12

‐ 3448

‐ cv (L)

Zalewski v. Cicero Builder Dev., Inc.

UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

_______________

August Term, 2013

(Argued: January 15, 2014 Decided: June 5, 2014)

Docket Nos. No. 12

‐ 3448

‐ cv

, No. 12

‐ 3450

‐ cv, No. 12

‐ 5127

‐ cv

_______________

JAMES E. ZALEWSKI, DRAFTICS, LTD.,

Plaintiffs

‐ Appellants,

—v.—

CICERO BUILDER DEV., INC., LUIGI CICERO, T.P. BUILDERS, INC.,THOMAS

PAONESSA, CILLIS BUILDERS, INC., THEODORE CILLIS, III, DERAVEN

DESIGN & DRAFTING, ROXANNE K. HELLER, V.S. SOFIA ENGINEERING,

SOFIA ENGINEERING, PLLC, VINCENZO S. SOFIA,

Defendants

‐ Appellees

. *

_______________

Before:

K ATZMANN

, Chief Judge

, W ESLEY and L OHIER

, Circuit Judges

.

_______________

* The Clerk of the Court is respectfully directed to amend the official caption as set forth

above.2 Appeal from orders and judgments of the United States District Court for

the Northern District of New York (Sharpe, Judge ). Plaintiff alleged copyright

infringement and violations of the Digital Millennium Copyright Act against

numerous Defendants involved in the construction and sale of houses built with

architectural plans allegedly copied from Plaintiff’s designs. The district court

dismissed Plaintiff’s claims against some Defendants, granted summary

judgment in favor of the remaining Defendants, and granted attorney’s fees to

two Defendants for costs incurred defending against Plaintiff’s first and second

amended complaint. For the reasons stated below, the orders and judgments of

the district court are AFFIRMED in part, and VACATED and REMANDED in

part.

_______________

L EE P ALMATEER

, Lee Palmateer Law Office LLC, Albany, NY, for

Plaintiffs

‐ Appellants

.

Paul C. Rapp, Monterey, MA, for Defendants

‐ Appellees Cicero

Builder Dev., Inc. and Luigi Cicero

.

A UTONDRIA M INOR (Arlen L. Olsen, on the brief ), Schmeiser Olsen

& Watts LLP, Latham, NY, for Defendants

‐ Appellees T.P. Builders,

Inc., and Thomas Paonessa

.

G EORGE J. S ZARY

, DeGraff, Foy & Kunz, Albany, NY,

for Defendants

‐ Appellees Cillis Builders, Inc., and Theodore Cillis, III

.

A NNETTE I. K AHLER

, (Susan E. Farley, on the brief ), Heslin

Rothenberg Farley & Mesiti, Albany, NY, for Defendants

‐ Appellees

DeRaven Design & Drafting and Roxanne K. Heller

.

K EVIN R. V AN D USER

, Sugarman Law Firm LLP, Syracuse, NY,

for Defendants

‐ Appellees V.S. Sofia Engineering, Sofia Engineering,

PLLC, and Vincenzo S. Sofia

.

_______________3 W ESLEY

, Circuit Judge :

This case calls on us to explore the limits of copyright protection for

architectural works. Plaintiffs

‐ Appellants are James Zalewski, an architect, and

Draftics, Ltd., the company through which he does business (collectively

“Zalewski” or “Plaintiff”). Zalewski asserts that he created and then licensed

numerous designs for colonial homes to two construction companies. 1 He alleges

that these companies and their contractors infringed his copyright in these

designs by using them in ways the licenses did not permit and after the licenses

had expired. Zalewski also asserts that Defendants’ actions violated the Digital

Millennium Copyright Act (“DMCA”). Defendants principally contend that their

designs do not copy the protected elements of Plaintiff’s designs.

The district court dismissed portions of Plaintiff’s complaint and granted

summary judgment to Defendants on the remaining claims. The court also

granted two Defendants’ motions for attorney’s fees. Plaintiff now challenges the

dismissal of his complaint, the grant of summary judgment to Defendants, the

denial of summary judgment to him, and the award of attorney’s fees. We

AFFIRM the district court, in part, holding that (1) any copying of Plaintiff’s

1 The parties do not discuss the precise terms under which Plaintiff provided his4 designs extended only to unprotected elements of his works, and (2) Plaintiff

failed to plead a violation of the DMCA. We also VACATE

, in part, holding that

the district court applied the incorrect legal standard in awarding attorney’s fees,

and REMAND for the district court to apply the correct standard.

BACKGROUND

In the 1990s, Plaintiff James Zalewski was self

‐ employed as an architect

doing business through the firm Draftics, Ltd. During this period, he granted

Defendants T.P. Builders (“T.P.”) 2 and Cillis Builders (“Cillis”) 3 licenses to use

several colonial home designs he had created. According to Zalewski, after the

licenses expired, T.P. hired Defendant V.S. Sofia Engineering (“Sofia”) 4 and

Defendant DeRaven Design & Drafting (“DeRaven”) 5 and Cillis hired DeRaven

to customize his designs for their customers and continued marketing his

designs, or customized versions thereof, without his consent. Defendant Cicero

designs to Defendants.

