T-Peg, Inc. v. Vermont Timber Works, Inc.

United States Court of Appeals
For the First Circuit

No. 05-2866

T-PEG, INC.; TIMBERPEG EAST, INC.,

Plaintiffs, Appellants,

v.

VERMONT TIMBER WORKS, INC.; DOUGLAS S. FRIANT,

Defendants, Appellees,

STANLEY J. ISBITSKI,

Defendant.

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF NEW HAMPSHIRE

[Hon. Steven J. McAuliffe, U.S. District Judge]

Before

Torruella, Lynch, and Howard,
Circuit Judges.

Daniel E. Will, with whom Devine, Millimet & Branch, P.A.
was on brief, for appellants.
W.E. Whittington, with whom Whittington Law Associates, PLLC
was on brief, for appellees.

August 18, 2006
 LYNCH, Circuit Judge. This case is the first occasion

for us to address a copyright infringement suit under the

Architectural Works Copyright Protection Act ("AWCPA"), Pub. L. No.

101-650, §§ 701-706, 104 Stat. 5089, 5133-34 (1990) (codified in

scattered sections of 17 U.S.C.), which created a new category of

copyrightable subject matter for "architectural works." 17 U.S.C.

§ 102(a)(8).

The plaintiffs, T-Peg, Inc. and Timberpeg East, Inc.

(collectively, "Timberpeg"), sell both architectural designs and

the associated packages of material for the construction of

timberframed homes. Timberpeg created architectural plans for a

home for Stanley Isbitski in Salisbury, New Hampshire. The central

feature of those plans was the timberframed main house, although

the plans did not show a completed final architectural design for

the actual timberframe. The plaintiffs registered their second set

of preliminary plans as an architectural work with the Copyright

Office, and maintained ownership over the copyright in the work

embodied in the plans.

Isbitski, however, never purchased a construction

materials package and final plans from Timberpeg. He did file the

registered plans with the Town of Salisbury in order to get a

building permit. Isbitski hired defendant, Vermont Timber Works,

Inc. ("VTW"), to erect a timberframe for his home. VTW erected its

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timberframe, but Isbitski never completed his home. A later owner

bought the property and completed the home.

Timberpeg filed suit against both Isbitski and VTW,

claiming, inter alia, that the timberframe designed through shop

drawings and constructed by VTW for Isbitski infringed Timberpeg's

copyright in the architectural work. This appeal concerns only the

copyright infringement claim against VTW. Isbitski could not be

found and was never served.

The district court granted summary judgment to VTW,

finding that no reasonable jury could conclude that VTW copied

Timberpeg's architectural work, or that VTW's frame was

"substantially similar" to Timberpeg's registered plans. The

district court also awarded attorneys' fees to VTW.

We reverse the judgment of the district court, finding

that there is a genuine issue of material fact as to Timberpeg's

copyright infringement claim under the AWCPA. As a result, we also

vacate the award of attorneys' fees and remand.

I.

We recount the facts, taking all reasonable inferences in

favor of Timberpeg, the party that opposed the entry of summary

judgment. See Senior v. NSTAR Elec. & Gas Corp., 449 F.3d 206, 208

(1st Cir. 2006).

Stanley Isbitski owned a plot of land in Salisbury, New

Hampshire, on which he wanted to build a home featuring a

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"timberframe." A timberframe is a house frame using wooden posts

and beams which remain visible inside the building. The more

common "stick built" home, by contrast, is framed using two-inch

lumber rather than posts and beams. Isbitski dealt both with

Timberpeg and with VTW, two companies that are, broadly speaking,

in the timberframe business, but have different sorts of

operations. Douglas Friant is one of the founders and co-owners of

VTW, and is responsible for the drafting of timberframe shop

drawings1 for VTW. Isbitski's dealings with Timberpeg and VTW, and

his own work on his house (he was acting as his own general

contractor for the construction of the home), ran somewhat in

parallel. We describe his dealings with each company separately.

