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Architectural Design Copyright: Analyzing Strategic Trolling in Light of the Design Basics Judgement

Like any other form of creative works of expression, copyright protection was extended to work of architectural design keeping in mind the creative labour that goes into the production of such works and to protect the legitimate interest of such bona fide authors. However, there have been instances where copyright owners have made their revenue model to indulge in the scheme of copyright trolling.

 

Copyright trolling is a scenario where creators of copyrighted work enforce their work with the hopes of profiting from favorable infringement enforcement lawsuits.

This article analyses one such US case which was an appeal in the Seventh Circuit Court of Appeal i.e., Design Basics, LLC v. Signature Construction[1] that addressed the question of copyright protection over architectural designs and its alleged infringement by a subsequently developed floor plan. The article also touches upon the Indian intellectual property laws that deal with copyright protection of architectural designs.

Background of the Design Basics Case

The Appellant had received copyright registration over series of its floor plans and sued Defendant for alleged infringement of ten of its floor plans. In response, the Defendants moved for summary judgment, wherein the lower court, while dismissing the Appellant’s claim of infringement ruled that the Appellant’s copyright protection in its floor plan was ‘thin’ and only a ‘strikingly similar’ plan could give rise to an infringement claim. The Appellant’s appeal against the Summary Judgement met with the same fate as the seventh circuit court, re-affirmed the position taken by the lower court for reasons explained herein in greater detail. While doing so, the court came down heavily on the Appellant i.e., Design Basics, LLC., a home design company, for its floor plan-based copyright trolling scheme that it had utilized to file over a hundred copyright cases, including the present one, in federal courts that had resulted in thousands of victims paying license/settlement fees.

Test of Similarity: Independent Creation or Unlawful Copying   

In the present case, the copyright protection was hailed as a thin one, as the designs mostly consisted of unprotectable and basic elements – a few bedrooms, a large common living room, kitchen, etc. The Court reiterated the fact that “copying” constitutes two separate scenarios – Whether the defendant has, rather than creating it independently, imitated it in toto and whether such copying amounts to wrongful copying or unlawful appropriation. For instance, in the present case, much of the Appellant’s content related to functional considerations and existing design conventions for affordable, suburban, single-family homes. In such a case, to give rise to a potential copyright infringement claim, only a “strikingly similar” subsequent work would suffice.

Determining the Piracy: A Circumstantial Scenario

The Seventh Circuit explained that in absence of evidence of direct copying, the circumstantial evidence should be taken into consideration. To bring a case under this limb, one had to identify whether there was access to the plaintiff’s work by the creators of the subsequent work and if so, then, whether there exists a substantial similarity between the two works. The substantial similarity should not only be limited to the protective elements of the plaintiff’s work but also, any other similarity.

The court in this case used the term “probative similarity” when referring to actual copying and “substantial similarity” when referring to unlawful appropriation. In a case of thin copyright protection, a case of unlawful appropriation requires more than a substantial similarity. Only if a subsequent plan is virtually identical to the original work, it will cause an infringement.

The utility aspect: The Brandir analogy

For instance, if a particular type of architectural detailing is a significant feature of an organization, so much so that it creates an imprint on the minds of the target consumers that such a style is attributable to the Appellant, is that design/style copyrightable? To answer this question the case of Brandir International, Inc. v. Cascade Pacific Lumber Co[2], must be taken into consideration, where the court stated that “if design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. Conversely, where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability exists.

The rule of law, as evidenced from the above precedent states that the copyrightability of work ultimately depends upon the extent to which the work reflects artistic expression and is not restricted by functional considerations. Hence, while considering designs, which have a particular utility in the minds of the customers, the artistic part should be considered separately from the utilitarian part, as, the Copyright Act clearly states that the legal test lies in how the final article is perceived and not how it has evolved at the various stages along the way. Any similarity in the end-product when taken as a whole should be considered.

The Ideal Test(s) for Determination of Ingringement: Scènes à Faire and Merger Doctrine

The determination of piracy and subsequently the legitimacy of a copyright claim has seen a sharp change over a period. There has been a change in the stance of the courts from the Sweat of the Brow system to the Originality Test. Where the former absolved a defendant from a copyright infringement claim based on the evaluation of substantial labour in the development of the subsequent work, without taking into consideration the amount of overlap or the quality of such work, the latter absolved the author of a subsequent work from a potential copyright infringement claim if his work (the subsequent work) enshrines an adequate amount of creativity and diligence.