2 “T.P.” refers to both T.P. Builders and its owner, Thomas Paonessa, who is also a

defendant.

3 “Cillis” refers to both Cillis Builders and its owner, Theodore Cillis, III, who is also a

defendant.

4 “Sofia” refers to both V.S. Sofia Engineering and its owner, Vincenzo Sofia, who is also

a defendant.

5 “DeRaven” refers to both DeRaven Design & Drafting and its owner, Roxanne K.

Heller, who is also a defendant.5 Builders (“Cicero”) 6 built two houses using DeRaven designs that were allegedly

based on Plaintiff’s originals.

Zalewski filed the first of these now consolidated actions in July 2010 in

the United States District Court for the Northern District of New York, alleging

that Defendants infringed the copyright in his original designs. Zalewski asserts

that, in building the homes and customizing the designs, Defendants copied the

overall size, shape, and silhouette of his designs as well as the placement of

rooms, windows, doors, closets, stairs, and other architectural features. In

addition to his copyright infringement claims, Zalewski asserts causes of action

under the DMCA, which prohibits, among other things, “intentionally

remov[ing] or alter[ing] any copyright management information.” 17 U.S.C. §

1202(b).

In his original complaint, Zalewski named as defendants the instant

Appellees, along with numerous other defendants including other builders,

engineers, architects, real estate agents, and owners of the purportedly infringing

homes. Then, between September and December 2010, Zalewski voluntarily

dismissed the vast majority of these defendants, and in October 2010, he filed a

6 “Cicero” refers to both Cicero Builder Dev. Inc. and its owner Luigi Cicero, who is also6 second amended complaint, naming only the instant Defendants. 7 The district

court dismissed this complaint in August 2011 but granted leave to file a Third

Amended Complaint

– the operative complaint.

Following this final complaint, Defendants filed a number of motions to

dismiss and motions for summary judgment, inter alia

, on the ground that the

designs they employed or created lacked substantial similarity with Zalewski’s.

Zalewski cross

‐ moved for summary judgment. Over the next few months the

district court sorted through the motions. After allowing some discovery, the

court granted judgment to all remaining defendants and denied Zalewski’s

cross

‐ motion for summary judgment. Still, the court permitted Zalewski to file a

fourth amended complaint to more clearly state his DMCA claims. Zalewski

passed on the offer and the district court entered final judgment in July 2012.

Finally, in November 2012, the court granted a motion by T.P. and Cicero

for expenses and attorney’s fees incurred defending against the first three

complaints. Zalewski now challenges the partial dismissal of his complaint, the

a defendant.

7 For reasons that are not clear, Plaintiff voluntarily dismissed his original action against

Cicero and another defendant not a party to this appeal, only to bring those claims

again, in separate actions. Plaintiff’s claims against Cicero were then re

‐ consolidated

with this action. Dist. Ct. Dkt. No 171.7 grant of summary judgment in favor of Defendants, the denial his motion for

summary judgment, and the award of attorney’s fees.

DISCUSSION

The Copyright Act, 17 U.S.C. §§ 101 et seq., provides a non

‐ exhaustive list

of categories of artistic works for which protection is available. The statute lists,

for example, “sound recordings,” “pantomimes and choreographic works,”

“pictorial, graphic and sculptural works,” and “literary works.” 17 U.S.C.

§ 102(a). When Congress passed the Copyright Act of 1976, architectural works

were not among the listed categories, and it was not clear to what extent

buildings or architectural plans could be copyrighted. William F. Patry, 2 Patry

on Copyright § 3:109 (2014). In the 1980s, however, Congress started the lengthy

process of updating the Copyright Act in order to join the Berne Convention, an

international agreement that governs copyright protection. See generally 7 Patry

on Copyright § 23:45. Among other things, the Berne Convention requires

signatory nations to protect architectural works. See 2 Patry on Copyright § 3:107.

Thus, the 1976 Act notwithstanding, the United States was compelled to clarify

that architectural works are protectable under federal law. Id. To this end,

Congress passed the Architectural Works Copyright Protection Act of 1990 and

added “architectural works” to the list of protectable material. Id

.8 A. Copyright Infringement

In order to make out a claim of copyright infringement for an architectural

work

– or any work

– a plaintiff must establish three things: 1) that his work is

protected by a valid copyright, 2) that the defendant copied his work, and 3) that

the copying was wrongful. See Arnstein v. Porter

, 154 F.2d 464, 468, 472–73 (2d

Cir. 1946); Laureyssens v. Idea Grp., Inc.