A. Isbitski's Dealings with Timberpeg

Timberpeg markets and sells designs and its own brand of

"packages" for the construction of timberframe homes. A Timberpeg

package consists of the materials used for the construction of a

home's timberframe and exterior building envelope (including

windows, exterior doors, insulation, siding, exterior trim, and

cedar roof shakes). Timberpeg does not erect the packages it

1
Friant distinguished between "shop drawings," which "deal
specifically with the components of the timberframe, their location
and their connections," and "architectural plans," which "show the
overall scope of the building" and "consist of foundation drawings,
first and second floor drawings, elevations, sections, roof plans
sometimes, perspectives sometimes."

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sells; instead, a customer must hire a builder or contractor to

assemble and erect the package.

Timberpeg provides architectural design services for

customers, and has a staff of architects and designers who can

create all the necessary designs and architectural plans to build

a home. Timberpeg's business model is not based on selling design

services or architectural plans. Rather, Timberpeg makes its money

on the sale of its packages of construction material based on its

architectural plans. Timberpeg provides architectural design

services as a way to facilitate the sale of its packages.

Sometime in 1999 or perhaps earlier, Isbitski approached

Timberpeg to consider the purchase of a Timberpeg package.

Isbitski, working with a Timberpeg employee, filled out a "design

information sheet" about what he wanted the house to look like.

The actual design information sheet is not in the record. On

November 15, 1999, Isbitski and Timberpeg entered into a "Deposit

Agreement for TIMBERPEG Preliminary Plans and Drawings." Under

this deposit agreement, Isbitski paid a $2500 deposit to Timberpeg,

in exchange for which Timberpeg would and did create preliminary

architectural plans and construction plans for the house. The

preliminary architectural plans would consist of a basement plan,

floor plans, four elevations (external, vertical views of the house

from different angles showing exterior features such as window and

door locations, roof pitches, and ceiling heights), and a building

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cross section. After Isbitski's approval of the preliminary plans,

Isbitski would receive construction plans, including foundation

plans and details of Timberpeg's standard construction techniques.

According to the contract, the construction plans could "be used

for planning the construction process, ordering materials,

obtaining contractor bids, and securing a building permit." Final

plans, which included the complete frame drawings, would not be

prepared as part of the deposit agreement, but would be prepared as

part of the final contract for the purchase of a Timberpeg package.

Timberpeg, in all, provided Isbitski with two versions of the

preliminary plans and then construction plans. No final plans were

ever provided.

Under the contract, Isbitski represented to Timberpeg

that "any house plans, specifications, drawings or sketches of any

kind (the 'Drawings') provided to [Timberpeg were] the result of an

original design (the 'Design')," represented that he (Isbitski) was

the "sole owner of the Design and has exclusive rights, including

copyright, in and to the Design as represented in the Drawings,"

and agreed to indemnify and hold harmless Timberpeg from use of the

drawings and design. Timberpeg would own the copyright in the

"Preliminary Plans, Construction Plans, specifications, drawings,

and other material (the 'Plans')." Isbitski could use the plans

"solely in connection with the evaluation and construction of one

(1) Package purchased from [Timberpeg]," and

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 [a]ny other use of the Plans, including, but
not limited to, the following, is an
unauthorized appropriation of copyright by
Customer and a breach of this Agreement: a)
the copying of all or any part of the Plans;
b) the utilization or partial utilization of
the Plans for the construction of a similar
building or structure; or c) any transfer or
delivery of the Plans to another person
without written authorization from
[Timberpeg].

Isbitski was under no obligation to purchase a Timberpeg

package after seeing the preliminary plans or even the construction

plans. If he chose to purchase a package, the $2500 deposit would

be credited against the price of the package. If he chose not to

purchase a package, Isbitski would have to return the plans, and

Timberpeg would return the deposit minus a fee for design time,

billed at $49 per hour, and other incidental costs.

Timberpeg created a first set of preliminary plans on

December 29, 1999 and gave them to Isbitski. These plans showed

the design of a house with a timberframed main portion and a wing

that would be stick built. The record does not contain this first

set of plans, and these plans were never registered with the

Copyright Office.

