     11-3298
     Scholz Design v. Sard Custom Homes

 1                     UNITED STATES COURT OF APPEALS

 2                         FOR THE SECOND CIRCUIT

 3                            August Term, 2011

 4   (Argued:   February 23, 2012            Decided: August 15, 2012)

 5                           Docket No. 11-3298

 6                  -------------------------------------

 7                          Scholz Design, Inc.,

 8                          Plaintiff-Appellant,

 9                                  - v -

10       Sard Custom Homes, LLC, Prudential Connecticut Realty,* &
11             Coldwell Banker Residential Real Estate, LLC,

12                          Defendants-Appellees.


13   -------------------------------------

14   Before:    LEVAL, SACK, and HALL, Circuit Judges.

15              Appeal from a judgment of the United States District

16   Court for the District of Connecticut (Janet Bond Arterton,

17   Judge) granting defendants' motion to dismiss.     We conclude that

18   the district court erred in deciding that because the

19   architectural drawings at issue did not contain a level of detail


          *
           By letter dated October 25, 2011, counsel for Prudential
     filed a letter with the Clerk of Court informing the Court that
     "the issues being pursued in the appeal do not involve
     matters that were litigated by Prudential before the District
     Court." Letter dated October 25, 2011, from Patrick M. Fahey,
     Esq. to Office of the Clerk, at 1. Prudential has thereafter not
     participated in this appeal, although it remains technically a
     party to it listed as a defendant-appellee in the caption.
 1   sufficient to enable construction of homes based on them, they

 2   were not protected by the Copyright Act.   We also conclude that

 3   the drawings are sufficiently original to receive protection as

 4   "pictorial, graphic, [or] sculptural works," 17 U.S.C.

 5   § 102(a)(5), under the Copyright Act, and we reverse the judgment

 6   of the district court insofar as it held otherwise.   Because the

 7   court dismissed the plaintiff's claims for breach of contract and

 8   violations of the Digital Millennium Copyright Act based on its

 9   conclusion that the drawings were not protected by copyright, we

10   vacate its dismissal of those claims and to that extent remand

11   the case to the district court.

12             Reversed in part; vacated and remanded in part.



13   Appearances:             LOUIS K. BONHAM, Osha Liang, LLP,
14                            Austin, TX (Holly M. Polglase, Hermes,
15                            Netburn, O'Connor & Spearing, P.C.,
16                            Boston, MA, on the brief) for Plaintiff-
17                            Appellant.

18                            JOHN J. ROBACYNSKI, Alan J. Rome, Rome,
19                            Clifford, Katz & Koerner, LLP, Hartford,
20                            CT, for Defendant-Appellee Sard Custom
21                            Homes, LLC.

22                            THOMAS J. FINN, Paula Cruz Cedillo,
23                            McCarter & English LLP, Hartford, CT,
24                            for Defendant-Appellee Coldwell Banker
25                            Residential Real Estate, LLC.




                                       2
 1   SACK, Circuit Judge:

 2                                BACKGROUND

 3             The plaintiff-appellant, Scholz Design, Inc.

 4   ("Scholz"), alleges that three front-elevation1 architectural

 5   drawings of homes it designed in the late 1980s were copied and

 6   posted on various websites by the defendants in violation of

 7   Scholz's copyrights.   The plaintiff also makes related claims for

 8   breach of contract and violations of the Digital Millennium

 9   Copyright Act, 17 U.S.C. § 1201, et seq.

10             Scholz created technical drawings, or blueprints, for

11   three homes -- which it called the "Springvalley A,"

12   "Wethersfield B," and "Breckinridge A" -- and submitted them to

13   the Copyright Office in 1988 and 1989 together with the front

14   elevation drawings that are the subject of this suit, each

15   showing the appearance of the front of the houses surrounded by

16   lawn, bushes, and trees.    See Scholz Design, Inc. v. Sard Custom

17   Homes, LLC, No. 11-3298, Joint Appendix ("J.A.") at 73, 76, 87

18   (2d Cir. Oct. 11, 2011).2   Scholz was granted registration of

19   copyrights based on all these submissions.




          1
             An "elevation" is a "scale drawing of the side, front, or
     rear of a structure." Am. Heritage Dictionary 580 (4th ed.
     2006).
          2
             These images and the allegedly infringing uses at issue
     may be viewed at http://www.ca2.uscourts.gov/scholzdesign.htm.

                                       3
 1              In February 1992, Scholz and Sard Custom Homes ("Sard")

 2   entered into an agreement (the "Builder Agreement I") permitting

 3   Sard to construct homes using Scholz's home plans, including

 4   these three designs.   See Builder Agreement I at 1-2, J.A. 97-98.

