                               UNPUBLISHED

                  UNITED STATES COURT OF APPEALS
                      FOR THE FOURTH CIRCUIT


                               No. 11-2206


CHARLES W. ROSS BUILDER, INCORPORATED, d/b/a Charles Ross
Homes,

                Plaintiff - Appellant,

           v.

OLSEN FINE HOME BUILDING, LLC; BEVERLY OLSON; BOATHOUSE
CREEK GRAPHICS, INCORPORATED; RICK J. RUBIN; JENNIFER L.
RUBIN,

                Defendants - Appellees.



Appeal from the United States District Court for the Eastern
District of Virginia, at Newport News. Robert G. Doumar, Senior
District Judge. (4:10-cv-00129-RGD-DEM)


Argued:   September 19, 2012             Decided:   November 8, 2012


Before KEENAN and FLOYD, Circuit Judges, and Timothy M. CAIN,
United States District Judge for the District of South Carolina,
sitting by designation.


Vacated and remanded by unpublished opinion. Judge Keenan wrote
the opinion, in which Judge Floyd and Judge Cain joined.


ARGUED: Megan Burns, TROUTMAN SANDERS, LLP, Virginia Beach,
Virginia, for Appellant.  Brian Nelson Casey, TAYLOR & WALKER,
PC, Norfolk, Virginia; Jeffrey Hamilton Geiger, SANDS ANDERSON,
PC, Richmond, Virginia; Linda M. Quigley, QUIGLEY & ASSOCIATE,
PLLC, Richmond, Virginia, for Appellees.       ON BRIEF: John
Franklin, III, TAYLOR & WALKER, PC, Norfolk, Virginia, for
Appellee Boathouse Creek Graphics, Inc.; Mark D. Matthews, THE
MATTHEWS LAW GROUP, PLLC, Richmond, Virginia, for Rick J. Rubin
and Jennifer L. Rubin.


Unpublished opinions are not binding precedent in this circuit.




                                2
BARBARA MILANO KEENAN, Circuit Judge:

       In    this    case     brought     under     the     Architectural       Works

Copyright Protection Act (Architectural Copyright Act), Pub. L.

No.    101-650,     §§   701-706,   104    Stat.    5089    (1990)       (codified    in

various sections of 17 U.S.C.), we consider whether the district

court erred in awarding summary judgment to the defendants.                          The

plaintiff’s complaint alleged that the defendants infringed the

plaintiff’s copyrighted architectural work, consisting of a home

design      and   related    technical     drawings.         The     district   court

awarded      summary     judgment   upon       finding    that     the    defendants’

allegedly infringing home design and the plaintiff’s copyrighted

home    design      were    not   “substantially         similar.”        Because     we

conclude that the district court did not apply the correct test

for determining whether the allegedly infringing material was

substantially similar to the copyrighted home design, we vacate

and remand for further proceedings.



                                          I.

       The   plaintiff,      Charles    Ross    Homes,     Inc.    (Charles     Ross),

designs and builds custom homes and proprietary model homes in

the Williamsburg area of Virginia.                In 2001, an architect hired

by Charles Ross designed “the Bainbridge,” a home design in the

Georgian style (the Bainbridge model), for which Charles Ross



                                           3
obtained    copyright      protection. 1        Using   the    Bainbridge     model,

Charles    Ross    built    a   home   on   a    lot    in    the    Ford’s   Colony

community in Williamsburg (the home).

     In May 2009, potential buyers, Rick and Jennifer Rubin,

toured the home and took with them marketing brochures for the

Bainbridge model.          The Rubins later scheduled a meeting with a

Charles Ross representative to discuss designing and building a

custom home on property that the Rubins owned in Ford’s Colony.

Before the meeting took place, the Charles Ross representative

sent the Rubins an unsolicited copy of “Places to Call Home,” a

portfolio     of   the     company’s    proprietary          model   homes,    which

included plans and an artist’s rendering for a home based on the

Bainbridge model.          The portfolio indicated that the Bainbridge

model was protected by copyright.                The Rubins later cancelled

their meeting and did not have any further contact with Charles

Ross.

     The Rubins ultimately hired Boathouse Creek Graphics, Inc.

(BC Graphics) to design their new home, and employed Olsen Fine

Home Building, LLC (Olsen) as the builder.                      Lisa Moberg, the

President of BC Graphics, designed the Rubins’ home (the Rubin

residence).


