IP Law Daily, COPYRIGHT—W.D. Tex.: Texas federal court sides with developers in architectural copyright infringement case, (Mar 13, 2023)

By Ursula Furi-Perry, J.D., MBA

Because the parties’ interpretations of timing regarding the defendant’s asserted § 120(a) defense differed, discovery was necessary, and summary judgment was inappropriate at this stage.

In a copyright infringement case involving architectural works and technical drawings, the defendant asserted an affirmative defense under 17 U.S.C. § 120(a), arguing that the allegedly infringed work involved photographs of a building already constructed and plainly visible in public. The San Antonio, Texas federal court held that summary judgment for the defendant was inappropriate at this stage, as the parties’ interpretations of timing regarding the defendant’s asserted § 120(a) defense differed, making discovery necessary in the case (Kipp Flores Architects, LLC v. AMH Creekside Development, LLC, March 8, 2023, Rodriguez, X.).

Background. The plaintiff (“KFA”) is an architecture firm that creates architectural works and technical drawings, and it owns copyrights to several architectural works at issue. The defendants included the owner of a real estate development in Texas (“AMH Creekside”), a real estate investment trust that manages and controls AMH Creekside’s affairs (“AH4R”), and a real estate development firm who managed the development of Creekside Ranch (“AHV”).

In 2016, KFA and AHV executed a license agreement for the use of KFA’s copyrighted architectural works in the Austin, Texas market, and AHV used those designs in a couple of developments. In 2017, AHV advised KFA that it wanted to use KFA’s copyrighted works in a new development in Texas, known as Creekside Ranch, and the parties entered into a development agreement. In 2019, AHV partially assigned its rights to use KFA’s copyrighted works under the license agreement to AMH Creekside by letter agreement.

Thereafter, KFA alleged that AHV distributed or caused to distribute copies of the floorplan drawings and building elevation renderings to third parties, in violation of the licensing agreement. KFA sued the defendants in the U.S. District Court for the Western District of Texas, San Antonio Division. It brought claims for violation of the Digital Millennium Copyright Act (“DMCA”), direct and contributory copyright infringement, conversion, and specific performance. AHV filed a motion for summary judgment on the remaining copyright infringement claims KFA has asserted against it.

Analysis. The federal district court addressed the procedural issue of the motion for summary judgment under Rule 56 of the Federal Rules of Civil Procedure, analyzing whether there was a genuine dispute as to any material fact, and whether the defendant was entitled to judgment as a matter of law.

KFA first argued that summary judgment was inappropriate here because AHV did not plead § 120(a) as an affirmative defense before filing its motion for summary judgment. While the court noted that affirmative defenses should generally be raised in the first responsive pleading, it also held that the plaintiff was not unfairly prejudiced in this case, and AHV did not waive its defense that their conduct was non-infringing because it was exempted under §120(a).

Under 17 U.S.C. § 120(a), a copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures of the work, so long as the defendant can demonstrate that the alleged infringing work constitutes a picture, painting, photograph, or other pictorial representation of the copyrighted architectural work, and that the copyrighted architectural work has been constructed and is ordinarily visible from a public place.

Though AHV argued that it met the elements of that affirmative defense, the court held that further discovery was necessary to determine the issue, particularly with regard to the timing element of AHV’s asserted § 120(a) defense. The plaintiff argued that its interpretation of timing differed from the defendants’, and that discovery was likely to yield evidence in support of its opposition to AHV’s motion for summary judgment. The court agreed, holding that summary judgment was not appropriate at this stage, until discovery was properly conducted.

Conclusion. The federal district court denied the motion for summary judgment as moot, without prejudice to refiling after the close of discovery.

The Case is No. 5:21-cv-01158-XR.

Attorneys: Califf T. Cooper (Osha Bergman Watanabe & Burton, LLP) for Kipp Flores Architects, LLC. Joshua Seth Hodas (Lewis Brisbois Bisgaard & Smith, LLP) for AMH Creekside Development, LLC and American Homes 4 Rent. James G. Ruiz (Winstead, P.C.) for American Housing Ventures, LLC.

Companies: Kipp Flores Architects, LLC; AMH Creekside Development, LLC; American Homes 4 Rent; American Housing Ventures, LLC

Cases: Copyright TexasNews