 5   The three-year contract required Sard to pay Scholz $1 per square

 6   foot of each home constructed using its plans, up to a maximum of

 7   $50,000 a year.   Id. at §§ 5,9,10.    Scholz and Sard renewed the

 8   contract for another three-year term in 1995 (the "Builder

 9   Agreement II").   Builder Agreement II at 1-2, J.A. 100-101.      Both

10   agreements required that Sard not "copy or duplicate any of the

11   [Scholz] materials nor . . . [use them] in any manner to

12   advertise or build a [Scholz Design] or derivative except under

13   the terms and conditions of the agreement."    Builder Agreement I

14   at 1; Builder Agreement II at 1.

15              Scholz alleges that, after the termination of Scholz’s

16   agreement with Sard and in a manner not permitted by the

17   agreement, Sard and co-defendant Prudential Connecticut Realty

18   ("Prudential") posted copies of Scholz's copyrighted drawings of

19   the Springvalley and Wethersfield homes on two different websites

20   to advertise Sard’s "ability" to build the homes.    Am. Compl.

21   ¶ 15.   Scholz also alleges that Sard and co-defendant Coldwell

22   Banker Residential Real Estate, Inc. ("Coldwell Banker") copied

23   Scholz's copyrighted image of the Breckinridge design on Coldwell

24   Banker's website for the same unpermitted purpose.    Scholz


                                        4
 1   further alleges that Sard, Prudential, and Coldwell Banker "may

 2   have used, reproduced, displayed, distributed, marketed or

 3   advertised" those designs through other means in addition to the

 4   websites identified.    Am. Compl. ¶¶ 18,33.

 5             In October 2010, Scholz brought suit against the three

 6   defendants in the United States District Court for the District

 7   of Connecticut.   The February 1, 2011, amended complaint alleges

 8   two counts of copyright infringement, two violations of the

 9   Lanham Act, 15 U.S.C. § 1051 et seq., breach of contract, and

10   violations of the Digital Millennium Copyright Act ("DMCA"), 17

11   U.S.C. § 1201 et seq.    Am. Compl. ¶¶ 9-72.

12             The defendants moved to dismiss the complaint, arguing

13   inter alia that the pictures "could not have been copyrighted as

14   architectural works because, the copyrights having been granted

15   in 1988 and 1989, they predate the [Architectural Works Copyright

16   Protection Act ("AWCPA"), Pub. L. No. 101-650, tit. VII (1990)]

17   and that the conceptual nature of these depictions means that

18   they are not protected by Scholz's copyright because they contain

19   insufficient detail from which a building could be constructed."

20   Scholz Design, Inc. v. Sard Custom Homes, LLC, No. 10-cv-1681,

21   2011 WL 2899093, at *2, 2011 U.S. Dist. LEXIS 76663, at *6 (D.

22   Conn. July 15, 2011).   The district court (Janet Bond Arterton,

23   Judge) agreed.    The court, in its "Ruling on Motions to Dismiss,"

24   reasoned that "copyright protection extends to the component


                                       5
 1   images of architectural designs to the extent that those images

 2   allow a copier to construct the protected design," and therefore

 3   "the copied images do not fulfill the intrinsic function of an

 4   architectural plan and thus the act of copying them does not

 5   violate any right protected by a copyright for architectural

 6   technical drawings."   Id. at *3, 2011 U.S. Dist. LEXIS 76663, at

 7   *9.

 8             Because it concluded that the plaintiff's amended

 9   complaint did not state a claim for copyright infringement, the

10   district court also granted defendants' motion to dismiss claims

11   alleging violations of the DMCA and breach of contract, which, in

12   the district court's view, required that the plaintiff have a

13   valid copyright infringement claim.3   Id. at *4, 2011 U.S. Dist.

14   LEXIS 76663, at *14.

15             The plaintiff appeals.




           3
            The district court also dismissed two claims brought under
     the Lanham Act. See Scholz Design, 2011 WL 2899093, at *3-*4,
     2011 U.S. Dist. LEXIS 76663, at *6-*8. The plaintiff does not
     appeal the dismissal of those claims, which were brought against
     all defendants. This accounts for Prudential's withdrawal from
     these proceedings -- Prudential had only filed a motion to
     dismiss in the district court with regard to the Lanham Act
     claims, and did not ask for dismissal of the copyright
     infringement, breach of contract, or DMCA claims against it. See
     note *, supra.