An extension of the Originality doctrine is seen in a Scene A Faire scenario, which states that when certain similarities are non-avoidable, what needs to be determined is if the depiction pertains to certain things which are extremely common to a particular situation, for e.g., the depiction of police life in the South Bronx will definitely include “drinks, prostitutes, vermin and derelict cars.”[3] Hence, such depictions do not come under the realm of copyright protection.[4]

The court adopted the same analogy in the present scenario, stating that the rooms in the Appellant’s floor plans were rudimentary, commonplace, and standard, largely directed by functionality. For example, the placement of the bedroom, hall, and kitchen did not show an extraneous unique expression of an idea. Hence, they constituted of a scene a faire scenario, which could not be protected.

Expressions and not ideas are protectable. The doctrine of merger prevents the protection of underlying ideas. However, if certain ideas can only be expressed in multiple ways, copyrighting each expression would end up in copyrighting the idea itself, which would run counter to the very basis of copyright protection. Similarly, where the Appellant is the owner of 2500+ floor plans, is it possible for any other Appellant to design a suburban single-family home that is not identical to at least one of these plans?

The court answered in negative and held that if the copyright infringement claim of the Appellant was allowed to succeed, then it would own nearly the entire field of suburban, single-family type homes, which would be a result of anti-competitive practice. Hence, the present plea was not allowed.

A Classic Case of Copyright Trolling

The court called this instance a classic case of a copyright troll. This was because Design Basics, as a matter of practice, had registered copyrights in over thousands of floor plans for single-family tract type suburban homes, which they used for attacking several smaller businesses, using their employees to spawn through the internet in search of targets and slapping on them strategic infringement suits in which the merits were always questionable. This fueled their agenda in securing “prompt settlements with defendants who would prefer to pay modest or nuisance settlements rather than be tied up in expensive litigation.”

The Indian Position on Protection of Architectural Design

Even though courts in India have not taken a similar stand on copyright protection over architectural work yet, a similarly high threshold of originality for protection and enforcement of such works stems from the Copyright Act, 1957 (“the Act”) as well as the Designs Act, 2000. Section 2(b) of the Act defines ‘work of architecture’ as: “any building or structure having an artistic character or design, or any model for such building or structure.”, and Section 2(c)(ii) includes work of architecture under the ambit of artistic work.

Additionally, Section 59 of the Act, restricts remedies in case of “works of architecture” which states that where construction of a building or other structure which infringes or which, if completed would infringe the copyright in some other work has been commenced, the owner of the copyright shall not be entitled to obtain an injunction to restrain the construction of such building or structure or order its demolition. The owner of the copyrighted building cannot claim specific relief and the only remedy available to the copyright owner will be damages and criminal prosecution.

The law corresponding to this is Section 2(d) of the Designs Act, 2000 which allows for designs of buildings to be registered. This provision may prove to be more useful as it allows for mass production of the designs registered under the Designs Act. As for Copyright protection, if a design has been registered under the Copyright Act, as well as the Designs Act, then the copyright ceases to exist if the design is commercially reproduced or reproduced more than fifty times.

Thus, the Copyright Act purports to provide protection to very special architectural works which have an artistic element to them and are not mass-produced to protect the artistic integrity of the work. Hence, commercial rights of architectural work are better protected under the Designs Act which allows for the reproduction of the design multiple times.

Analysis and Conclusion

The Appellate court in the present case concluded that apart from the marking up of the Design Basics floor plan by Signature, there was no evidence of actual copying. Even under the test for circumstantial proof of actual copying, there existed many noteworthy differences between the two works, for instance, the room dimensions, ceiling styles, number of rooms, and exterior dimensions were all different enough to preclude an inference of actual copying as a matter of law. Even though the two plans were similar, they differed in many aspects. Hence, the copyright infringement claim could not subsist.

The United States’ Modicum of Creativity approach is a modern proliferation of the originality test, which delves into the thought process and the judgment involved behind the formulation of subsequent work.[5] However, using this approach in isolation is not enough. Whether the subsequent work is the result of a thought process and adequate judgment should be determined after passing it through the ‘Nichols Abstraction’ test. The Seventh Circuit decision was largely based on the Nichols Abstraction test[6] which narrows down to the product that remains after filtering out all the dissimilarities. The residual product, in this case, that remained after filtering out all the dissimilarities between the two was the main idea behind the works and ideas are not protectable and hence a case of infringement could not be made out.