In early 2001, Isbitski met again with Timberpeg, saying

that he was unsatisfied with the first set of preliminary plans.

Timberpeg completed a new design for Isbitski on April 20, 2001

"based on [its] interpretation of Mr. Isbitski's rough ideas and

preferences." The plans were given to Isbitski. Timberpeg

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registered these plans with the Copyright Office on May 18, 2001.

The registration certificate shows that these second preliminary

plans were registered as an "architectural work." It is only this

second, registered set of preliminary plans that is at issue here.

Based on these plans, Isbitski applied for a building

permit from the Town of Salisbury. As part of the permitting

process, in April 2001, Isbitski submitted the second preliminary

plans to the Town of Salisbury, where they were placed in a public

file.

The second set of preliminary plans contained elevations

and floor plans. The plans showed a two-floor main house connected

via a covered breezeway to a three-car garage with a lofted space

above it. The first floor of the main house was nine feet tall;

the second floor was eight feet tall. The main house consisted,

broadly speaking, of two major portions. One portion -- the

portion which would be timberframed -- was backwards-L-shaped. A

great room (with two-floor ceilings on the northern end of the

house), kitchen, breakfast room, and dining room were on the first

floor, and a den was on the lofted second floor (which occupied

only the southern portion of the house). The plans for this

portion of the house did not contain a complete design of the

timberframe, but the floor plans did show where the vertical posts

would connect to the foundation and the location of at least some

of the internal horizontal beams. The timberframing in this

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portion of the house used a particular style featuring common

rafters with principal purlins (horizontal timbers supporting the

rafters). The roof in this portion was oriented north-to-south,2

with a particular pitch (roof angle) referred to as a "twelve-by-

twelve" pitch.

The exact dimensions of the timberframed portion of the

main house were 44 feet by 28 feet, with a 14-foot-by-8-foot

section cut out in the northwest corner to form the L shape, where

a screen porch would be located. There was also a "bump-out" in

the kitchen on the western side of the house -- an approximately

eight-foot portion of the western wall containing windows that

jutted out one foot beyond the rest of the wall. The timberframed

portion of the house also featured a central switchback staircase

located in the center of the timberframed portion of the home. In

addition to labels denoting the various rooms, the floor plan

showed the location of various fixtures, including a kitchen sink

(located at the "bump-out"), a stove, and a fireplace.

The second major component of the main house --

containing bedrooms, bathrooms, and the foyer -- was connected to

the eastern side of the timberframed portion, and was to be stick-

built. The roof in this portion of the house was oriented east-to-

2
The orientations described here may not reflect true
physical orientation, but assume that the "vertical" part of the
backwards L in the home is pointed north. All references to the
directional orientation of features of the home will make the same
assumption.

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west, and had a pitch of nine-by-twelve. There was a covered porch

on the northern part of this portion, which connected to the

covered breezeway and the three-car garage.

In May 2001, Isbitski asked Timberpeg to modify its

preliminary plans so that they reflected a timberframe in a "bent"

style rather than the style previously used (which is variously

referred to in the record as a "purlin" style or a "purlin with

common rafters" style). He gave Timberpeg a picture clipped from

a magazine showing a bent frame (this was the same picture he later

gave to VTW). No modifications were undertaken until the

construction plans were drafted.

Later, in August 2001, Isbitski asked Timberpeg for a set

of foundation plans showing the location of various support posts

and steel girders, so he could start pouring the concrete

foundation. Timberpeg agreed, but asked Isbitski to send in $1500

to cover past due and future design fees. Timberpeg asserts that

it continued to assume that Isbitski would eventually buy a package

from Timberpeg. On September 20, 2001, Timberpeg sent its

"construction plans," reflecting a timberframe in a bent-frame

style (although not containing a complete frame design), and the

foundation plan. This third set of plans, which reflected the bent

frame, was never registered with the Copyright Office. Sometime

thereafter, Isbitski poured the foundation of the home and also

began construction of the three-car garage.

