Designworks Homes, Inc. v. Thomson Sailors Homes, L.L.C ( 2021 )

United States Court of Appeals
For the Eighth Circuit
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No. 19-3458
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Designworks Homes, Inc., a Missouri corporation; Charles Lawrence James
Plaintiffs - Appellants
v.
Thomson Sailors Homes, L.L.C., a Kansas L.L.C.; Thomson Homes, L.L.C.;
Donald Sailors; Edward B. Thomson, III; Team 3 Architects, Inc.; Bruce H.
Beatty; Bobby Sailors; Eric Bradley Thomson; Elswood Smith Carlson, P.A.
Defendants - Appellees
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Appeal from United States District Court
for the Western District of Missouri - Kansas City
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Submitted: June 15, 2021
Filed: August 19, 2021
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Before GRUENDER, ARNOLD, and STRAS, Circuit Judges.
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STRAS, Circuit Judge.
Designworks Homes, Inc., thinks that a group of architects and other builders
copied one of its home designs. It also believes that, even if there was no copyright
violation, it should not have to reimburse the alleged infringers for their attorney
fees and costs. The district court1 disagreed on both points, and so do we.
I.
Charles James built a house on Melrose Drive in Columbia, Missouri. The
house, just like two others built in the area, has a two-story “triangular atrium design
with stairs as part of the main room.” Many years later, Designworks registered the
design as a copyrighted architectural work.
Another firm, Thomson Sailors Homes, L.L.C., also used a triangular-atrium
design in what it called the Newbury Model. Designworks believes that everyone
involved in the design and promotion of the Newbury Model, including those who
displayed it in brochures, infringed on its copyright. See 17 U.S.C. § 102(a)(8)
(extending copyright protection to “architectural works”).
At summary judgment, the district court did not see things the same way. It
concluded that the Newbury Model was not a copy of the original Melrose home. It
also decided to award over $400,000 in attorney fees and costs to Thomson Sailors
and the other defendants. See id. § 505. The reason: Designworks’ “litigating
position was unreasonable and . . . [its] pursuit of the case was, at best, frivolous in
nature and, at worst, done in bad faith.”
II.
We review the district court’s decision to grant summary judgment de novo.
See Warner Bros. Ent., Inc. v. X One X Prods., 644 F.3d 584, 591 (8th Cir. 2011).
Summary judgment was appropriate “if the evidence, viewed in the light most
1
The Honorable Stephen R. Bough, United States District Judge for the
Western District of Missouri.
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favorable to [Designworks], demonstrates that there is no genuine issue of material
fact and that [Thomson Sailors was] entitled to judgment as a matter of law.” Id.(internal quotation marks omitted).
To prevail on its copyright claims, Designworks had to prove that Thomson
Sailors copied its design. See Taylor Corp. v. Four Seasons Greetings, LLC, 403
F.3d 958, 964 (8th Cir. 2005). It had no direct evidence, so it attempted to make its
case indirectly by showing that Thomson Sailors had access to the Melrose house
and then designed and built “substantially similar” homes. Id. at 966–67.
Substantial similarity incorporates two concepts. First, there must be
similarity of ideas, which must be “evaluated extrinsically, focusing on [the]
objective similarities . . . of the works.” Rottlund Co. v. Pinnacle Corp., 452 F.3d
726, 731 (8th Cir. 2006). Second, if the ideas are similar, they must be similarly
expressed, meaning that an “ordinary, reasonable person” would think that “the total
concept and feel of the [designs] in question are substantially similar.”2 Hartman v.
Hallmark Cards, Inc., 833 F.2d 117, 120–21 (8th Cir. 1987) (referring to this as “the
intrinsic test”). Without similarity in ideas and expression, there is no infringement.
See id. at 120.
After “compar[ing] [the] works,” id. (second alteration in original) (quoting
O’Neill v. Dell Publ’g Co., 630 F.2d 685, 690 (1st Cir. 1980)), we agree with the
district court that substantial similarity in expression is missing here. The Melrose
house, which was built first, has a roughly rectangular floorplan, except for a large
diamond-shaped great room. See Appendix. The corners of the great room intersect
the rear wall and, as the floor plan of the home shows, half of the diamond extends
2
Even if the district court misstated the standard for evaluating similarity, as
Designworks argues, “[we] may [still] affirm.” Wierman v. Casey’s Gen. Stores,
638 F.3d 984, 1002 (8th Cir. 2011). The reason, of course, is that our review of a
grant of summary judgment is de novo.