, 964 F.2d 131, 139–41 (2d Cir. 1992). The

second and third elements

– copying and wrongful copying

– are often confused.

This confusion is understandable; in many cases any copying of a work is

wrongful, and thus there is often no need to draw the distinction. 8 Nonetheless,

the distinction can be important. Not every portion or aspect of a copyrighted

work is given copyright law’s protection. Copying these aspects of a work is not

wrongful, and thus not all copying is wrongful.

An example is helpful. Suppose a particular law professor has never met

any of my law clerks and has never read any of their numerous law review

articles. 9 If that professor independently composes a paragraph, which, by

8 De minimis copying is not actionable. Ringgold v. Black Entm’t T.V. Inc.

, 126 F.3d 70, 75

(2d Cir. 1997).

9 Gregory M. Dickinson, Calibrating Chevron for Preemption

, 63 Admin. L. Rev. 667

(2011); Gregory M. Dickinson, An Empirical Study of Obstacle Preemption in the Supreme

Court

, 89 Neb. L. Rev. 682 (2011); Gregory M. Dickinson, note, An Interpretive Framework9 coincidence

, is very similar to

– or indeed identical with

– a paragraph from one of

their articles, the professor need not fear copyright liability. Even though the

works are similar, the professor has not copied, and, therefore, element two of

the infringement cause of action

– actual copying

– is not satisfied. Independent

creation is a defense to copyright infringement. Folio Impressions, Inc. v. Byer Cal.

,

937 F.2d 759, 765–66 (2d Cir. 1991).

Likewise, one of my clerk’s articles may contain a lengthy quotation from a

court opinion. The article is copyrighted, but the court opinion is in the public

domain. 10 A subsequent author may copy the language from the court opinion

for Narrower Immunity Under Section 230 of the Communications Decency Act

, 33 Harv. J.L.

& Pub. Pol’y 863 (2010); Gregory M. Dickinson, recent development, Chevron ’s Sliding

Scale in Wyeth v. Levine, 33 Harv. J.L. & Pub. Pol’y 1177 (2010); Jonathan Feingold &

Douglas Souza, Measuring the Racial Unevenness of Law School

, 15 Berkeley J. Afr.

‐ Am. L.

& Pol ʹ y 71 (2013); Jonathan Feingold & Karen Lorang, Defusing Implicit Bias

, 59 UCLA L.

Rev. Discourse 210 (2012); Jonathan Feingold, Racing Towards Color

‐ blindness: Stereotype

Threat and the Myth of Meritocracy

, 3 Geo. J.L. & Mod. Critical Race Persp. 231 (2011);

Kate Klonick, Comparing Apples to Applejacks: Cognitive Science Concepts of Similarity

Judgment and Derivative Works

, 60 J. Copyright Soc’y U.S.A. 365 (2013); Kate Klonick, Not

in My Atlantic Yards: Examining Netroots’ Role in Eminent Domain Reform, note, 100 Geo.

L.J. 263 (2011); Nicholas T. Matich, Patent Office Practice After the America Invents Act

, 23

Fed. Cir. B.J. 225 (2013); Nicholas T. Matich & Dotan Oliar, Copyright Preregistration:

Evidence and Lessons from the First Seven Years, 2005

– 2012

, 55 Ariz. L. Rev. 1073 (2013);

Nicholas T. Matich, note, Forum Domination: Religious Speech in Extremely Limited Public

Fora

, 98 Va. L. Rev. 1149 (2012).

10 Broadly, the “public domain” refers to all works, or elements thereof, that are not

subject to copyright protection. Most commonly, the public domain refers to works that

are sufficiently old that their copyright term has expired. See 17 U.S.C. §§ 301– 305.10 directly out of the article without infringing my clerk’s copyright. This second

author will have copied from my clerk, but not wrongfully. He took only what

was in the public domain and therefore unprotected. See Arnstein

, 154 F.2d at

472–73. In this example, element two

– copying

– is satisfied, but element three

–

wrongful copying

– is not.

Confusion between elements two and three arises because a close

similarity between two works is often relevant to proving both actual copying

and wrongful copying. Obviously, if two paragraphs are identical, a reasonable

inference is that the second paragraph was copied from the first. If the copied

paragraph contains only protected material, then this similarity is also strong

evidence that the copying was wrongful. Thus, in the first example above, the

professor independently created a paragraph identical to my clerk’s, but given

the striking similarity between the paragraphs, we might be forgiven for

thinking that the professor copied, and copied wrongfully. 11

Works of the United States government, like court opinions, are also in the public

domain. Id. § 105.