                                        6
 1                                DISCUSSION

 2             I.    Standard of Review

 3             We review a district court's grant of a motion to

 4   dismiss de novo, accepting all factual allegations in the

 5   complaint as true, and drawing all reasonable inferences in the

 6   plaintiff's favor.   Flagler v. Trainor, 663 F.3d 543, 546 n.2 (2d

 7   Cir. 2011); Fed. R. Civ. P. 12(b)(6).

 8             II.    Copyright Infringement

 9             In order to demonstrate copyright infringement, a

10   plaintiff must show ownership of a valid copyright and copying of

11   the protectable elements of the copyrighted work.4    See Medforms,

12   Inc. v. Healthcare Mgmt. Solutions, Inc., 290 F.3d 98, 109 (2d

13   Cir. 2002).    A certificate of copyright registration is prima

14   facie evidence of ownership of a valid copyright, but the alleged

15   infringer may rebut that presumption.     MyWebGrocer, LLC v.

16   Hometown Info, Inc., 375 F.3d 190, 192 (2d Cir. 2004) (citing 17

17   U.S.C. § 410(c)).    To qualify for copyright protection, a work

18   must be original –- that is, it must be independently created by


          4
             This appeal and the district court's decision focus on
     whether the drawings at issue are properly subject to copyright
     protection, rather than whether they have been copied. Indeed,
     during the oral argument on the motion to dismiss before the
     district court, the court assumed that the defendants "just cut
     and pasted [the drawings] on to the[] website[s] for purposes of
     this motion." Transcript of Oral Argument on Mot. to Dismiss,
     Scholz Design, Inc. v. Sard Custom Homes LLC, No. 10-cv-1681, at
     21 (D. Conn. Sept. 12, 2011), ECF No. 78.


                                          7
 1   the author and possess "at least some minimal degree of

 2   creativity."    Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499

 3   U.S. 340, 345 (1991).    The work need not be "particularly novel

 4   or unusual."    Mattel, Inc. v. Goldberger Doll Mfg. Co., 365 F.3d

 5   133, 135 (2d Cir. 2004).    "[T]he requisite level of creativity is

 6   extremely low; even a slight amount will suffice.    The vast

 7   majority of works make the grade quite easily, as they possess

 8   some creative spark, no matter how crude, humble or obvious it

 9   might be."    Feist, 499 U.S. at 345 (citation and internal

10   quotation marks omitted).

11                The defendants' principal argument, with which the

12   district court agreed, was that the allegedly infringed drawings

13   were not entitled to copyright protection because they lacked

14   sufficient detail to allow for construction of the homes

15   depicted.    We disagree.   Copyright protection of a pictorial

16   work, whether depicting a house, or a flower, or a donkey, or an

17   abstract design, does not depend on any degree of detail.     The

18   rights Scholz claims in this suit derive from the general

19   copyright law and not from the AWCPA, which has no relevance to

20   the suit.

21   A.   Copyright for Pictorial Works

22                Scholz’s copyright allegations are straightforward: It

23   created three separate original drawings (depicting homes),

24   registered them with the Copyright Office, and the defendants


                                        8
 1   without authorization made exact copies of those drawings on

 2   their websites.   Nothing more is required for a copyright claim.

 3             The district court apparently was of the view that,

 4   because the drawings were architectural, something more was

 5   required for their copyright protection.   It is black-letter law,

 6   however, that courts accept as protected "any work which by the

 7   most generous standard may arguably be said to evince

 8   creativity."   1-2 Melville B. Nimmer & David Nimmer, Nimmer on

 9   Copyright § 2.08 (2012).   Justice Holmes explained more than a

10   century ago that "[i]t would be a dangerous undertaking for

11   persons trained only to the law to constitute themselves the

12   final judges of the worth of pictorial illustrations."   Bleistein

13   v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903).     As

14   noted above, the only requirement for copyrightability of a work

15   is that it "possesses at least some minimal degree of creativity

16   . . . no matter how crude, humble or obvious it might be."

17   Feist, 499 U.S. at 345.

18             While we have not had occasion to consider a case

19   presenting precisely the same issue as does this one,5 we have


          5
             Most cases examining alleged infringement deal with
     thornier issues than whether a work is sufficiently creative to
     be protected by copyright, such as whether an "inexact copy" is
     substantially similar enough to constitute infringement, see
     Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc.,
     338 F.3d 127, 134 (2d Cir. 2003) ("[T]he defendant may infringe
     on the plaintiff's work not only through literal copying of a
     portion of it, but also by parroting properties that are apparent


                                      9
 1   said in affirming summary judgment for the defendants based on

 2   alleged copying of certain conceptual elements of an

 3   architectural sketch that, although the copying of "ideas" at

 4   issue there did not constitute infringement, "we do not mean to

 5   suggest that, in the domain of copyrighted architectural

 6   depictions, only final construction drawings can contain

 7   protected expression."   Attia v. Soc. of N.Y. Hosp., 201 F.3d 50,

 8   57 (2d Cir. 1999).

