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Design Basics LLC v. Campbellsport Building Supply Inc.

United States District Court, E.D. Wisconsin

October 4, 2016

DESIGN BASICS, LLC, Plaintiff,
v.
DREXEL BUILDING SUPPLY, INC., et al., Defendants.

          DECISION AND ORDER ON MOTIONS IN LIMINE

          WILLIAM C. GRIESBACH, CHIEF JUDGE

         1. Docket No. 184 - Motion to Exclude Testimony of Robert Greenstreet, Ph.D.

         The most significant motion presently before me is Plaintiff's motion to exclude the testimony of Robert Greenstreet, Ph.D., a licensed architect and the dean of the School of Architecture at the University of Wisconsin-Milwaukee. The Defendants proposed to offer Dr. Greenstreet to give opinions on both validity (originality) and infringement.

         I have already rejected Dr. Greenstreet's opinions as to validity, finding that the designs at issue have a modicum of creativity, within copyright law's narrow meaning of that term, sufficient to be copyrightable. The second question he proposes to testify about is infringement. In short, he would testify to help explain to the jury the Defendants' view that their home plans are sufficiently different that they do not infringe. The Plaintiff argues that, as with the originality question, Dr. Greenstreet lacked knowledge as to the meaning of substantial similarity within copyright law. In his report, he states that he “critically compared” the designs to determine whether they were substantially similar. However, the Plaintiff argues, the test for substantial similarity is not based on an architectural expert conducting a “critical comparison, ” it is based on the more humble “ordinary observer” test first articulated by Judge Learned Hand some 56 years ago. Under that test, “two works are substantially similar if ‘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.'” Wildlife Exp. Corp. v. Carol Wright Sales, Inc., 18 F.3d 502, 509 (7th Cir. 1994) (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960)).

         In determining infringement, the Seventh Circuit has adopted a two-part test. The first question is whether the Defendant copied the Plaintiff's work, while the second asks whether what was copied was the protectable part of the Plaintiff's creation. Atari, Inc. v. N. Am. Philips Consumer Elecs. Corp., 672 F.2d 607, 614 (7th Cir. 1982). The test is sometimes described as confusing, or “somewhat nebulous.” Nash v. CBS, Inc., 704 F.Supp. 823, 826 (N.D. Ill. 1989). In practice, the two prongs of the test often collapse into one, as in Atari and Incredible Techs., Inc. v. Virtual Techs., Inc., 400 F.3d 1007, 1011 (7th Cir. 2005).

         In Francescatti v. Germanotta, Judge Aspen of the Northern District of Illinois conducted a thorough examination of the propriety of relying on expert testimony in copyright cases. 2014 WL 2767231, at *8 (N.D. Ill. June 17, 2014). In that case, which involved copyrighted songs the court described as computer-generated and complex, the court concluded that expert testimony was appropriate, given how complex the music was. Id. However, the testimony was only useful in determining the first part of the two-part infringement analysis (copying); it was not appropriate for determining whether what was copied was the protect ed expression. This conclusion echoes other cases in this district and other circuits, such as the Second. See Design Basics, LLC, et al. v. Lexington Homes, Inc., No. 14-C-1102, ECF No. 100 at 8-9 (E.D. Wis. September 30, 2016); Wildlife Exp. Corp. v. Carol Wright Sales, Inc., No. IP 89-844-C, 1992 WL 597841, at *2 (S.D. Ind. Aug. 13, 1992) (“When considering the first test, one must compare the two works in their entirety, including both the protected and the nonprotected portions . . . . To aid in making this comparison, expert testimony analyzing each work and dissection of the parts of the work may be employed.”)

         As its name suggests, however, the “ordinary observer” test should not rely on the opinions of an expert. “It has been said that this test does not involve ‘analytic dissection and expert testimony, ' but depends on whether the accused work has captured the ‘total concept and feel' of the copyrighted work.” Atari, Inc. v. N. Am. Philips Consumer Elecs. Corp., 672 F.2d 607, 614 (7th Cir. 1982) (citations omitted). “While dissection is generally disfavored, the ordinary observer test, in application, must take into account that the copyright laws preclude appropriation of only those elements of the work that are protected by the copyright.” Id. Thus, the expert should not testify about whether the defendants copied the plaintiff's protected work. But that does not mean an expert must play no role at all in the analysis. Specifically, in answering the ordinary observer question, a jury will need to determine in a general sense what aspects of home designs are, and are not, protectable. The court will instruct the jury as to what the law provides: for example, elements that merely echo customary styles or industry standards are not protectable. Home Design Svcs., Inc. v. Turner Heritage Homes Inc., 825 F.3d 1314, 1324 (11th Cir. 2016). In addition,

Any design elements attributable to building codes, topography, structures that already exist on the construction site, or engineering necessity should . . . 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.