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from the back of the house in the form of an isosceles right triangle with 20-foot
legs. Id. Along the wall forming the far-left side of the diamond is a stairway leading
down to a similarly shaped room on the lower level. Id. The stairway, which is open
and has large windows above it, is what creates the “triangular atrium.” Id.The Newbury Model also has a two-story “triangular atrium” consisting of
large windows and stairs, but the similarities end there. Id. The walls forming the
legs of the triangle on the Newbury Model, for example, are roughly 10 feet long,
not 20. Id. It has two flights of stairs, not just one, with a landing at the triangle’s
point, rather than having the stairs run along a single wall like they do in the Melrose
house. Id. The adjoining room is also rectangular and oriented in line with the other
rooms, not a diamond with sides at a 45° angle to them. Id. So even if one feature
of both designs is a triangular atrium, there are plenty of differences, from the size
of the atriums themselves to how they are integrated with the rest of the house, with
each having rooms and stairways of differing shapes, sizes, and orientations.
To an “ordinary, reasonable person” viewing both designs, “the total concept
and feel of the” homes would not appear “substantially similar.” Hartman, 833 F.2d
at 120–21; see also Taylor Corp., 403 F.3d at 966 (explaining that the focus should
be on “the work[] taken as a whole”). In summary-judgment terms, our conclusion
is the same as the district court’s: “the works are so dissimilar that ‘reasonable minds
could not differ as to the absence of substantial similarity in expression.’” Hartman,
833 F.2d at 120 (emphasis added) (quoting Litchfield v. Spielberg, 736 F.2d 1352,
1355–56 (9th Cir. 1984)).
III.
After granting summary judgment, the district court had the discretion to order
Designworks to pay Thomson Sailors’s “full costs,” including “a reasonable
attorney’s fee.” 17 U.S.C. § 505. In deciding whether to make an award, the court
had to “giv[e] substantial weight to the reasonableness of [Designworks’] litigating
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position [and] . . . tak[e] into account all other relevant factors,” Kirtsaeng v. John
Wiley & Sons, Inc., 136 S. Ct. 1979, 1989 (2016), including “frivolousness,
motivation, . . . compensation[,] and deterrence,” Pinkham v. Camex, Inc., 84 F.3d
292, 294 (8th Cir. 1996) (quoting Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19
(1994)).
Many of these factors played a prominent role in the district court’s decision
to award fees and costs to Thomson Sailors and the other defendants. The court’s
order emphasized how unreasonable Designworks’ litigating position had been,
from completely failing to address the “significant objective differences” between
the designs to producing nothing more than speculative evidence that anyone
associated with Thomson Sailors had accessed the Melrose house. The court even
wondered whether Designworks’ goal all along was to run up Thomson Sailors’s
costs and then extract a large settlement. Designworks may well disagree with these
inferences and how the court weighed the relevant factors, but we cannot say that its
decision to award fees and costs was an abuse of discretion. 3 See Killer Joe Nev.,
LLC v. Doe, 807 F.3d 908, 912–13 (8th Cir. 2015).
To be sure, the district court was wrong to say that attorney fees “are the rule
rather than the exception and should be awarded routinely” in cases like this one.
(Emphasis added) (quoting Little Mole Music v. Spike Inv., Inc., 720 F. Supp. 751,
757 (W.D. Mo. 1989)). The Copyright Act itself makes clear that the decision lies
within the court’s discretion, and an approach that awarded fees “automatic[ally]”
or by default “would pretermit the exercise of that discretion.” Fogerty v. Fantasy,
Inc., 510 U.S. 517, 533 (1994).
3
Designworks may not challenge the size of the award for the first time on
appeal. It did not object to any of the specific items in Thomson Sailors’s request
before, so it cannot do so now. See Great Plains Real Estate Dev., L.L.C. v. Union
Cent. Life Ins., 536 F.3d 939, 947 (8th Cir. 2008).
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Despite the misstatement, we are convinced that the district court knew it had
discretion and exercised it properly. After all, it identified the relevant factors and
then explained why they weighed in favor of an award. There is nothing to suggest,
in other words, that it gave “significant weight” to an “improper factor.” Killer Joe,
807 F.3d at 911 (quotation marks omitted).
IV.
We accordingly affirm the judgment of the district court.
APPENDIX.
Melrose house floor plan:
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R. Doc. 133-15, at 8 (cropped and rotated).
Newbury Model floor plan:
R. Doc. 133-9, at 4 (cropped and rotated).
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