Copyright trolling is more common in countries that provide escalated damages for infringement and there it needs to be addressed in a stricter manner. In 2015 alone, trolls consumed a whopping 58% of the US federal copyright docket. Clearly, the judiciary plays a very important role in sorting out a troll from a genuine copyright claim. Moreover, the litigation process needs to be cost-effective, which may enable defendants to dispute the claims of a copyright troll more easily. Hence, proper care and caution must be taken while meandering through the trolls.

References: 

[1] Case No. 19-2716 (7th Cir. Apr. 23, 2021)

[2] 200 (2d Cir. N.Y. Dec. 2, 1987)

[3] David Nimmer, Nimmer on Copyright Vol III, (1963).

[4] http://blog.ciprnuals.in/2021/06/from-sweat-of-the-brow-to-nichols-abstraction-a-revisitation-of-the-r-g-anand-precedent-with-its-mature-modern-implications/

[5] Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991).

[6] Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930)

 

 

Image Credits: Photo by Sora Shimazaki from Pexels

Copyright trolling Is more common in countries that provide escalated damages for infringement and there it needs to be addressed in a stricter manner. In 2015 alone, trolls consumed a whopping 58% of the US federal copyright docket. Clearly, the judiciary plays a very important role in sorting out a troll from a genuine copyright claim.

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PhonePe Vs. BharatPe Case: No Exclusivity Over a Part of a Mark, Not Even by Misspelling It

Registration of the (whole) mark does not confer an exclusive right over a part of a registered mark. Similarly, no exclusivity can be claimed over a descriptive mark or a descriptive part of the mark, not even by misspelling it. This was the ruling of the Delhi High Court in a recent Trademark Infringement & Passing Off matter between PhonePe Pvt. Ltd. (Plaintiff) & Ezy Services & Anr. (Defendants). Hon’ble Justice C. Hari Shankar affirmed some of the fundamental principles of the Trademark Law, which have been asserted by various Courts from time to time.
PhonePe’s Perception:

PhonePe in its plea before the Delhi High Court stated that: a consumer of average intelligence and imperfect recollection, on seeing the defendants’ mark BharatPe would immediately associate it with PhonePe.

Well, how often is our intelligence questioned and challenged, even without our knowledge? Considering the deep inroads that technology has made into our lives now, I reckon all of us are reasonably aware of the prominent digital wallets in the market. Knowing that, it is contestable how many of us would have wondered about any association between these two marks purely based on the similarity in their suffix “Pe”.

Background:

The plaintiff had filed a suit before the Delhi High Court seeking a permanent injunction and other remedies against the defendants’ use of ‘Pe’ or any deceptive mark identical and/or similar to the plaintiff’s trademark ‘PhonePe’. The plaintiff alleged that the use of the word “BharatPe” itself, infringed the plaintiff’s registered trademark and amounted to passing off.

The plaintiff in its suit claimed that “Pe” is an essential, dominant, and distinguishing feature of the plaintiff’s registered trademarks. Plaintiff further claimed that “Pe” is an invented word, not to be found in the English dictionary and when combined with “Phone”, which is an ordinary dictionary word with a well-known meaning, “Pe” becomes the dominant and essential feature of the plaintiff’s trademark “PhonePe”.

Court’s Findings and Rulings:

The Hon’ble Delhi High Court’s decision in this matter seems to be premised based on following three principles, which have already been established earlier in multiple Judgments by various Courts:

a) The Anti-Dissection Rule:
The Hon’ble High Court observed that the registered mark ought not to be dissected for the purpose of comparison with the conflicting mark. However, the Court acknowledged the exception of “dominant mark” test, under which, if any part of the plaintiff’s mark was found to be dominant, the Court was required to examine whether such dominant part of the plaintiff’s mark was infringed by the defendant’s mark.

The plaintiff contended that “PhonePe” was a combination of the words “Phone” and “Pe”, where “Phone” was a common dictionary word and the suffix “Pe” was not a dictionary word, which made it the dominant feature of the plaintiff’s trademark. Similarly, in the defendant’s trademark, the word “Bharat” was publici juris and “Pe” formed the dominant element of the mark “BharatPe”. However, the Court was not convinced on the argument and did not find “Pe” to be the dominant part, therefore, the marks were not allowed to be dissected for the comparison.