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B. Dealings with VTW

In December 2000, a year after Isbitski had seen the

first preliminary Timberpeg plans but before Isbitski had asked

Timberpeg for a second set of preliminary plans, Isbitski

approached VTW. VTW is located in Vermont, and specializes in

timberframing. It has no architects on staff, and does not design

buildings or create architectural plans. Instead, it uses

specifications provided by the customer to create shop drawings of

the frame of the building. These specifications typically are in

the form of architectural plans, but VTW also can draw frames based

on rough sketches, as long as VTW receives information about the

building's footprint (the outline of the building as it sits on the

ground) and wall height. VTW also has an in-house frame assembly

crew that actually erects the frame on site.

According to VTW, Isbitski stated that he had developed

a layout for a house plan with his then-deceased wife. Isbitski

stated that his plan was to have VTW draw and construct only the

timberframe for the timberframed main portion of the home.

Isbitski was going to act as the general contractor for the

remainder of the home, subcontracting work to other people or

companies as needed. Starting at the end of 2000, VTW began

drawing a timberframe for Isbitski.

It is undisputed that in his first meeting with VTW in

December 2000, Isbitski provided VTW with a copy of the first,

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unregistered set of preliminary plans created by Timberpeg. VTW

asserts that its personnel only saw this first set of preliminary

plans, not the second, registered plans, on which the claim here is

brought. VTW also claims that those first preliminary plans did

not even factor into its creation of its timberframe for Isbitski's

home because Isbitski said he was unhappy with the plans, and that

VTW, in fact, asked Isbitski to consult an architect to develop

floor plans and elevations for the home. This, VTW says, would not

have been necessary had VTW been relying even on Timberpeg's first,

unregistered plans. Timberpeg counters that VTW could have

obtained the second, registered preliminary plans, either through

Isbitski himself or through the Town of Salisbury. Timberpeg

points to a letter written by VTW's attorney after litigation had

commenced, which stated that Isbitski asked VTW "to design a frame

to fit a portion of the floor plans of his house" and that Isbitski

had "represented to [VTW] that he paid for and owned a set of

plans, which he provided to [VTW] that were drawn by Timberpeg."

The letter does not say whether the plans referred to were the

first set or the second set of plans created by Timberpeg.

VTW's position is that it took its directions only from

Isbitski and that Isbitski provided substantial guidance in

determining VTW's shop drawings of the timberframe. According to

Douglas Friant at VTW, Isbitski said that he had been "planning

this house for years and [was] working on the design for years."

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At the first meeting in December 2000, Isbitski provided the

dimensions of his plan (although the record does not reveal the

exact dimensions that he gave to VTW). He also brought pictures

clipped from a magazine and a catalog (not from Timberpeg) showing

how he wanted the frame to look. The pictures showed a bent-style

frame. Friant stated that during the drafting process (starting

from December 2000 until May 2002) Isbitski frequently would drop

by or call VTW's shop unexpectedly, and would talk with Friant

about his ideas about what he wanted for the timberframe. As an

example, Friant testified at his deposition that Isbitski was "very

concerned about how the stairway looked" and "absolutely emphatic

about . . . making sure that he was able to hang a chandelier in

the stairway area," and this instruction required Friant to modify

the shop drawings. According to VTW, some of Isbitski's

instructions were very specific. Isbitski would tell VTW where to

place posts within an eighth of an inch, and asked VTW to change

the roof pitch in VTW's original designs to a precise pitch he

provided. During the time VTW was working on its shop drawings,

Isbitski received the second preliminary plans and the construction

plans from Timberpeg.

Isbitski agreed to purchase the VTW timberframe on March

8, 2002. By this time, Timberpeg's second preliminary plans, the

registered plans, had been in his hands for nearly one year, and

publicly available for about the same amount of time. Isbitski

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also had had possession of the construction drawings from Timberpeg

for nearly six months. VTW completed final revisions to its shop

drawings of the timberframe design in May 2002. The shop drawings

showed a bent-style frame which was in some ways similar to, and in

other ways different from, the timberframed portion of the main

house in Timberpeg's registered preliminary plan. We consider

these similarities and differences in detail below.