     1
        Charles Ross received copyright protection for the
Bainbridge model as an “architectural work,” and for Charles
Ross’ technical drawings of the Bainbridge model.


                                        4
     While the Rubin residence was under construction, one of

the owners of Charles Ross visited a contractor on that job site

concerning an unrelated project.              There, the owner from Charles

Ross saw the plans for the Rubin residence.                      After looking at

those plans, the Charles Ross owner concluded that the plans

were “substantially similar” to the Bainbridge model.

     Both    the   Bainbridge        model   and   the    Rubin    residence        are

representative     of    the    Georgian     architectural       style,     which    is

popular    among   the    colonial-style       homes     found    throughout        the

Williamsburg area.        In fact, only five architectural styles are

permitted for homes built in Ford’s Colony, one of which is the

Georgian style.         The Bainbridge model and the Rubin residence

both were designed in accordance with the numerous restrictions

placed on all homes built in Ford’s Colony, as described in the

development’s Purchaser’s Handbook.

     The    exteriors      of    the   Bainbridge        model    and      the   Rubin

residence     share      many    similarities,      including          a    two-story

rectangular    main     body,    a   “walk-out”    basement,       a    gabled    roof

featuring dormers, single-story wings flanking the main body of

the residence, and a detached, three-car garage connected to the

main body of the residence by a covered breezeway.                      The interior

floor plans of the two designs also share several similarities,

including a foyer flanked symmetrically by a dining room and a

library, and a separate “friends” entryway.                  In addition, both

                                         5
interior plans have a dining room, a kitchen, and a “keeping

room,” all configured in the same width.

       Charles Ross filed a complaint against the Rubins, Olsen, 2

and     BC    Graphics          (collectively,          the   defendants),       asserting

copyright infringement and other claims under the Architectural

Copyright Act.            After the defendants filed motions to dismiss

and    the    district      court    heard     argument       on    those    motions,   the

court       directed      the     defendants       to    file      motions   for   summary

judgment.          Thereafter,        the     district        court    awarded     summary

judgment to the defendants, holding that Charles Ross had failed

to show that the Bainbridge model and the Rubin residence were

substantially similar in design.                     See Charles W. Ross Builder,

Inc. v. Olsen Fine Home Bldg., LLC., 827 F. Supp. 2d 607, 624

(E.D. Va. 2011).          Charles Ross filed a timely notice of appeal.



                                             II.

       We exercise de novo review of a district court’s award of

summary judgment.           Higgins v. E.I. DuPont de Nemours & Co., 863

F.2d       1162,   1167    (4th    Cir.     1988).        Summary     judgment     is   only

appropriate if, viewing the evidence in the light most favorable

to the nonmoving party, there is no genuine dispute of material



       2
       Charles Ross named Olsen, the corporate entity, as well as
Beverly Olsen, its member and manager, as defendants.


                                               6
fact.     Fed. R. Civ. P. 56(a); Pueschel v. Peters, 577 F.3d 558,

563 (4th Cir. 2009).



                                          III.

       Charles Ross contends that the district court reached an

incorrect result in this case by failing to apply this Circuit’s

test    for    determining      substantial           similarity.        Charles       Ross

argues that the central failure in the district court’s analysis

was    the    district      court’s   use   of        the    Second    Circuit’s   “more

discerning          observer”      test         for     determining        substantial

similarity, rather than the two-part test used by this Court in

Universal      Furniture      International,          Inc.    v.     Collezione    Europa

USA, Inc., 618 F.3d 417 (4th Cir. 2010).

       In response, the defendants argue that the district court

did not err in employing the Second Circuit’s “more discerning

observer” test, because the Bainbridge model incorporated both

original and unoriginal elements.                 Alternatively, the defendants

contend      that    even   upon   application          of    this    Court’s    two-part

test,    the    Bainbridge      model     and     the       Rubin    residence    do    not

qualify as being substantially similar.                        We disagree with the

defendants’ arguments.




                                            7
       In recent decades, copyright protection has been extended

to “architectural work” under the Architectural Copyright Act, 3

which defines such work as “the design of a building as embodied

in   any        tangible      medium       of   expression,          including        a     building,

architectural plans, or drawings.                             The protected work includes

the overall form as well as the arrangement and composition of

spaces          and    elements       in     the     design,         but    does      not    include

individual standard features.”                       17 U.S.C. §§ 101, 102(a)(8).