11 Fortunately for the good professor, most authors publishing in law reviews assign

their copyright to the journal. My clerks are a skeptical and litigious bunch. If they still

held copyright in their articles, they most likely would not believe the professor’s

protestations of innocence, and would promptly serve him with a summons and

complaint.11 When an original work contains many un protected elements, however, a

close similarity between it and a copy may prove only copying, not wrongful

copying. This is because the similarity may derive only from these unprotected

elements. For clarity, the term “substantial similarity” is properly reserved for

similarity that exists between the protected elements of a work and another

work. If two works are “substantially similar,” any copying was wrongful. See

Laureyssens

, 964 F.2d at 140. By contrast, similarity that relates to unprotected

elements is probative only of copying

– not wrongful copying

– and is referred to

as “probative similarity.” Id. (internal quotation marks omitted).

In this case, there is no dispute that Plaintiff’s copyrights are valid

(element one). There is also substantial evidence that Defendants copied from

Plaintiff’s designs. Defendants possessed copies of Plaintiff’s designs, and there

are very strong resemblances between those designs and Defendants’ final

product (probative similarity going to element two). Accordingly, granting

summary judgment to Defendants on these elements would be inappropriate.

This case turns on element three, wrongful copying. Here, even assuming

Defendants copied, they took only the unprotected elements of Plaintiff’s work.12 Any copying was not wrongful and the district court correctly granted summary

judgment. 12

1. Substantial Similarity and Wrongful Copying

To determine whether two works are substantially similar

– and thus

whether any copying was wrongful

– we usually apply the “ordinary observer”

test and ask whether “the ordinary observer, unless he set out to detect the

disparities, would be disposed to overlook them, and regard their aesthetic

appeal as the same.” Laureyssens

, 964 F.2d at 141 (internal quotation marks

omitted). Often, however, a work’s aesthetic appeal will be due largely to

unprotected elements. In these cases, we “must be more discerning, [and]

ignor[e] those aspects of a work that are unprotectable” as we apply the test, lest

we conflate mere copying with wrongful copying. Id. (internal quotation marks

12 As always, we review dismissals for failure to state a claim and grants of summary

judgment de novo

. See Garanti Finansal Kiralama A.S. v. Aqua Marine & Trading Inc.

, 697

F.3d 59, 63–64 (2d Cir. 2012). We have frequently said that because substantial similarity

is a fact

‐ intensive question, it is generally an issue reserved for a jury. Nonetheless, “we

have recognized that a court may determine non

‐ infringement as a matter of law[,]

. . . either because the similarity between two works concerns only non

‐ copyrightable

elements of the plaintiff ʹ s work, or because no reasonable jury, properly instructed,

could find that the two works are substantially similar.” Warner Bros. Inc. v. Am. Broad.

Cos., 720 F.2d 231, 240 (2d Cir. 1983) (emphasis and internal quotation marks omitted).13 omitted). Here, there is no doubt that Plaintiff’s designs, although copyrightable,

are replete with uncopyrightable elements.

What aspects of Zalewski’s designs are protectable? A fundamental rule of

copyright law is that it protects only “original works of authorship,” those

aspects of the work that originate with the author himself. 17 U.S.C. § 102(a).

Everything else in the work, the history it describes, the facts it mentions, and the

ideas it embraces, are in the public domain free for others to draw upon. It is the

peculiar expressions of that history, those facts, and those ideas that belong

exclusively to their author. See 17 U.S.C. § 102(b). Thus, any author may draw

from the history of English

‐ speaking peoples, but no one may copy from A

History of the English

‐ Speaking Peoples

. 13 Any artist may portray the Spanish Civil

War, but no one may paint another Guernica. 14 And anyone may draw a cartoon

mouse, but there can be only one Mickey. 15

13 A History of the English

‐ Speaking Peoples is a four

‐ volume history written by Sir

Winston S. Churchill.

14 Guernica is a painting by Pablo Picasso depicting the bombing of the Basque village

Guernica during the Spanish Civil War.

15 Of course, copyright protection for works by Churchill, Picasso, Disney, and every

other artist last only as long as the limited term Congress grants. See U.S. Const. art. I, §

8, cl. 8 (permitting congress to “secur[e] for limited Times to Authors and Inventors the

exclusive Right to their respective Writings and Discoveries”) (emphasis added); 7

U.S.C. §§ 301– 305 (setting the terms for copyrights).14 Numerous doctrines separate protectable expression from elements of the

public domain. For example, the doctrine of “scènes

‐ à

‐ faire” teaches that

elements of a work that are “indispensable, or at least standard, in the treatment

of a given topic”

– like cowboys, bank robbers, and shootouts in stories of the

American West

– get no protection. Hoehling v. Universal City Studios, Inc.

, 618

F.2d 972, 979 (2d Cir. 1980). Similarly, the “merger doctrine” instructs that some

ideas can only be expressed in a limited number of ways

– single words or colors

for example. When expression is so limited, idea and expression “merge.”

Expressions merged with ideas cannot be protected, lest one author own the idea

itself. Morrissey v. Procter & Gamble Co.