By June 2002, Isbitski had completed the foundation and

the three-car garage with the loft. VTW erected, on that

foundation, the frame as provided for in the shop drawings. The

parties assume that the erected frame reflected the shop drawings.

In September 2002, Isbitski informed Timberpeg that he

was not going to be purchasing a Timberpeg package. According to

Timberpeg, Isbitski said the reason was that he was going to build

a stick-built, rather than a timberframed, house. Timberpeg in

response asked for the remainder of the design fees due (which fees

had, by that point, exceeded Isbitski's total deposit), amounting

to approximately $1000. It is unclear whether Isbitski ever paid

this amount. Soon thereafter, Timberpeg learned that Isbitski was

building a house, using VTW's timberframe, that looked like the

house it had designed.

C. The Aftermath

Isbitski never completed the home, apparently because he

ran into financial difficulty. Isbitski had begun enclosing the

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timberframe built by VTW with exterior wall panels, but never

completed that task, and the frame was left open to the elements.

Timberpeg sold a license to its registered design to Sugar River

Savings Bank in October 2003 in order to assist with the completion

of construction of the home. Under the terms of the license, the

bank was free to re-sell to any party other than Isbitski or VTW.

Sometime in 2004, a representative from Timberpeg visited the

Isbitski site. The property had been purchased by a Mr. Dupee, who

had largely completed construction of the house in a manner which,

according to Timberpeg, was similar to the design as reflected in

the second set of preliminary plans created for Isbitski.

II.

Timberpeg filed suit against VTW and Isbitski in the U.S.

District Court in New Hampshire on October 23, 2003. Timberpeg

asserted, inter alia, copyright infringement claims against VTW

under 17 U.S.C. §§ 501 et seq. Timberpeg's claim against VTW was

that the timberframe designed in shop drawings and built by VTW was

"substantially similar to the architectural work embodied in the"

second preliminary plans, which it had registered as an

architectural work.3

3
After having been unable to locate and effect service upon
Isbitski, Timberpeg voluntarily dismissed its claims against him
without prejudice. Timberpeg later amended its complaint to add
Friant as a defendant.

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 On February 9, 2005, the district court granted summary

judgment to VTW on all counts. As to the copyright infringement

claim, the district court first held, incorrectly relying on pre-

AWCPA law, that VTW's constructed frame could not be a copy of an

architectural plan under copyright law. The district court,

considering only whether VTW's shop drawings were an infringing

copy of Timberpeg's architectural work, as embodied in the second

preliminary plans, held as a matter of law that VTW had not

actually copied Timberpeg's plans, and even assuming copying, that

VTW's shop drawings were not substantially similar to Timberpeg's

architectural plans.

Timberpeg moved for reconsideration, pointing out that

its claim was based on the AWCPA. It argued that the district

court's holding that a building could not be a copy of an

architectural plan under copyright law was contrary to the AWCPA.4

It also argued that there was at least a genuine issue of material

fact as to unlawful copying. Timberpeg relied, in part, on the

letter from VTW's counsel, which it argued contained an admission

that the defendants had copied Timberpeg's plans. Timberpeg

emphasized that its "central theory . . . is that the timberframe,

in the shop drawings and as constructed by the defendants[,] is an

infringing copy of the architectural work reflected in Timberpeg's

4
VTW, in response, agreed that the district court erred in
concluding that a building could not infringe an architectural work
as embodied in an architectural plan.

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copyright[ed] architectural plans, as opposed to an infringing copy

of the plans themselves" and that the claim squarely fell under the

AWCPA.5

The district court reconsidered, and on April 6, 2005,

held that no reasonable jury could conclude that the timberframe as

constructed according to VTW's shop drawings was substantially

similar to the architectural work as embodied in Timberpeg's

registered plans. In doing so, it rejected Timberpeg's reliance on

the letters from VTW's counsel.

VTW moved for attorneys' fees under the Copyright Act, 17

U.S.C. § 505. The district court granted VTW's motion for

attorneys' fees and awarded $116,642.43.

III.

