Tenth Circuit: Insufficient proof of access dooms copyright infringement claimMarch 4, 2009

In a recent decision, the Tenth Circuit affirmed a district court's finding of no copyright infringement after a bench trial and the findings for the defendants on related claims. The district court held there was insufficient evidence of copying, specifically that there was no evidence the defendants had access to the copyrighted work. The copyright infringement claim was the basis for claims under the Lanham Act and New Mexico Unfair Trade Practices Act, and the district court accordingly found for the defendants on these claims as well. The Tenth Circuit affirmed, finding no clear error in this determination. The court held that while there was a "bare possibility" that the defendants had access to the plaintiff's copyrighted work, there was insufficient evidence to reverse the district court's factual determination of no access. Further, the alleged copies were insufficiently similar to meet the "striking similarity" standard which permits access to be presumed. Accordingly, the court affirmed the finding of no copyright infringement. Because the copyright infringement claim was the basis for the Lanham Act and New Mexico Unfair Trade Practices Act claims, the Tenth Circuit also affirmed the district court's findings for the defendants on these claims. More on La Resolana Architects, PA v. Reno, Inc. after the jump.Reno is a developer who was designing and building a housing subdivision in New Mexico. La Resolana provided initial services for developing and designing the subdivision, with La Resolana's architect and president providing design and architectural plans for a prefabricated, modular housing complex. Although the parties met and discussed general ideas of how the homes should be built and their basic required elements (i.e. two bedrooms, living space, garage), they disagreed as to the level of detail provided by Reno at that initial meeting. Ultimately La Resolana faxed at least five different sets of its architectural plans to Reno without receiving notice of receipt, causing La Resolana to send further faxes to Reno's attorneys, resulting in a dispute over whether Reno ever received such architectural plans. Some time later, Reno decided not to use prefabricated homes in the development, obviating the need for La Resolana's architectural designs. In 2003, La Resolana's president observed that the new homes in Reno's development appeared to have the same or similar design La Resolana provided to Reno. Accordingly, La Resolana filed suit against Reno for copyright infringement, violation of the Lanham Act, and the New Mexico Unfair Trade Practices Act. At trial, the parties disputed the extent of plans disclosed during the initial meetings between Reno and La Resolana. La Resolana testified that they were given no specific instructions by Reno other than Reno wanted designs including two bedrooms and two baths, resulting in its plans being original creative works protected by copyright. Then, La Resolana argued that Reno's access to its architectural plans (those allegedly received by fax) resulted in its copying of the designs. Reno argued that it came into the initial meeting with many design details already set, including such specifics as the location of dormers, roof pitch, and that the homes would be in a "U" shape to permit more homes to be placed in the development.Ultimately, the district court credited Reno's testimony and discredited La Resolana's testimony (and that of its expert), and held there was insufficient evidence of copyright infringement. Specifically, the district court held there was insufficient evidence of access to the copyrighted plans, as well as insufficient evidence that the two designs were substantially similar. La Resolana appealed.The Tenth Circuit affirmed. The court held La Resolana failed to establish copying of a factual matter. The court only addressed the matter of copying, and more specifically the lack of proof of access to the copyrighted work, without addressing other issues such as substantial similarity between the architectural plans and the resulting homes, contributory and/or vicarious infringement and indirect infringement. To succeed on a copyright infringement claim, the plaintiff must prove both a valid copyright and evidence of copying. The first element, the validity of the copyright, was not at issue in this case, although Reno raised the issue before the district court. Therefore, La Resolana only had to prove that Reno "unlawfully appropriated protected portions of its copyrighted work." Because proof of direct copying is rare, courts permit plaintiffs to show copying by proving the defendant had access to the copyrighted work and that the two works are substantially similar. In some circuits, proof of access may be met by a showing that the copyrighted work and the accused infringing work are "strikingly similar," leading to an inference that access existed because of the extensive similarity between the works. La Resolana's proof of access was the faxing of numerous copies to Reno's representatives throughout the course of its business. The Tenth Circuit held there was no clear error in the district court's conclusion to the contrary. The court noted "a bare possibility" is insufficient to establish access for purposes of copying. Given the lack of proof of access, the Tenth Circuit next addressed La Resolana's argument that the works were strikingly similar, such that it would be nearly impossible for independent creation to result in the substantially similar works, and therefore creating a presumption of access. The court ultimately held there was insufficient proof of striking similarity. Rather, the court found there were "major differences in the kitchen area, living area, master bath and roof slope, placement of doors, placement of plumbing, and placement of door openings, all of which affect traffic flow and articulation of space." Accordingly, La Resolana also failed to establish that the plans were strikingly similar. Because La Resolana could not prove access to the copyrighted work, its claim of copyright infringement failed, and the Tenth Circuit affirmed the district court's determination of no infringement. Because La Resolana's Lanham Act claim for false designation of origin of a product (the architectural plan) and the New Mexico UTPA claim required proof of copyright infringement, the Tenth Circuit likewise affirmed the district court's finding for the defendant on these claims.To read the full decision in La Resolana Architects, PA v. Reno, Inc., click here.