, 379 F.2d 675, 678–79 (1st Cir. 1967).

The central question of this case is how to apply these and related

doctrines to separate the protectable from the unprotectable in architectural

works. Defendants urge us to chart a different course. They view Plaintiff’s

designs as a compilation of various architectural features that individually and

collectively do not merit copyright protection. They rely on the Eleventh Circuit

case of Intervest Construction, Inc. v. Canterbury Estate Homes, Inc.

, 554 F.3d 914,

919 (11th Cir. 2008), and the Supreme Court’s doctrine governing “compilations”

set out in Feist Publications, Inc. v. Rural Telephone Service Co.

, 499 U.S. 340, 348

(1991).15 In Feist

, plaintiff asserted a copyright in its telephone book. Feist

, 499 U.S.

at 344. Although the book was comprised of individually un

‐ copyrightable facts

– people’s phone numbers

– plaintiff argued that the compilation and

arrangement of those facts should nonetheless be copyrightable to protect its

investment in creating the phonebook. Id

. If its work could be freely

appropriated, plaintiff argued, there would be no incentive to create similar

works in the future. Id

. at 353. The Supreme Court rejected this argument and

held that a copyright could subsist in an arrangement of individually un

‐

copyrightable elements, but emphasized that the Copyright Act requires works

to be “original.” Id

. at 358; see also 17 U.S.C. § 102(a). Thus, in order for a

compilation or arrangement to be worthy of copyright protection, the arrangement

itself must be original. The Supreme Court held that standard compilations, like

the Feist plaintiff’s alphabetical listing, get no protection.

In Intervest

, the Eleventh Circuit applied this doctrine to architecture. It

held that all copyrighted works are either “creative, derivative, [or] compiled,”

that is original, variations on an original, or compilations of unoriginal material.

Intervest

, 554 F.3d at 919 n.3. According to Intervest

, each kind of work gets

varying levels of protection. Id. The court then relied on the similarity between

the statutory definitions of “compilation” and “architectural work” to conclude16 that architectural works fall into the “compiled” category, and are thus entitled

to only a “thin” copyright based solely on their “arrangement and coordination”

of unoriginal and uncopyrightable elements. 554 F.3d at 919. On facts similar to

those here, the Intervest court held that any copying of the plaintiff’s house

designs went only to standard architectural features arranged in standard ways.

In other words, any copying was not wrongful. Id

.

While we agree with the outcome in Intervest

, we disagree with its

reasoning. “Creative,” “derivative,” and “compiled” may be useful concepts in

some cases, but we reject the idea that works always fall neatly into one of these

categories. Every kind of work at some level is a compilation, an arrangement of

uncopyrightable “common elements.” Id. No individual word is copyrightable,

but the arrangement of words into a book is. No color is copyrightable, but the

arrangement of colors on canvas is. Likewise, doors and walls are not

copyrightable, but their arrangement in a building is. Some architectural designs,

like that of a single

‐ room log cabin, will consist solely of standard features

arranged in standard ways; others, like the Guggenheim, will include standard

features, but also present something entirely new. Architecture, in this regard, is

like every art form.17 Moreover, we see little support in the statute for Intervest’s use of

categories. Although the statutory definitions of “compilations” and

“architectural works” both speak of an “arrangement” or “to arrange” and refer

to “standard features” or “preexisting material,” architectural works and

compilations are not the only works that are defined with reference to their

discrete

– and perhaps uncopyrightable

– elements. 17 U.S.C. § 101. 16 For

example, the statute defines “Literary works” as “words, numbers, or other

. . .

symbols” arranged in “books, periodicals” or other media; “Sound Recordings”

as “a series of musical, spoken, or other sounds”; a “computer program” as “a set

of statements or instructions”; and “Motion Pictures” and “Audio Visual works”

as “series of related images.” 17 U.S.C. § 101. As we have explained, the merger

doctrine will often render these discrete elements un

‐ copyrightable. Softel v.

Dragon Med. & Scientific Commc’ns

, 118 F.3d 955, 964 (2d Cir. 1997) (explaining

16 Additionally, the definitions of “architectural work” and “compilation” have little else

in common. The statute defines an “architectural work” as “the design of a building as

embodied in any tangible medium of expression, including a building, architectural

plans, or drawings. The 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. A “compilation” is a “work formed by the

collection and assembling of preexisting materials or of data that are selected,

coordinated, or arranged in such a way that the resulting work as a whole constitutes an

original work of authorship.” Id

.18 that “the words that constitute a literary work are not copyrightable, yet

. . . a

collection of words” may be). 17

Labeling architecture a compilation obscures the real issue. Every work of

art will have some standard elements, which taken in isolation are un

‐

copyrightable, but many works will have original elements

– or original

arrangements of elements. The challenge in adjudicating copyright cases is not to

determine whether a work is a creative work, a derivative work, or a

compilation, but to determine what in it originated with the author and what did

not. Intervest fails to do this. It compares the floor plans of the two houses,

“focusing only on the narrow arrangement and coordination” of what it deems

“standard

. . . features” and intuits that there was no copying of the arrangement.