Before turning to the specific arguments on appeal, we

discuss the governing framework of copyright law and the AWCPA.

The AWCPA extended copyright protection to a class of works called

"architectural works," 17 U.S.C. § 102(a)(8), which are defined as

the design of a building as embodied in any
tangible medium of expression, including a
building, architectural plans, or drawings.
The work includes the overall form as well as
the arrangement and composition of spaces and
elements in the design, but does not include
individual standard features.

5
It is undisputed that Timberpeg's second preliminary plans
were created after the effective date of the AWCPA. See AWCPA
§ 706, 104 Stat. at 5134 (codified at 17 U.S.C. § 102 note).

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17 U.S.C. § 101. Timberpeg argues that this definition is broad,

and that VTW's timberframe (as reflected in the shop drawings and

as constructed) infringes Timberpeg's copyright in the

architectural work as embodied in its second, registered

preliminary plans and including a particular configuration of

elements which together form the work.

We first briefly lay out the requirements of a claim of

copyright infringement.

A. Copyright Infringement

Under the Copyright Act, "[c]opyright protection subsists

. . . in original works of authorship fixed in any tangible medium

of expression, now known or later developed, from which they can be

perceived, reproduced, or otherwise communicated, either directly

or with the aid of a machine or device." 17 U.S.C. § 102(a). An

"architectural work" is a work of authorship. Id. § 102(a)(8). A

copyright holder has certain exclusive rights to the work,

including the right to reproduce all or any part of the copyrighted

work. Id. § 106; see also Johnson v. Gordon, 409 F.3d 12, 17 (1st

Cir. 2005). One infringes a copyright when he or she violates one

of the exclusive rights to a work held by a copyright owner, and

the owner has the right to sue for infringement. See 17 U.S.C.

§ 501.

"To establish copyright infringement under the Copyright

Act, 'two elements must be proven: (1) ownership of a valid

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copyright, and (2) copying of constituent elements of the work that

are original.'" Johnson, 409 F.3d at 17 (quoting Feist Publ'ns,

Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)); see also

Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 33 (1st

Cir. 2001); Segrets, Inc. v. Gillman Knitwear Co., 207 F.3d 56, 60

(1st Cir. 2000). Proving "copying of constituent elements of the

work that are original" (the second element of the Feist test)

itself involves two steps: the plaintiff must show (a) that the

defendant actually copied the work as a factual matter, either

through direct evidence or through indirect means, see Yankee

Candle Co., 259 F.3d at 33; Segrets, 207 F.3d at 60, and (b) that

the defendant's "copying of the copyrighted material was so

extensive that it rendered the infringing and copyrighted works

'substantially similar,'" Johnson, 409 F.3d at 17-18 (quoting Lotus

Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 813 (1st Cir.

1995), aff'd by an equally divided court, 516 U.S. 233 (1996)).

In an infringement action, the burden is on the plaintiff

to prove these elements. Id. VTW does not challenge Timberpeg's

ownership of a valid copyright in this case. This leaves the

question of whether VTW "cop[ied] constituent elements of the work

that are original." Feist, 499 U.S. at 361.

B. The Architectural Works Copyright Protection Act

Historically, copyright law provided limited protection

to works of architecture. Architectural plans, while not

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explicitly mentioned in the Copyright Act of 1976, were covered

under a provision affording protection to "pictorial, graphic, and

sculptural works." 17 U.S.C. § 102(a)(5); see also 1 Nimmer &

Nimmer, Nimmer on Copyright § 2.08[D][2][a], at 2-117 (2006)

(discussing legislative history of Copyright Act of 1976). But

architectural structures themselves were afforded virtually no

protection. See 1 Nimmer & Nimmer, supra, § 2.08[D][2][b], at 2-

126; Ginsburg, Copyright in the 101st Congress: Commentary on the

Visual Artists Rights Act and the Architectural Works Copyright

Protection Act of 1990, 14 Colum.-VLA J.L. & Arts 477, 490 (1990).

