own, Oravec secured copyright registrations for all of his unregistered designs in order to satisfy the jurisdictional prerequisites for an infringement action. In November 2004, Oravec filed suit under the Copyright Act against numerous individuals and entities associated with the Trump Buildings. In April 2006, the parties filed cross motions for summary judgment on a variety of issues. On July 24, 2006, the court entered an order granting summary judgment to defendants on Oravec's infringement claims and denying Oravec's motion to amend. The court found, among other things, that Oravec could not establish infringement of his 1996 and 1997 Copyrights because no reasonable jury could find that the Trump Buildings are substantially similar to Oravec's 1996 and 1997 designs. On appeal, the Eleventh Circuit noted the elements for establishing copyright infringement: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. As noted by the court: "If the plaintiff does not have direct proof of copying, the plaintiff may show copying by demonstrating that the defendants had access to the copyrighted work and that the words are 'substantially similar.'" (quoting Herzog v. Castle Rock Entm't, 193 F.3d 1241, 1248 (11th Cir. 1999)). The Eleventh Circuit defines substantial similarity as existing "where an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work." However, the Supreme Court in Feist noted that not all copying constitutes infringement, and therefore the Eleventh Circuit emphasized the substantial similarity analysis "must focus on similarity of expression, i.e., material susceptible of copyright protection." "Thus, in an action for infringement, it must be determined both whether the similarities between the works are substantial form the point of view of the lay [observer] and whether those similarities involve copyrightable material."

The court noted that in addition to the idea/expression dichotomy, certain statutory provisions specific to architectural works further define the scope of available copyright protection. The Copyright Act's definition of "architectural work" excludes "individual standard features" from the protectible elements of the design, such as "common windows, doors, and other staple building components." H.R. Rep. No. 101-735 (1990). At the same time, the Act includes within the definition of "architectural work" "the arrangement and composition of spaces and elements in the design."

In comparing the works at issue, Oravec based his infringement claims on numerous elements that he contended were present in both his designs and the Trump Buildings, including alternating concave and convex sections, three prominent elevator shafts that protrude above the roof of the building, rounded building ends, constant radius curves, holes in the building, and a twin tower design, among others. The district court determined that the similarities between the Oravec designs and the Trump Buildings exist only at a conceptual level, and the Eleventh Circuit agreed. The court noted that the key distinctive features of Oravec's designs was their use of the alternating concave and convex sections and their use of three partially exposed elevator towers extending above the buildings' roof lines. While such features were also found to be present in the Trump Buildings, the court determined that a comparison of the works revealed numerous significant differences in the expression of these elements, including the fact that the alternating segments appear on both sides of Oravec's designs but only on one side of the Trump Buildings. The court also held that the expression of the elevator towers differed significantly. While Oravec's elevator towers are free-standing are are located within the space created by the alternating convex and concave sections of the building, the Trump Buildings' elevator towers are located within the solid structure of the building. According to the court, these differences, amongst others, precluded a finding of substantial similarity. The court stated that to hold otherwise would require a finding that Oravec owned a copyright in the concept of a convex/concave formula or in that of using three external elevator towers that extend above the roof of a building, a result impermissible under copyright law. Oravec also appealed the district court's refusal to exercise jurisdiction over his claims based upon a copyright application filed after institution of his lawsuit (and issuing in March 2004) under the so-called "effective registration" doctrine. While the Copyright Act provides that "no action of infringement . . . shall be instituted until preregistration or registration of the copyright claim," Oravec noted that courts have eschewed strict application of the registration requirement in cases where a party owns both a pre-existing work and a derivative work that incorporates elements of the original, as he argued was the case here. The court noted that Oravec's reliance on the effective registration doctrine was misplaced as Oravec's March 2004 registration certificate did not identify any unregistered preexisting works. Further, even assuming Oravec created preexisting architectural works, he was attempting to sue on an aspect of those works – the right to prevent construction of buildings embodying his design – that was not included in the pictorial, graphic, or sculptural (PGS) work that he did register. In support, the court cited Eleventh Circuit law holding that a plaintiff cannot use an effective registration theory to sue on aspects of unre