554 F.3d at 921. But it fails to provide any analysis of what made a feature

“standard” and unprotectable. Hence, we find it of little assistance here.

17 The legislative history also supports this view. When Congress added architectural

works to the list of copyrightable subject matter, it made clear that it wanted

architectural works analyzed no differently than other works and differentiated

between architectural works that present “original design elements” and those that do

not. H.R. Rep. No. 101–735 (1990), reprinted in 1990 U.S.C.C.A.N. 6935, 6952. Intervest

contravenes Congress’ intent by treating architectural works differently than other

works and failing to determine what in architecture

– beyond mere arrangement

– is

copyrightable.19 Courts should treat architectural copyrights no differently than other

copyrights. This is what Congress envisioned, and it is an approach we have

employed before. H.R Rep. No. 101–735 (1990), reprinted in 1990 U.S.C.C.A.N.

6935, 6951. In Attia v. Society of the New York Hospital

, 201 F.3d 50 (2d Cir. 1999),

for example, the plaintiff had been retained by New York Hospital to design an

expansion of its facility over FDR Drive. The hospital rejected his preliminary

sketches, but ultimately went with a similar design by another firm. The plaintiff

admitted that his drawings were “preliminary and generalized” “outline[s]” of

“concepts.” Id

. at 55–56. Although there were some similarities between the

plaintiff’s and the defendant’s designs, there were also significant differences.

Thus, we held that any copying went to unprotected ideas, “concepts,” rather

than concrete expression. Id.

In Peter F. Gaito Architecture, LLC v. Simone Development Corp.

, 602 F.3d 57,

68 (2d Cir. 2010), on a similar set of facts, we held that copying of “architecture

that was light, airy, [and] transparent,” as well as design parameters and

“generalized notions of where to place functional elements,” went only to ideas

and not protected expression. Finally, in Sparaco v. Lawler, Matusky, Skelly,

Engineers LLP

, 303 F.3d 460, 468–69 (2d Cir. 2002), we held that although a

construction site preparation plan was preliminary in the sense that it pertained20 to the early phases of construction, it was extremely detailed and thus more than

a mere idea.

Determining the boundaries of copyright protection in non

‐ traditional

areas of creative expression, like architecture, is not something new. A number

of our cases have applied copyright doctrines in other unusual contexts. In

Computer Associates International, Inc. v. Altai, Inc.

, 982 F.2d 693 (2d Cir. 1992), for

example, we had to determine for the first time what elements of a computer

program are protectable. To do so, we simply applied the usual copyright

doctrines of merger, public domain, and scènes

‐ à

‐ faire to these new

circumstances. Id. at 707. For example, we held that the merger doctrine would

apply when “efficiency concerns

. . . so narrow the practical range of [coding

options] as to make only one or two forms of expression workable

. . . .” Id. at

708. Similarly, we applied the doctrine of scènes

‐ à

‐ faire because “in many

instances it is virtually impossible to write a program

. . . without employing

standard techniques.” Id. at 709 (internal quotation marks omitted).

Consequently, we held that coding dictated by mechanical specifications,

industry design standards, market demands, and usual programing practices

also did not get copyright protection. Id. at 710.21 All of these principles apply equally well to architecture. Efficiency is an

important architectural concern. Any design elements attributable to building

codes, topography, structures that already exist on the construction site, or

engineering necessity should therefore get no protection.

There are scènes

‐ à

‐ faire in architecture. Neoclassical government

buildings, colonial houses, and modern high

‐ rise office buildings are all

recognized styles from which architects draw. Elements taken from these styles

should get no protection. Likewise, there are certain market expectations for

homes or commercial buildings. Design features used by all architects, because

of consumer demand, also get no protection.

Our prior architecture cases support this approach. In Sparaco

, we held that

there can be no copyright in a plan insofar as it merely represents the

topography of a building site. 303 F.3d at 467. Topography is an un

‐

copyrightable “fact.” 18 In Attia we recognized that “generalized notions of where

18 We do not doubt that topography will often inspire, or indeed require, original

architectural solutions that will be worthy of copyright. Frank Lloyd Wright’s

Fallingwater is a prominent example. There may also be original ways of representing

existing topography. The topography itself, however, is uncopyrightable. If two

architects submit competing bids for the same project, one cannot assert that the other’s

design infringed his copyright because their designs include reference to the same

topography or share similarities dictated by that topography. One expects competent22 to place functional elements, how to route the flow of traffic, and

. . . methods of

construction” are un

‐ protectable. 201 F.3d at 55. Architects cannot claim that

good engineering is original to them

– or at least can get no copyright protection

for it. 19 Finally, in Gaito Architecture

, we held that there is no copyright in a

building plan’s design parameters. 602 F.3d at 68. Constraints placed on an

architect by the way her client plans to use the building do not originate with the

architect.