       In        enacting      the     Architectural               Copyright        Act,    Congress

intended          to        extend     protection             to    the      “arrangement         and

composition of spaces and elements” in architectural works, in

recognition            of     the     fact      that         “creativity       in     architecture

frequently            takes    the    form      of       a    selection,     coordination,        or

arrangement            of     [non-protected]                elements      into     an      original,

protectable whole.”                  H.R. Rep. No. 101-735 (1990), reprinted in

1990 U.S.C.C.A.N. 6935, 6949.                        However, the protections of the

Architectural Copyright Act were not intended by Congress to

afford copyright protection to “individual standard features,”

such       as    “common       windows,         doors,        and    other     staple       building

components.”            Id.

       3
        Before the Architectural Copyright Act was enacted,
architectural plans could receive copyright protection as
“pictorial,   graphic,   and   sculptural   works,”   but    the
architectural structures themselves were not protected.   Scholz
Design, Inc. v. Sard Custom Homes, LLC, 691 F.3d 182, 188 (2d
Cir. 2012).


                                                     8
       To establish copyright infringement, a plaintiff must prove

ownership of a valid copyright, and must show that the defendant

copied    the     original    elements      of     that     copyrighted      material.

Lyons P’ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 801

(4th Cir. 2001)(citing Feist Publ’ns, Inc. v. Rural Tel. Serv.

Co.,   499    U.S.   340,    361    (1991)).        In    the    absence    of    direct

evidence of copying, a plaintiff may create a presumption of

copying      by   showing    that    the        defendant    had    access       to   the

copyrighted        work,     and     that        “the     defendant’s        work      is

‘substantially similar’ to the protected material.”                        Id. (citing

Towler v. Sayles, 76 F.3d 579, 581-82 (4th Cir. 1996)).                          In the

present case, the plaintiff did not produce direct evidence of

copying, and the district court assumed, without deciding, that

the defendants had access to the Bainbridge model plans.

       We have not previously considered a copyright claim brought

under the Architectural Copyright Act.                      However, in Universal

Furniture, a case involving alleged copyright infringement in

the design of furniture, we applied our established two-part

test requiring that a court consider both the “extrinsic” and

“intrinsic” similarity of the works in question.                            Under this

two-part test, to prove substantial similarity, a plaintiff must

show that the works are (1) “extrinsically similar because they

contain      substantially     similar          ideas     that     are     subject     to

copyright     protection,”     and    (2)       “intrinsically      similar      in   the

                                            9
sense that they express those ideas in a substantially similar

manner   from    the   perspective        of    the   intended    audience   of    the

work.”   Universal Furniture, 618 F.3d at 435 (quoting Lyons, 243

F.3d at 801); see also Dawson v. Hinshaw Music Inc., 905 F.2d

731, 732-33 (4th Cir. 1990) (the two-part substantial similarity

test).

      We applied this two-part test in Universal Furniture in a

context that is not analytically distinguishable from the case

presently    before      us.      The    copyrighted     furniture    at   issue   in

Universal Furniture had incorporated design elements of certain

historical styles from English furniture of the 18th and 19th

centuries.       Id. at 425, 436.              The process of designing these

copyrighted      lines     of     furniture      involved    “consulting       public

domain sources such as furniture books and antiques magazines,”

and then “combin[ing] elements from the public domain to create

a different look,” rather than merely replicating the style from

an   historical    period.         Id.    at    425   (internal    quotation    marks

omitted).

      The plaintiff alleging infringement in Universal Furniture

had received copyright protection for the original decorative

designs appearing on the furniture at issue, as well for the

designer’s      original       compilations      of   decorative    designs.       Id.

When a competitor began designing furniture that imitated the

copyrighted lines, the copyright owner brought a claim against

                                           10
the competitor for copyright infringement.             Id. at 425-26.          The

district court held that the competitor produced furniture that

was substantially similar to the copyrighted pieces.                     Id. at

426-27.     We    affirmed   the    district      court’s    judgment,       after

applying    our    established      two-part       test     for      determining

substantial similarity.      Id. at 435-37.