Zalewsk i v. Cicero Builder Dev., Inc., 754 F.3d 95, 105 (2d Cir. 2014).

         Although the court will instruct the jury as to what is protectable in an abstract sense, it is reasonable to believe an expert in architecture could testify to the facts underlying the protectable/unprotectable distinction. For example, he could identify engineering or design requirements that are common to all single-family homes; he could explain which features are common to a given style or floor plan; and he could identify aspects of room placement and flow that are inherent in home design. See, e.g., Home Design Svcs., 825 F.3d at 1318 (expert “began by reviewing the industry standards governing the overall layout of a four-three split plan, and describing the various considerations that drove the standards.”) By testifying in such a fashion, an expert would not usurp the jury's role in determining whether any copying was copying of protected material. Instead, he would be providing the underlying factual information that the jury could use to determine whether what was copied was protected.

         To summarize, then, an expert may offer opinions relevant to copying, although it is unclear the extent to which that question is at issue in this case. Presumably, Greenstreet's expertise could assist the trier of fact by highlighting differences in the works and explaining why those differences tend to show an absence of copying. “If there is evidence of access and similarities exist, then the trier of the facts must determine whether the similarities are sufficient to prove copying. On this issue, analysis (‘dissection') is relevant, and the testimony of experts may be received to aid the trier of the facts.” Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946). The expert's testimony may also aid the jury in understanding elements of single-family homes that are common to a given style or design. But the expert's testimony may not stray into the more subjective question, which asks whether the Defendants copied the Plaintiff's protected material. “If copying is established, then only does there arise the second issue, that of illicit copying (unlawful appropriation). On that issue . . . the test is the response of the ordinary lay hearer; accordingly, on that issue, ‘dissection' and expert testimony are irrelevant.” Id. Accordingly, the motion to exclude will be granted in part and denied in part: it is granted in that Greenstreet will not be allowed to testify as to whether the Defendants copied any protected material, but it is denied in all other respects.

         2. Docket No. 164 - Motion to Limit Digital Millenium Copyright Act (DMCA) Damages[1]

         Defendants argue that the Plaintiffs should be entitled to a single DMCA statutory award for each alleged infringement at issue in this case. Under 17 U.S.C. § 1203(c)(3), a party may elect to recover an award of statutory damages for “each violation” of section 1201 or 1202, both of which prohibit removing copyright management information (CMI) or circumventing copyright protection systems. In the Defendants' view, this means each “act” that violates one of those sections gives rise to a single claim for statutory damages. In other words, even if fifty people ended up receiving the affected material, there was only one violation that could give rise to damages.

         Unfortunately the parties are vague about what conduct is alleged to violate the DMCA, and so it is difficult to issue a ruling in the abstract. It seems the Defendants disseminated several copies of the same floor plan to builders at the same time, and thus they argue that issuing copies of the same house plan should be viewed as a single, discrete violation. The Defendants are correct inasmuch as the DMCA applies for each act violating the DMCA without respect to how many individuals are recipients of the affected work. The DMCA focuses on violating acts, not recipients. However, that does not mean distributing the same floor plan to multiple people constitutes a single violation. The Defendants do not have any support for the contention that the DMCA would lump violating acts together merely because they involve the same floor plan or occur at the same time. Instead, the DMCA makes it a violation for each act. The McClatchey case, on which Defendants rely, proves the point, emphasizing that damages are available per act. There, it was happenstance that more than a thousand people received the violating images because there was only a single act (one email):

The DMCA damages provisions are clearly focused on the defendant's conduct. Compare section 1203(c)(3)(A) (calculating statutory damages “per act”). In essence, the term “each violation” is best understood to mean “each violative act performed by Defendant.” Thus, AP would violate the DMCA each time it wrongfully distributed a photograph to its subscribers. In this case, the Court concludes that AP committed only one alleged violative act by distributing the End of Serenity photograph to its PhotoStream subscribers, even though there were 1, 147 recipients.

McClatchey v. Associated Press, No. 305-CV-145, 2007 WL 1630261, at *6 (W.D. Pa. June 4, 2007).

         Here, if the Defendants shared the same image multiple times, that would be multiple acts in violation of the DMCA. McClatchy's reasoning does not apply because it is based on a single act, not a single photograph. Under McClatchy's line of reasoning, if the defendant had sent 1, 147 emails, that would result in 1, 147 violations ...


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