 9             We see no reason why Scholz's drawings depicting the

10   appearance of houses it had designed should be treated

11   differently from any other pictorial work for copyright purposes.

12   Andrew Wyeth and Edward Hopper were famous for their paintings of

13   houses, and Claude Monet for paintings of the Houses of

14   Parliament and of Rouen Cathedral.   None of these depictions of

15   buildings were sufficiently detailed to guide construction of the

16   buildings depicted, but that would surely not justify denying


     only when numerous aesthetic decisions embodied in the
     plaintiff's work of art . . . are considered in relation to one
     another."), or whether elements of an allegedly infringed work
     that have been appropriated are facts or ideas not amenable to
     copyright, see Sparaco v. Lawler, Matusky, Skelly Engineers LLP,
     303 F.3d 460, 467 (2d Cir. 2002) ("To the extent that the site
     plan sets forth the existing physical characteristics of the site
     . . . it sets forth facts; copyright does not bar the copying of
     such facts."); Attia v. Soc. of N.Y. Hosp., 201 F.3d 50, 56 (2d
     Cir. 1999) ("We may assume with Plaintiff that the ideas taken,
     or at least some of them, are powerful, dynamic ideas of immense
     value . . . . Under the law of copyright, however, the power of
     an idea does not improve the creator's right to prevent
     copying."). Those issues are not presented by this appeal.


                                     10
 1   them copyright protection.    If an exact copy of Scholz’s drawings

 2   was made by the defendant, as alleged, and as appears to be the

 3   case based on the evidence submitted with the complaint, that

 4   would appear to constitute infringement.

 5   B.   Copyright Registration

 6              The defendants argue that Scholz's pictorial

 7   representations of the houses are not entitled to copyright

 8   protection because its certificates of registration referred to

 9   "architectural technical drawings" as the "nature of authorship,"

10   and in the "nature of work" sections referred to "blueprints."

11   See, e.g., Certificate of Copyright at 1, J.A. 42.    This was

12   significant, according to the defendants, because regulations

13   promulgated under the AWCPA, governing the copyright extended to

14   buildings based on copyrighted architectural plans, provide that

15   "[w]here dual copyright claims exist in technical drawings and

16   the architectural work depicted in the drawings, any claims with

17   respect to the technical drawings and architectural work must be

18   registered separately."   37 C.F.R. § 202.11(c)(4).

19              Scholz's registration of the subject drawings under

20   section 102(a)(5) occurred prior to passage of the AWCPA.   Scholz

21   accordingly was not seeking, and did not receive, registration

22   under that later expansion of the copyright law.   Its

23   registration of its drawings did not become invalid as the result




                                      11
 1   of the subsequent passage of the AWCPA.   That later expansion of

 2   the copyright law is not involved in this suit.

 3   C.   The Architectural Works Copyright Protection Act

 4              We think that the district court's ruling likely

 5   stemmed from a misunderstanding regarding the relationship both

 6   before and after enactment of the AWCPA between the scope of

 7   protection for pictorial works such as these drawings under the

 8   Copyright Act, and that afforded architectural works under the

 9   Copyright Act.

10              While we think this to be a straightforward case of

11   infringement, the district court did not.   The defendants

12   contended, and the district court agreed, that because the

13   drawings at issue were "architectural drawings," something more

14   was required of them for copyright protection than would be

15   required for any other "pictorial, graphic, or sculptural work"

16   under section 102(a)(5).   Indeed, architectural works are

17   currently afforded special status under the law.   That special

18   status is, however, irrelevant for purposes of this case because

19   Scholz is not alleging infringement under the AWCPA, but under

20   the pre-existing protection of the Copyright Act for pictorial

21   works.   The fact that Scholz's drawings might or might not be

22   protected under the AWCPA, depending on various factors, does not

23   deprive them of the protection they have as pictorial works

24   regardless of those factors.


                                     12
 1              Prior to the enactment of the AWCPA, while

 2   architectural structures themselves did not receive copyright

 3   protection, architectural plans, blueprints, and technical

 4   drawings, as well as original, creative sketches of the type at

 5   issue here, were indeed covered under the Copyright Act's

 6   protection of "pictorial, graphic, and sculptural works."    17

 7   U.S.C. § 102(a)(5).6

 8              Scholz contends that the drawings are protected under

 9   section 102(a)(5), and not under section 102(8), which, as part

10   of the AWCPA, added protection for "architectural works."7

11   According to Scholz, the AWCPA is therefore inapplicable.    We

12   agree.   The AWCPA did not affect the copyright protection that

13   section 102(a)(5) has long extended to architectural plans,

14   drawings, and blueprints.

