District Court May Make a Determination as to “Substantial Similarly” on a Rule 12(b)(6) Motion to Dismiss in a Copyright Infringement Action
In a matter of first impression, the United States Court of Appeals for the Second Circuit ruled that where a Court has before it the two works in question in a copyright infringement action, a Court could rule on the similarly between those works on a motion to dismiss. In Gaito v. Simone Development Corp., the City of New Rochelle in August 2004, issued Request for Development Proposals “seeking to identify a real estate development team for the mixed-use development” of a 178-acre parcel of land known as the Church Street Project. Plaintiff-architect Gaito (referring both to the firm and principal member) and defendant Simone Development Corp. jointly submitted a response, Gaito designed and drafted architectural plans and in November 2004, Gaito (along with the Simone Defendants) submitted a completed design proposal. After New Rochelle awarded the Church Street Project to the group in March 2005, Gaito registered its plans with the United States Copyright Office. Subsequently, a dispute arose concerning Gaito’s compensation and the Simone Defendants terminated their relationship with Gaito and instead retained the services of the architectural and planning firm of SLCE Architects (SLCE) and the planning firm of Saccardi & Schiff, Inc. to continue the project.
The crux of Gaito’s Amended Complaint was that defendants unlawfully used Gaito’s copyrighted design for the Church Street Project without Gaito’s authorization and that SLCE developed a “re-design” for the project based on Gaito’s original design. Specifically, the Amended Complaint alleged 35 similarities between Gaito’s designs and SLCE’s re-design. Accordingly, Gaito alleged violations of the Copyright Act, 17 U.S.C. § 101 et. seq., and also alleged New York State law claims of quantum meruit and unjust enrichment. Defendants moved to dismiss the Amended Complaint under Rule 12(b)(6) (failure to state a claim).
The Second Circuit explained that “to establish a claim of copyright infringement, ‘a plaintiff with a valid copyright must demonstrate that: (1) the defendant has actually copied the plaintiff’s work; and (2) the copying is illegal because a substantial similarity exists between the defendant’s work and the protectable elements of plaintiff’s.” For purposes of the motion to dismiss the Second Circuit (and the lower court) assumed that actual copying by defendants had occurred. Thus, the issue was whether there was a “substantial similarly” between SLCE’s design for the Church Street Project and the protectable elements of Gaito’s design.
The Second Circuit stated that it had not “directly addressed” the threshold issue – namely, whether it was proper for the District Court to made a determination as to substantial similarly on a Rule 12(b)(6) motion to dismiss. On this threshold issue, the Second Circuit ruled that “where, as here, the works in question are attached to a plaintiff’s complaint, it is entirely appropriate for the district court to consider the similarly between those works in connection with a motion to dismiss, because the court has before it all that is necessary in order to make such evaluation.” Acknowledging that there “can be certain instances of alleged copyright infringement where the question of substantial similarity cannot be addressed without the aid of discovery or expert testimony,” the Second Circuit warned that “[n]othing in this opinion should be read to upset these settled principles, or to indicate that the question of non-infringement is always properly considered at the pleadings stage without the age of discovery.”
Turning next to the issue of whether the District Court erred in resolving the question of substantial similarly in defendants’ favor, the Second Circuit ruled that the “works in question here unequivocally demonstrates the utter lack of similarity between the two designs.” In so ruling, the Second Circuit “disavowed any notion that ‘we are required to dissect [the works] into their separate components, and compare only these elements which are in themselves copyrightable’” and instead ruled that they are “principally guided ‘by comparing the contested designs ‘total concept and overall feel’ with that of the alleged infringed work.” The Second Circuit noted that the original design consisted of three structures, while the re-design consisted of a single structure and that the connection to pedestrian plazas were different in both designs. After finding that the “overall visual impressions of the two designs are entirely different,” the Second Circuit ruled that “we confidently conclude that no ‘average lay person would recognize the alleged copy as having been appropriated from the copyrighted work.’”