       We explained that under this test, extrinsic similarity is

an objective inquiry, which requires consideration of “external

criteria    of    substantial      similarities      in     both     ideas     and

expression.”      Id. at 435-36 (citation and internal quotation

marks omitted).     In conducting this objective inquiry, a court

must   consider   whether    the    two   works    “contain        substantially

similar ideas that are subject to copyright protection.”                 Lyons,

243 F.3d at 801 (citation omitted).

       By contrast, intrinsic similarity is a subjective inquiry,

Towler, 76 F.3d at 583-84, in which the court “looks to the

‘total concept and feel of the works, but only as seen through

the eyes of the . . . intended audience of the plaintiff’s

work.’”    Universal Furniture, 618 F.3d at 436 (quoting Lyons,

243 F.3d at 801) (emphasis removed).           As stated by Judge Learned

Hand, the intrinsic similarity test asks whether “the ordinary

observer, unless he set out to detect the disparities, would be

disposed to overlook them, and regard their aesthetic appeal as



                                     11
the    same.”        Id.   (quoting      Peter     Pan   Fabrics,     Inc.    v.   Martin

Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960)).

       We have stated that expert testimony often may be helpful

to a court’s determination of extrinsic similarity.                          See, e.g.,

Universal Furniture, 618 F.3d at 435-36 (“expert testimony may

be relevant” to extrinsic similarity); Towler, 76 F.3d at 583

(extrinsic similarity is shown “typically with the aid of expert

testimony”).         The   intrinsic      similarity     prong   of    the    analysis,

however, generally does not require the aid of expert testimony.

Towler, 76 F.3d at 583-84.

       As   noted     above,      the   district     court   did    not      apply   this

Court’s test for determining substantial similarity.                           Instead,

the district court elected to apply the Second Circuit’s “more

discerning observer” test, as well as a similar test articulated

by    the   Eleventh       Circuit      in   Intervest     Construction,       Inc.    v.

Canterbury Estate Homes, Inc., 554 F.3d 914 (11th Cir. 2008), a

case involving an architectural copyright claim.

       The district court stated that, under the “more discerning

observer” test, courts distinguish between protectable and non-

protectable elements, remove the non-protectable elements from

consideration, and determine whether the remaining portions of

each work, taken together, are conceptually similar.                               827 F.

Supp. 2d at 621 (citing Trek Leasing, Inc. v. United States, 66

Fed.    Cl.     8,    19   (Ct.    Fed.      Cl.   2005));    see     also    Tufenkian

                                             12
Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d

127,       131-35    (2d   Cir.    2003)     (describing        test   for    substantial

similarity      regarding         copyright    infringement        claim      involving    a

rug design, which included both protectable and non-protectable

elements); Boisson v. Banian, Ltd., 273 F.3d 262, 272 (2d Cir.

2001) (describing test, in context of quilt design).                            Here, the

district court explained that it applied the “more discerning

observer”       test,      because     the     Bainbridge        model     “incorporates

sources      other     than   its    original       expression,”       particularly       in

that its design “borrows many of its central features from the

traditional Georgian style.”               827 F. Supp. 2d at 621.

       We conclude that the district court erred in failing to

apply this Court’s test for determining substantial similarity.

Our    two-part       test,   described       above,      has   not    been    limited    in

application to infringement claims involving furniture design.

We    also    have     employed     that     test    in    several     other    copyright

contexts. 4         See Lyons, 243 F.3d at 801-03 (costume that allegedly


       4
       We note that two of our sister circuits, namely, the
Eighth Circuit and the Ninth Circuits, have employed the same,
or a similar, articulation of the substantial similarity test
used in this Circuit. See, e.g., Frye v. YMCA Camp Kitaki, 617
F.3d 1005, 1008 (8th Cir. 2010) (employing two-step analysis,
first applying the “extrinsic test,” which “focus[es] on
objective similarities in the details of the works,” and,
second, the “intrinsic test,” which “depend[s] on the response
of the ordinary, reasonable person to the forms of expression”)
(citation omitted); L.A. Printex Indus., Inc. v. Aeropostale,
Inc., 676 F.3d 841, 848 (9th Cir. 2012) (employing two-step
(Continued)
                                              13
infringed copyright of “Barney,” the purple dinosaur children’s

character); Towler, 76 F.3d at 583-84 (screenplay that allegedly

infringed a copyrighted screenplay); Dawson, 905 F.2d at 732-33

(musical   composition     that   allegedly    infringed      a    copyrighted

arrangement of spiritual music).

     In the present case, the circumstances identified by the

district court do not support its deviation from this Court’s

test for determining substantial similarity.           Like the protected

work in Universal Furniture, the Bainbridge model incorporated

design   elements   from   an   historical    style,   in   this       case,   the

Georgian   style    of   architecture.   See    618    F.3d   at       425,    436.