15              Historically, copyright law provided limited
16              protection to works of architecture.


          6
            In or about 1990 the United States became a signatory to
     the Berne Convention, which required copyright protection for
     constructed buildings. The AWCPA fulfilled this obligation. See
     Leceister v. Warner Bros., 232 F.3d 1212, 1226 (9th Cir. 2000)
     (Fisher, J., dissenting) ("The sole purpose of legislating at
     this time is to place the United States unequivocally in
     compliance with its Berne Convention obligations." (quoting H.R.
     Rep. No. 101-735, at 20)).
          7
            As the defendants acknowledge, because the Breckinridge
     drawings and plans were published two years prior to the passage
     of the AWCPA, the home itself would not have even been subject to
     protection as an architectural work. 37 C.F.R.
     § 202.11(d)(3)(i). The record does not reflect whether the other
     homes were ever registered under section 102(8).


                                     13
 1              Architectural plans, while not explicitly
 2              mentioned in the Copyright Act of 1976, were
 3              covered under a provision affording
 4              protection to "pictorial, graphic, and
 5              sculptural works." But architectural
 6              structures themselves were afforded virtually
 7              no protection.
 8              . . .
 9              [After the AWCPA,] the holder of a copyright
10              in an architectural plan . . . has two forms
11              of protection, one under the provision for an
12              "architectural work" under 17 U.S.C. §
13              102(a)(8), and another under the provision
14              for a "pictorial, graphical, or sculptural
15              work" under 17 U.S.C. § 102(a)(5).
16   T-Peg, Inc. v. VT. Timber Works, Inc., 459 F.3d 97, 109-10 (1st

17   Cir. 2006) (citations omitted); see also Oravec v. Sunny Isles

18   Luxury Ventures, L.C., 527 F.3d 1218, 1228 n.8 (11th Cir. 2008)

19   ("[T]he scope of copyright protection for architectural plans

20   registered under § 102(a)(5) was unaffected by the AWCPA."); H.R.

21   Rep. No. 101-735 (1990), reprinted in 1990 U.S.C.C.A.N. 6935,

22   6950-51.   ("Protection for architectural plans, drawings, and

23   models as pictorial, graphic, or sculptural works under section

24   102(a)(5) . . . is unaffected by this bill. . . .   The bill's

25   intention is to keep [the copyright in the architectural work and

26   the copyright in plans and drawings] separate.   An individual

27   creating an architectural work by depicting that work in plans or

28   drawing will have two separate copyrights, one in the

29   architectural work (section 102(a)(8)), the other in the plans or

30   drawings (section 102(a)(5)).").



                                     14
 1             Thus, prior to passage of the AWCPA courts had held

 2   that use of copyrighted architectural plans to construct a

 3   building would not constitute infringement, but then as now,

 4   copying those plans would.   See Nat'l Med. Care, Inc. v.

 5   Espiritu, 284 F. Supp. 2d 424, 435 (S.D. W.Va. 2003) (explaining

 6   that prior to the passage of the AWCPA "most courts agree[d] that

 7   copying a structure depicted in plans, without copying the plans

 8   themselves, [was] not copyright infringement," but that "an

 9   unauthorized copy of an architectural plan infringes on a

10   technical drawing copyright"); see also Imperial Homes Corp. v.

11   Lamont, 458 F.2d 895, 899 (5th Cir. 1972) (copyrighted

12   architectural plans do not confer exclusive right to reproduce

13   the depicted building); Nat'l Med. Care, 284 F. Supp. 2d at 435

14   ("[A]n as-built structure or feature cannot be an infringing copy

15   of a technical drawing.").   The district court summarized this

16   case law correctly when it explained that "[t]he rule which

17   emerges from [the pre-AWCPA] cases is that one may construct a

18   house which is identical to a house depicted in copyrighted

19   architectural plans, but one may not directly copy those plans

20   and then use the infringing copy to construct the house."     Scholz

21   Design, 2011 WL 2899093, at *2, 2011 U.S. Dist. LEXIS 76663, at

22   *8 (internal quotation marks and emphasis omitted).   As a

23   commentator recently explained:




                                       15
 1             Even though our copyright statutes were
 2             silent about architecture until 1990, it was
 3             well established that plans, blueprints and
 4             models were copyrightable writings under the
 5             1909 Act's category of "drawings or plastic
 6             works of a scientific or technical
 7             character," and then as "pictorial, graphic,
 8             and sculptural works" under the 1976 Act.
 9             The scope of an architect's copyright
10             protection was, however, quite limited. The
11             unauthorized copying of plans or blueprints
12             constituted infringement, but most
13             authorities concluded that plans were not
14             infringed by using them, without the
15             architect's permission, to construct the
16             building they depicted. Moreover, the
17             prevailing view was that an architect's
18             rights did not extend to the actual building
19             derived from his or her plans. A building,
20             as a useful article, could be protected by
21             copyright only to the extent it had artistic
22             features that could be identified separately
23             from, and were capable of existing
24             independently of, the structure's utilitarian
25             aspects.

