Practice Areas

Print PDF

Establishing infringement of “thin” copyrights

Year End 2021 IP Newsletter

They’re ba-a-ack! The copyright troll, whose business model the U.S. Court of Appeals for the Seventh Circuit has described as an “intellectual property shakedown,” again found its claims under scrutiny by the court. This time, the court took the occasion to clarify what’s necessary for a successful claim of infringement of works with “thin” copyright protection.

Case blueprint

The court didn’t hide its disdain for the plaintiff. It described the company as “opportunistic holders of registered copyrights” on thousands of floor plans for suburban, single-family homes “whose business models center on litigation rather than creative expression.”

According to the court, the company’s employees “trawl the Internet in search of targets for strategic infringement suits of questionable merit” with the goal of securing prompt settlements from defendants that don’t want to get tied up in expensive litigation. (See “Anatomy of a copyright troll” below.) The company has filed more than 100 such lawsuits over the past decade or so.

Here, it sued a construction firm and its related companies, alleging they copied 10 of its registered floor plans. The district court dismissed the case before trial, following the same reasoning the Seventh Circuit had used in an earlier case brought by the plaintiff against a different builder.

On appeal, the plaintiff asked the appellate court to overrule that case. The court declined to do so and instead restated and clarified the basic elements a plaintiff must establish to get to court when claiming copyright infringement of a thinly protected work.

Legal doctrines

As the court explained, its earlier decision was guided by two well-established copyright doctrines: scènes à faire and merger. The doctrines restrict the ability of the copyright owner to claim expansive intellectual property rights in a way that impedes future creativity.

Scènes à faire refers to standard elements in a genre that are “so rudimentary, commonplace, standard or unavoidable” that they don’t distinguish one work in the genre from another. These elements can’t be protected by copyright because the creation of a single work in a genre with such elements would prevent others from contributing to the genre, giving the copyright holder exclusive rights in the genre’s basic elements.

The floor plans at issue largely consist of scènes à faire — kitchens, living and dining rooms, bedrooms, and so forth. The arrangements also are scènes à faire, with, for example, the kitchen close to the dining room and the bedrooms near a bathroom.

These arrangements, the court said, are driven by functionality, which is where the merger doctrine comes into play. Copyright protects only expression — not ideas, procedures or concepts. If an idea can be expressed only in limited ways, the expression “merges” into the idea and isn’t subject to copyright protection.

That was the situation here, the court concluded. Only a limited number of possible floor plans exist. By creating more than 2,800 of these plans, the plaintiff has attempted to occupy the entire field.

Thin protection

Applying the two doctrines, the court again found the copyright in the floor plans is thin. The designs comprise primarily unprotectable stock elements to a large extent dictated by functional considerations and existing design conventions for suburban, single-family homes.

In this architectural genre, in which copyright protection is thin, the court said, a plaintiff needs to show more than substantial similarity. Only a “virtually identical” plan will infringe a copyrighted floor plan.

In the absence of direct evidence of actual copying by the defendant, the plaintiff had to rely on circumstantial evidence of both access to the copyrighted work and “probative similarity.” The court didn’t bother addressing access because it found that the allegedly infringing plans were materially dissimilar. They had, for example, different room dimensions, ceiling heights and style.

The future of trolling

It remains to be seen how, or if, the ruling affects the troll’s business model going forward. At the very least, the company might want to avoid targets in the Seventh Circuit.

SIDEBAR: Anatomy of a copyright troll

The U.S. Court of Appeals for the Seventh Circuit in the Design Basics case (see main article) went into some detail about how that particular copyright troll plaintiff operates. The description provides useful insights into the operations of such trolls in general.

According to the court, the owners bought the company as an investment opportunity, and litigation proceeds have been a principal revenue stream for the firm. It incentivizes employees to find litigation targets online by paying a finder’s fee (a percentage of net recovery) for locating a prospective infringement defendant.

The firm maintains an easily accessible website with more than 2,800 floor plans and regularly sends mass mailings of its designs to members of the National Association of Home Builders. It has sent millions of these publications to builders, in the hope that future defendants will have some of the designs in their files. Sure enough, the defendant in the recent case had photocopies of four of the firm’s designs, which provided the basis for the lawsuit.

Read the newsletter here