2. The Instant Plans

After considering these principles and reviewing the designs in question,

we conclude that even if Defendants copied Zalewski’s plans, they copied only

the unprotected elements of his designs. Plaintiff’s principal argument is that

Defendants’ designs are so close to his that Defendants must have infringed. He

is correct that the designs are, in many respects, quite close, but this is not

enough. It proves at most copying, not wrongful copying.

architects to accurately represent a construction site.

We note that this only applies to existing topography, however, because existing

topography is an uncopyrightable fact. An architect may be able to copyright his

original proposals for alterations to the topography. On the other hand, such alterations

may be dictated by good engineering practice or a customer requirement, in which case

they may not be copyrightable. We leave exploration of these issues to future cases.23 First, many of the similarities are a function of consumer expectations and

standard house design generally. Plaintiff can get no credit for putting a closet in

every bedroom, a fireplace in the middle of an exterior wall, and kitchen

counters against the kitchen walls. Furthermore, the overall footprint of the

house and the size of the rooms are “design parameters” dictated by consumer

preferences and the lot the house will occupy, not the architect. See Gaito

, 602

F.3d at 68.

Finally, most of the similarities between Plaintiff’s and Defendants’

designs are features of all colonial homes, or houses generally. So long as

Plaintiff was seeking to design a colonial house, he was bound to certain

conventions. He cannot claim copyright in those conventions. Great artists often

express themselves through the vocabulary of existing forms. Shakespeare wrote

his Sonnets; Brahms composed his Hungarian Dances ; and Plaintiff designed his

colonial houses. Because we must preserve these forms for future artists, neither

iambic pentameter, nor European folk motifs, nor clapboard siding are

copyrightable.

19 The functional aspects of a work are governed by patent law, not copyright law. See

Baker v. Selden

, 101 U.S. 99, 104 (1879).24 Plaintiff makes no attempt to distinguish those aspects of his designs that

were original to him from those dictated by the form in which he worked. For

example, Zalewski claims that the “front porches are the same design, size, and

in the same location.” Reply Br. 6. But a door centered on the front of the house is

typical of many homes, and colonials in particular. 20 Moreover, there are subtle

differences in the paneling, size, and framing of Plaintiff’s and Defendants’

doors. These differences are not great, but given the constraints of a colonial

design, they are significant. The same is true of the windows and garage doors

that Plaintiff claims are identical. They are quite similar in location, size, and

general design, but again, the similarities are due primarily to the shared colonial

archetype. The window panes, shutters, and garage

‐ door paneling all have

subtle differences. Likewise, the designs’ shared footprint and general layout are

in keeping with the colonial style. There are only so many ways to arrange four

20 Defendants have helpfully included in the record excerpts from several treatises,

which describe the basics of colonial architecture. See, e.g.

, Virginia McAlester & Lee

McAlester, A Field Guide to American Houses (1984); Henry Lionel Williams & Ottalie

K. Williams, Old American Houses 1700 to 1850: How to Restore, Remodel, and

Reproduce Them (1957). The features of prominent architectural styles, particularly of

home designs, are matters with which we are familiar and of which we can take judicial

notice. Fed. R. Ev. 201. Although Plaintiff insists that his houses are not in the colonial

style, he offers no argument or evidence on this point, merely assertion. We find these

assertions incredible. See Scott v. Harris

, 550 U.S. 372, 380 (2007).25 bedrooms upstairs and a kitchen, dining room, living room, and study

downstairs. Beyond these similarities, Plaintiff’s and Defendants’ layouts are

different in many ways. The exact placement and sizes of doors, closets, and

countertops often differ as do the arrangements of rooms.

Although he undoubtedly spent many hours on his designs, and although

there is certainly something of Plaintiff’s own expression in his work, as long as

Plaintiff adhered to a pre

‐ existing style his original contribution was slight

– his

copyright very thin. Only very close copying would have taken whatever

actually belonged to Plaintiff. See Nihon Keizai Shimbun, Inc. v. Comline Bus. Data,

Inc.

, 166 F.3d 65, 71 (2d Cir. 1999). Copying that is not so close would

– and in

this case did

– only capture the generalities of the style in which Plaintiff worked

and elements common to all homes. Defendants’ houses shared Plaintiff’s

general style, but took nothing from his original expression.

B. Plaintiff’s Digital Millennium Copyright Act Claim

In addition to his copyright infringement claim discussed above, Plaintiff

appears to bring several other claims, the nature of which is not clear. The

DMCA prohibits, among other things, “intentionally remov[ing] or alter[ing] any

copyright management information,” such as the familiar © copyright notice. 17

U.S.C. § 1202(b). In places, Plaintiff obliquely suggests that Defendants26 “removed” the copyright notices from his work, apparently by making

photocopies of his drawings and omitting the copyright notices in the process.