26   David E. Shipley, The Architectural Works Copyright Protection

27   Act at Twenty: Has Full Protection Made a Difference? 18 J.

28   Intell. Prop. L. 1, 3 (2010) (footnotes omitted); see also Daniel

29   Su, Note, Substantial Similarity and Architectural Works:

30   Filtering Out "Total Concept and Feel," 101 Nw. U. L. Rev. 1851,

31   1861, 1863 (2007) ("[A]rchitectural plans and drawings were

32   protected under the Copyright Act of 1976.   They fit comfortably

33   within the definition of 'pictorial, graphic and sculptural

34   works' . . . .   However, copyrighted plans did not give the

35   authoring architect the exclusive right to build the structure




                                     16
 1   depicted within the plans. . . .       [T]he AWCPA extend[ed]

 2   copyright protection to physical buildings.").

 3   D.   The District Court Opinion

 4              Sketches or drawings such as those allegedly infringed

 5   here, therefore, did receive protection before enactment of the

 6   AWCPA, although the architectural works they depicted did not.

 7   The district court seems to have misunderstood the import and

 8   relevance of this distinction in concluding that under section

 9   102(a)(5), architectural sketches or drawings are required to

10   include a certain level of detail to receive protection.        Where

11   the complaint alleges unlawful copying of a pictorial work

12   registered under section 102(a)(5), there is no requirement of

13   any level of detail.

14              The district court relied principally on three other

15   cases in determining that the drawings at issue were not

16   copyrightable.   See Scholz, 2011 WL 2899093, at *3, 2011 U.S.

17   Dist. LEXIS 76663, at *9 ("Under Attia, as well as Jones, and

18   Lamont, copyright protection extends to the component images of

19   architectural designs to the extent that those images allow a

20   copier to construct the protected design." (citations omitted)).

21   First, the court looked to Attia, which examined whether the

22   defendants had infringed the plaintiff's drawings of a proposed

23   expansion of New York Hospital.    201 F.3d at 57.    The plaintiff

24   had submitted a plan for the hospital's modernization.      He


                                       17
 1   prepared a series of preliminary drawings and sketches

 2   illustrating his plan, which would have expanded the hospital

 3   through a new building constructed in the airspace over the FDR

 4   Drive in New York City.   Id. at 52.    The plaintiff and his firm

 5   were not selected to be the architects for the plan.    Eli Attia

 6   later saw a New York Times article discussing a similar design.

 7   He brought a copyright infringement suit against the architect

 8   who had created that plan alleging infringement of his drawings.

 9   Id.   The district court granted summary judgment to the

10   defendants after concluding that their design and plaintiff's

11   design could not be considered "substantially similar" as a

12   matter of law.   201 F.3d at 53.

13              For purposes of that appeal, we assumed that the

14   similarities between the plaintiff's and defendants' drawings

15   were indeed attributable to copying.

16              The problem underlying Plaintiff's claim of
17              copyright infringement, however, is that not
18              all copying from copyrighted material is
19              necessarily an infringement of copyright.
20              There are elements of a copyrighted work that
21              are not protected even against intentional
22              copying. It is a fundamental principle of
23              our copyright doctrine that ideas, concepts,
24              and processes are not protected from copying.
25              . . . A copyright thus protects not the
26              author's ideas, but only her expression of
27              them.
28   Id. at 53-54.




                                        18
 1              "The problem of distinguishing an idea from its

 2   expression is particularly acute when the work of 'authorship' is

 3   of a functional nature, as is a plan for the accomplishment of an

 4   architectural or engineering project."   Id. at 55.   For example,

 5   "generalized notions of where to place functional elements, how

 6   to route the flow of traffic, and what methods of construction

 7   and principles of engineering to rely on" are ideas, and can be

 8   appropriated by others without infringing on a copyright.    Id.

 9   We determined that the alleged similarities of the allegedly

10   protected work to the allegedly infringing work, were "concepts

11   and ideas," and "barely a first step toward the realization of a

12   plan."   Id. at 55-56.   While many of the ideas and placements

13   were similar, overall, "Defendants' design has very little in

14   common with Plaintiff's."   Id. at 57.

