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IP: Just, speedy and inexpensive determination of a copyright case

A recent 2nd Circuit case may help companies achieve dismissal without discovery.

How many times has your company been accused of copyright infringement and you just did not think that the two works were that close? If it happens again, litigation in the 2nd Circuit may be an attractive option.

Following Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57 (2d Cir. 2010), district court judges are willing to dismiss copyright cases based on a lack of substantial similarity, even before there has been any discovery.     

Most recently, in Stiles v. HarperCollins Publishers LLC, No. 10 Civ. 2605 (SHS), 2011 WL 3426673 (S.D.N.Y. Aug. 5, 2011), Judge Stein dismissed the case before discovery because the works at issue were not substantially similar.

Plaintiffs David and Jeanie Stiles asserted that the “Building a Tree House” chapter (the chapter) in The Dangerous Book for Boys, authored by Conn and Hall Iggulden, infringed their copyright. Plaintiffs alleged a number of similarities between the chapter and their own book, including the use of design elements such as “platforms that measure seven by seven feet” and warnings “not to stand on the platform before installing the support braces.”

The Stiles also claimed that the corresponding illustrations were similar in “point of view, layout and perspective.”

The illustrations of the completed tree houses are reproduced below, with plaintiffs’ version (below) and defendants’ version (next page).

Judge Stein granted the defendants’ motion to dismiss, finding that the works were not substantially similar as a matter of law. The court refused to consider “expert” declarations submitted on behalf of the plaintiffs and, instead, made its own comparison of the works.

The court found that, assuming there was copying, “no more was taken [by Defendants] than ideas and concepts,” which are not protectible. For example, “[t]he concept of a tree house built in a single tree is not protectible. . . . And the basic idea for a tree house with four short walls, a pyramid-shaped roof, and a trapdoor is hardly original.”

The court noted that other similarities such as “the use of three nails to connect planks to a tree, a platform nailed to diagonal support beams, braces that are cut to fit into the corners of a frame — simply represent generalized ideas and concepts pertaining to the placement of elements” and were not actionable. Moreover, the warning that builders should not stand on an unsupported frame “belongs in the domain of commonsense, not copyright.”

As for the images, the court noted that the common, nonprotectible elements “certainly are similar” —i.e., four short walls, pyramid-shaped roof, diagonal braces, but that there were numerous differences as well.

“[O]n top of all the individual dissimilarities . . . the overall feel varies, namely in that plaintiffs’ illustrations — with leaves and children and action scenes — are much more animated than defendants’, which come across as more utilitarian.” The illustrations simply lacked the substantial similarity required to support a copyright infringement claim.

Colleagues in my firm represented the defendants in that case.


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Eric Lobenfeld

Eric Lobenfeld is the co-head of the U.S. Intellectual Property Practice of Hogan Lovells. He has more than 35 years of experience litigating cases involving...

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