The Court ruled that while applying the above principles to the facts in hand, the following positions emerged i.e. (i) “PhonePe” and “BharatPe” were both composite marks. (ii) the marks could not be dissected into “Phone” and “Pe” in the case of the plaintiff and “Bharat” and “Pe” in the case of the defendants; and (iii) the plaintiff could not claim exclusivity over the word “Pe”, as it was merely a misspelling of the word “Pay”, hence no infringement could be claimed on the basis of part of a registered trademark.

b) Separate Registration of a Part of a Composite Mark:
The Hon’ble Court further observed that since the plaintiff did not have any registration over the suffix “Pe”, therefore, it could not claim any exclusivity on the same. As a result, the question of infringement did not arise because of the alleged similarity between the non-essential, unregistered part of the composite mark.

In the cases of South India Beverages1 and P.K. Overseas Pvt. Ltd.2, the Delhi High Court explained the relation between the anti-dissection principle and the “dominant/essential feature” principle. The division bench relied on a passage from McCarthy on Trademarks and Unfair Competition, earlier cited in the case of Stiefel Laboratories3, which stated that “The rationale for the rule is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts. However, it is not a violation of the anti-dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole”.

c) Non-exclusivity of Descriptive or Generic Marks or Parts of Marks:
The Hon’ble Court observed that a party cannot claim exclusivity over a descriptive or generic mark or a part of the mark that is considered descriptive. The Court went on to observe that the plaintiff could not claim that the mark was non-descriptive merely by misspelling the descriptive word. However, the Court admitted an exception to this principle in situations where the descriptive or generic mark had acquired distinctiveness or secondary meaning.

The Court further observed that had the plaintiff been able to establish that the word “Pe” had acquired distinctiveness and secondary meaning, it might have been able to make out a case of infringement. However, in this case, the plaintiff’s use of the mark “PhonePe” was only since 2016 and even the defendants claimed to have extensive use of their mark “BharatPe”. Therefore, the plaintiff had not been able to make out a prima facie case.

In the case of Marico Limited4, the Court dived deep into the concept of acquired secondary meaning of a descriptive mark and held that while deciding whether a descriptive mark is registrable or not the “Courts should ordinarily lean against holding distinctiveness of a descriptive trademark unless the user of such trademark is over such a long period of time of many-many years that even a descriptive word mark is unmistakably and only relatable to one source i.e. the same has acquired a secondary meaning”.
1 South India Beverages v. General Mills Marketing, AIR 1965 SC 980
2 P.K. Overseas Pvt. Ltd. v. Bhagwati Lecto Vegetarians Exports Pvt. Ltd., 2016 SCC OnLine Del 5420
3 Stiefel Laborataries v. Ajanta Pharma Ltd, 211 (2014) DLT 296
4 Marico Limited v. Agro Tech Foods Limited, 2010 (44) PTC 736 (Del.) (DB)
The Marico case also discussed the nature and character of a misspelt word when used as a trademark and held that “if partly tweaked descriptive words and expressions of English language are claimed to be coined words, the same would result in a grave and absurd situation because a non-tweaked word being a completely descriptive word will in fact be deceptively similar to the tweaked descriptive English language word or expression of which registration is obtained”.

Conclusion:

The Hon’ble Court ruled that there was no case for grant of interim injunction against the defendants. The Court observed that except the common word “Pe” (suffix) it cannot be established that the marks “PhonePe” and “BharatPe” are confusingly or deceptively similar. Barring the suffix “Pe” these are two different words altogether with no commonality whatsoever.

The important legal positions that emerge from this decision are:
(i) In accordance with the “anti-dissection” rule, it was held that the composite marks were to be considered in their entirety rather than truncating or dissecting them into individual components/elements.
(ii) The registration of a composite mark cannot confer any exclusive rights over any part of such registered mark unless otherwise, such part is the dominant part of the registered mark.
(iii) No exclusivity can be claimed, over a descriptive mark, or a descriptive part of a mark, not even by misspelling it, unless otherwise the descriptive mark or descriptive part has attained distinctiveness, or it has acquired a secondary meaning.

This case has surely reaffirmed some of the basic principles of trademark laws that prohibit adaptation and exclusive claim over descriptive and generic marks or part of the mark.
Read about the important legal positions that emerge from the PhonePe V. BharatPe decision in this article.

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