15              The district court in the case before us concluded that

16   the Attia court's reference to preliminary concepts and ideas

17   meant that non-detailed drawings could not be subject to

18   copyright protection.    But Attia never alleged that his sketches

19   themselves were unlawfully copied.    Instead he contended that

20   certain elements of his sketches were incorporated into the

21   allegedly infringing plans, such as placement of the hospital

22   expansion above the FDR Drive.   We in no way suggested that the

23   plaintiff's drawings in Attia did not enjoy copyright protection.

24   Our ruling was merely that, assuming the defendant copied


                                      19
 1   something from the plaintiff's drawings, what was copied was only

 2   unprotected ideas, and not the plaintiff’s protected expression

 3   of those ideas.   That ruling simply does not support the district

 4   court's analysis here.

 5             The plaintiff here does not allege, as did Attia, that

 6   some "concept" or "idea" reflected in his sketches was

 7   appropriated –- he alleges that the entire sketch was copied.

 8   Attia therefore has little relevance to the case before us.     It

 9   does not suggest that in the domain of architectural drawings

10   protection cannot be afforded to preliminary or conceptual

11   renderings.

12             The district court also relied on Robert R. Jones

13   Assocs. v. Nino Homes, 858 F.2d 274, 280 (6th Cir. 1988), which

14   examined under pre-AWCPA law the alleged infringement of

15   architectural plans effected by copying those plans and then

16   constructing a building based on them.   "The rule which emerges

17   . . . is that one may construct a house which is identical to a

18   house depicted in copyrighted architectural plans, but one may

19   not directly copy those plans and then use the infringing copy to

20   construct the house."    Id. at 280.

21             The circuit court ruled: "[O]ne may construct a house

22   which is identical to a house depicted in copyrighted

23   architectural plans, but one may not directly copy those plans

24   and then use the infringing copy to construct the house."    Id.


                                      20
 1             The district court in the case before us appears to

 2   have understood Robert R. Jones to stand for the proposition that

 3   there is an infringement only when a plan is (1) copied and (2)

 4   used to construct a home.   We disagree.

 5             Robert R. Jones does not stand for the proposition that

 6   no infringement can occur without construction.   The last ten

 7   words of the sentence quoted above (about using the infringing

 8   copies to construct) were surplusage.   What the court seems to

 9   have meant was that, while the construction of the home based on

10   copyrighted plans is not an infringement (under the pre-AWCPA

11   law), the copying of the plans is an infringement.   The copying

12   of the drawings constituted infringement regardless of whether

13   one goes on to construct the house.

14             Finally, in Lamont, upon which the district court also

15   relied, the court concluded that the copying of the floorplan of

16   a home from copyrighted drawings in a promotional brochure would

17   be an infringement.

18             [N]o copyrighted architectural plans . . .
19             may clothe their author with the exclusive
20             right to reproduce the dwelling pictured.
21             However, nothing . . . prevents such a
22             copyright from vesting the law's grant of an
23             exclusive right to make copies of the
24             copyrighted plans so as to instruct a would-
25             be builder on how to proceed to construct the
26             dwelling pictured.
27   458 F.2d at 898-99.   In remanding the case to the district court,

28   the court of appeals explained that "[t]he exclusive right to



                                     21
 1   copy what is copyrighted belongs to the architect, even though

 2   the plans give him no unique claim on any feature of the

 3   structure they detail.    If it is determined . . . that the

 4   [defendants] copied the floor plan set forth in the promotional

 5   booklet distributed by [the plaintiff], then this copying would

 6   constitute an infringement of [the plaintiff's] copyright

 7   privileges."    Id. at 899 (emphasis in original).

 8                The district court in the case before us inferred that

 9   infringement could only occur if the plans were sufficiently

10   detailed to allow for construction, perhaps because in Lamont the

11   "floor plan" was allegedly detailed enough to do so.    That court,

12   however, like the court in Robert S. Jones, did not indicate that

13   a less-detailed plan or drawing would not be entitled to

14   copyright protection.

15                In sum, the district court concluded that architectural

16   drawings were required to contain sufficient detail to allow for

17   construction in order to receive Copyright Act protection.     There

18   is no such requirement, however, when the claim of copyright is

19   for a "pictorial, graphic, or sculptural work[]" under section

20   102(a)(5).    All that is required is independent creation and

21   originality.     See John Wieland Homes & Neighborhoods, Inc. v.

22   Poovey, No. 3:03CV168-H, 2004 WL 2108675, at *5, 2004 U.S. Dist.

23   LEXIS 21730, at *14 (W.D.N.C. Aug. 2, 2004) (stating that

24   "copyright protection extends to simplified floor plans, that is,


                                       22
 1   promotional cut sheets, of copyrighted architectural plans," and

 2   therefore concluding that the defendant was liable when a

 3   draftsman he hired essentially copied the cut-sheet in preparing

 4   plans for a home); see also Donald Frederick Evans and Assocs. v.