Moreover, architectural works such as the Bainbridge model, like

the furniture designs at issue in Universal Furniture, include a

combination   of     original,    protected     elements,         as    well     as

unoriginal, non-protected elements.          Architectural works include

the unoriginal, and thus non-protectable, elements like windows,

doors, and other individual standard features, see 17 U.S.C. §

101, while furniture pieces include unoriginal, non-protectable

elements like “shape and color.” 618 F.3d at 435-37.                   Therefore,




analysis, comprised of the “extrinsic test,” which is an
“objective comparison of specific expressive elements,” and the
“intrinsic test,” a “subjective comparison that focuses on
whether the ordinary, reasonable audience would find the works
substantially similar in the total concept and feel of the
works”) (citation and internal quotation marks omitted).


                                    14
neither type of work only incorporates elements that are wholly

original and protected.

       Analytical similarity also is found in courts’ treatment of

architectural         works    and         the     design     of      furniture          as

“compilations.”        The design of furniture has received copyright

protection as a “compilation.”                   Id. at 425, 431.            Likewise,

several      courts     have      analogized         architectural          works        to

“compilations” in the copyright context, because originality in

architectural works frequently comes from the “arrangement and

composition” of spaces and other design elements, which are not

otherwise protectable.          See, e.g., Intervest, 554 F.3d at 919;

Harvester, Inc. v. Rule Joy Trammell + Rubio, LLC, 716 F. Supp.

2d 428, 438 (E.D. Va. 2010).

       For these reasons, we conclude that the two-part test for

determining    substantial        similarity,       as   employed      in   Universal

Furniture    and   in    our   earlier       precedent,     is     applicable       to   a

copyright infringement claim involving architectural works such

as the Bainbridge model.             See Lyons, 243 F.3d at 801; Towler, 76

F.3d   at   583-84;     Dawson,      905    F.2d    at   732-33.       Although      the

district court conducted a lengthy comparative analysis of the

Bainbridge    model     and    the    Rubin      residence,      we   are   unable       to

determine whether the district court would have reached the same

conclusion had the court applied this Court’s two-part test for

determining substantial similarity.

                                            15
     As stated above, the intrinsic similarity prong of this

Court’s two-part test asks whether “the ordinary observer [or

member of the intended audience of plaintiff’s work], unless he

set out to detect the disparities, would be disposed to overlook

them, and regard their aesthetic appeal as the same,” Universal

Furniture, 618 F.3d at 436 (quoting Peter Pan Fabrics, 274 F.2d

at   489).          The    district     court       improperly        disregarded       this

principle     in     conducting       its     substantial       similarity      analysis.

See 827 F. Supp. 2d at 621-22 (rejecting as “inapplicable” a

similar variation of our “intrinsic” similarity inquiry).

     The effect of the district court’s failure to apply this

Court’s   test       for    determining        substantial       similarity       is    that

throughout     its        analysis,     the    district        court    relied     on    its

finding that many of the similarities between the Bainbridge

model and the Rubin residence related to non-protected elements

of   those    works.          Thus,     in    segregating        these       non-protected

similarities,        the    district     court      deviated     from     the    essential

principle     of     the    intrinsic        component    of     our     two-part      test,

namely,      that    a     court   is    not       to   “set    out     to    detect    the

disparities,” or engage in “analytic dissection of protected and

unprotected elements.”             Universal Furniture, 618 F.3d at 436,

437 (citations omitted).

     For these reasons, we vacate the district court’s judgment.

We remand the case to the district court for application of this

                                              16
Court’s     two-part   test   for   determining   substantial    similarity,

and   for    further   proceedings     consistent   with   the   principles

expressed in this opinion. 5

                                                     VACATED AND REMANDED




      5
       Based on our holding, we express no view on the merits of
the parties’ arguments concerning the district court’s decision
to assume, without deciding, that Charles Ross had access to the
Bainbridge model.   827 F. Supp. 2d at 617-18.    Nothing in our
decision prevents the parties or the district court from
revisiting this issue on remand.
     Additionally, in view of our holding, we need not consider
Charles Ross’ argument that the district court erred in
concluding that the Bainbridge model was entitled to only a
lesser, “thin” degree of copyright protection because the design
was constrained by the elements of Georgian architecture, and by
the requirements of the Ford’s Colony Purchaser’s Handbook.
These factors should be considered by the district court in the
first instance within the framework of this Court’s two-part
test for determining substantial similarity.


                                      17