Regardless of whether we construe this vague assertion as a DMCA claim or a

copyright infringement claim, it was properly dismissed on summary judgment

because it had no support in the record and was never adequately alleged,

despite the district court offering Plaintiff an opportunity to amend his

complaint to clearly allege photocopying and removal of copyright management

information from supposedly photocopied works. Since Plaintiff failed to plead

his DMCA claims or provide any evidentiary support for them, contradicts

portions of the DMCA claims in his brief, and passed up an opportunity to

clarify his complaint, we affirm the district court’s dismissal of those claims on

summary judgment.

C. Attorney’s Fees

Finally, Plaintiff appeals the district court’s award of attorney’s fees to T.P.

and DeRaven under § 505 of the Copyright Act. We review an award of

attorney’s fees for reasonableness “in terms of the circumstances of the particular

case, and the district court’s determination will be reversed on appeal only for an

abuse of discretion.” Matthew Bender & Co., v. West Publ’g. Co.

, 240 F.3d 116, 121

(2d Cir. 2001) (quoting Alderman v. Pan Am World Airways

, 169 F.3d 99, 102 (2d27 Cir. 1999)). “[T]his Court may reverse an award of attorney[’s] fees if the district

court applied the wrong legal standard

. . . , or [made] a clearly erroneous

assessment of the evidence.” Id

. (internal quotation marks omitted).

The Copyright Act provides courts with the discretion to award

reasonable attorney’s fees to a prevailing party. See 17 U.S.C. § 505. Although

“[t]here is no precise rule or formula” that district courts must apply in

determining whether to award attorney’s fees, the Supreme Court has suggested

a list of non

‐ exclusive factors that courts may consider: “frivolousness,

motivation, objective unreasonableness (both in the factual and in the legal

components of the case) and the need in particular circumstances to advance

considerations of compensation and deterrence.” Fogerty v. Fantasy, Inc.

, 510 U.S.

517, 534 & n.19 (1994) (internal quotation marks omitted). Of these factors,

“objective reasonableness

. . . should be given substantial weight in determining

whether an award of attorney[’s] fees is warranted” because “the imposition of a

fee award against a copyright holder with an objectively reasonable litigation

position will generally not promote the purposes of the Copyright Act.” Matthew

Bender

, 240 F.3d at 122.

The district court concluded that, while Zalewski’s Third Amended

Complaint was objectively reasonable, his first three complaints were objectively28 unreasonable because they “were strewn with legal conclusions and lacked

sufficient factual bases to survive [D]efendants’ motions to dismiss,” and they

had improperly named dozens of defendants who “bore no culpability,” which

“ultimately complicated the litigation.” While the district court may have been

correct that the initial complaints and Zalewski’s decision to name nearly ninety

defendants, including the current owners of the allegedly infringing homes, were

ill

‐ advised, these deficiencies do not make the bringing of this action “objectively

unreasonable.” Indeed, the district court’s finding that Zalewski’s Third

Amended Complaint was objectively reasonable

— that is, had a reasonable

basis in law and fact

— seems logically inconsistent with finding that the prior

complaints, which set out the same basic claims, were objectively unreasonable.

Moreover, the sanction imposed here—an award of attorney’s fees to T.P. and

DeRaven, defendants against whom the district court found Zalewski’s claims to

be reasonable—is poorly matched to the deficiencies identified by the district

court. To the extent that the district court relied on a finding of objective

unreasonableness, such a finding on the facts of this case is not “faithful to the

purposes of the Copyright Act.” Fogerty

, 510 U.S. at 534 n.19.

However, it appears that Zalewski’s initial conduct might warrant an

award of attorney’s fees under the Copyright Act based on other factors. See, e.g.,29 Matthew Bender

, 240 F.3d at 126 (“Misconduct before or during litigation can, in

appropriate cases, provide the basis for an award of fees.”). The district court

may also be able to explain why in its view the first three complaints were so

obtuse, abusive, and otherwise different from the Third Amended Complaint

that its award is justified. Therefore, we vacate the district court’s award of

attorney’s fees to T.P. and DeRaven and remand for reconsideration of whether

an award of attorney’s fees is appropriate in light of this order.

CONCLUSION

For the foregoing reasons, the district court’s orders of February 22, 2012,

dismissing Plaintiff’s claims against Cillis, DeRaven, and Sofia, its order of June

18, 2012 granting summary judgment to T.P. and Cicero, and its judgment of July

20, 2012 are AFFIRMED. The district court’s order and judgment of November

21, 2012, granting attorney’s fees to T.P. and DeRaven are VACATED and

REMANDED for reconsideration in light of this order. Appellees outstanding

motion is DENIED as moot.