 5   Cont'l Homes, Inc., 785 F.2d 897, 904-05 (11th Cir. 1986)

 6   ("[C]onstruction of a substantially identical residential

 7   dwelling is not prohibited by the existence of a copyright in the

 8   architectural drawings for the original dwelling, but . . . if

 9   the builders of the substantially identical structure copied the

10   floor plan set forth in a promotional booklet distributed by the

11   builder of the original, then this copying would constitute

12   infringement of the original builder's copyright privileges."

13   (citation and footnote omitted)); Lamont, 458 F.2d at 899 ("If it

14   is determined upon remand that the [defendants] copied the floor

15   plan set forth in the promotional booklet distributed by [the

16   plaintiffs], then this copying would constitute an infringement

17   of [the plaintiff's] copyright privileges."); Arthur Rutenburg

18   Corp. v. Parrino, 664 F. Supp. 479, 481 (M.D. Fla. 1987) (ruling

19   that the copying of a floor plan constituted copyright

20   infringement).

21             Although we have not directly addressed the question

22   with which the district court grappled here, we have twice

23   explained that architectural technical drawings might be subject

24   to copyright protection even if they are not sufficiently


                                    23
 1   detailed to allow for construction.     See Attia, 201 F.3d at 57

 2   ("[W]e do not meant to suggest that, in the domain of copyrighted

 3   architectural depictions, only final construction drawings can

 4   contain protected expression."); Sparaco, 303 F.3d at 469 ("We do

 5   not mean to imply that technical drawings cannot achieve

 6   protected status unless they are sufficiently complete and

 7   detailed to support actual construction.").

 8              We see this, then, as a straightforward case of

 9   copyright infringement.      The plaintiff created original drawings

10   which were properly registered with the copyright office.         The

11   defendants allegedly used exact copies of those drawings without

12   permission.   Nothing more is required in order to state a claim

13   for copyright infringement.     The district court's grant of a

14   motion to dismiss these claims is therefore reversed.

15              III.   Fair Use

16              The defendants contend that even if Scholz had a valid

17   copyright in the drawings, the defendants are not liable for

18   infringement because their usage of the images constituted fair

19   use.   "[T]he fair use of a copyrighted work . . . for purposes

20   such as criticism, comment, news reporting, teaching (including

21   multiple copies for classroom use), scholarship, or research, is

22   not an infringement of copyright."      17 U.S.C. § 107.   Four

23   factors must be considered in deciding whether a particular use

24   is "fair": "(1) the purpose and character of the use, including


                                        24
 1   whether such use is of a commercial nature or is for nonprofit

 2   educational purposes; (2) the nature of the copyrighted work; (3)

 3   the amount and substantiality of the portion used in relation to

 4   the copyrighted work as a whole; and (4) the effect of the use

 5   upon the potential market for or value of the copyrighted work."

 6   17 U.S.C. § 107.

 7              The district court declined to address this argument,

 8   having concluded that in any event Scholz had not stated a valid

 9   copyright infringement claim.   Scholz Design, 2011 WL 2899093, at

10   *3 n.2, 2011 U.S. Dist. LEXIS 76663, at *10 n.2.      "It is our

11   settled practice to allow the district court to address arguments

12   in the first instance."   Fulton v. Goord, 591 F.3d 37, 45 (2d

13   Cir. 2009) (internal quotation marks omitted).     On remand, the

14   defendants may choose to raise this defense again.     We intimate

15   no views as to the proper outcome of such an inquiry.

16              IV.   DMCA and Breach of Contract Claims

17              The district court dismissed both of these claims after

18   concluding that they required Scholz to "have a valid copyright

19   claim."   Scholz Design, 2011 WL 2899093, at *4, 2011 U.S. Dist.

20   LEXIS 76663, at *14.   The dismissal of the breach of contract

21   claim was error.   Scholz alleged that Sard used Scholz’s drawings

22   in unauthorized ways long after their agreements had expired.

23   This breach of contract claim did not depend on Scholz’s

24   possession of a valid copyright.      We therefore vacate the


                                      25
 1   district court’s dismissal of the breach of contract claim.   In

 2   addition, because we vacate the district court’s dismissal of the

 3   copyright claim, we also vacate its dismissal of the DMCA claim.

 4   Again, we suggest no views on our part as to the proper outcome

 5   of such an inquiry.

 6                               CONCLUSION

 7             For the foregoing reasons, the judgment of the district

 8   court is reversed in part, and vacated and remanded in part for

 9   further proceedings.   Costs to Scholz against Sard and Coldwell

10   Banker.




                                     26