This began to change with the accession of the United

States to the Berne Convention for the Protection of Literary and

Artistic Works, Sept. 9, 1886, as last revised July 24, 1971 and

amended Sept. 28, 1979, S. Treaty Doc. No. 99-27, 1161 U.N.T.S. 30.

The Berne Convention requires protection for "works of . . .

architecture" as distinct from "illustrations, maps, plans,

sketches and three-dimensional works relative to . . .

architecture." Id. art. 2. The United States joined the Berne

Convention with the passage of the Berne Convention Implementation

Act of 1988 ("BCIA"), Pub. L. No. 100-568, 102 Stat. 2853 (1988).

While the BCIA amended the definition of "pictorial, graphic, and

sculptural works" to explicitly include "architectural plans," id.

§ 4 (codified at 17 U.S.C. § 101), it did not explicitly extend

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protection to "architectural works," as distinct from architectural

plans.

To ensure United States' compliance with the requirements

of the Berne Convention, the AWCPA was signed into law on December

1, 1990. Pub. L. No. 101-650, §§ 701-706, 104 Stat. 5089, 5133-34

(codified in scattered sections of 17 U.S.C.); see also H.R. Rep.

No. 101-735 (1990), reprinted in 1990 U.S.C.C.A.N. 6935. The AWCPA

added "architectural works" as a new category of copyrightable

works. 17 U.S.C. § 102(a)(8). The legislative history makes it

clear that "[p]rotection for architectural plans, drawings, and

models as pictorial, graphic, or sculptural works under section

102(a)(5) . . . is unaffected by" the AWCPA. H.R. Rep. No. 101-

735, reprinted in 1990 U.S.C.C.A.N. at 6950.

The definition of an "architectural work," 17 U.S.C.

§ 101, quoted in full above, has three main components. First, an

"architectural work" is the "design of a building as embodied in

any tangible medium of expression." Id. The definition provides

three exemplars of such a tangible medium of expression -- "a

building, architectural plans, or drawings" -- although these are

not the only possible media of expression. Id. As originally

drafted, the bill only referred to architectural works as embodied

in buildings. H.R. Rep. No. 101-735, reprinted in 1990

U.S.C.C.A.N. at 6950. According to the legislative history for the

AWCPA, "there was concern that a defendant with access to the plans

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or drawings could construct an identical building but escape

liability so long as the plans or drawings were not copied." Id.

To close this potential gap, the bill was reworded to expand the

definition of an architectural work to encompass a building design

"as embodied in any tangible medium of expression." Id.

This more expansive definition means that the holder of

a copyright in an architectural plan (such as Timberpeg) has two

forms of protection, one under the provision for an "architectural

work" under 17 U.S.C. § 102(a)(8), and another under the provision

for a "pictorial, graphical, or sculptural work" under 17 U.S.C.

§ 102(a)(5). The legislative history confirms this point. See

H.R. Rep. No. 101-735, reprinted in 1990 U.S.C.C.A.N. at 6950 ("An

individual creating an architectural work by depicting that work in

plans or drawing will have two separate copyrights, one in the

architectural work (section 102(a)(8)), the other in the plans or

drawings (section 102(a)(5))."). The two avenues of protection are

slightly different in scope, as discussed below. As Timberpeg made

clear in its motion for reconsideration before the district court,

its "central theory" is based on the protection afforded

architectural works under § 102(a)(8) rather than the protection

afforded architectural plans under § 102(a)(5).

The second component of the definition is that an

architectural work "includes the overall form as well as the

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arrangement and composition of spaces and elements in the design."

17 U.S.C. § 101. According to the legislative history,

[t]he phrase 'arrangement and composition of
spaces and elements' recognizes that: (1)
creativity in architecture frequently takes
the form of a selection, coordination, or
arrangement of unprotectible elements into an
original, protectible whole; (2) an architect
may incorporate new, protectible design
elements into otherwise standard,
unprotectible building features; and (3)
interior architecture may be protected.

H.R. Rep. No. 101-735, reprinted in 1990 U.S.C.C.A.N. at 6949.

Finally, the definition excludes from the protectable

"architectural work" "individual standard features." 17 U.S.C.

§ 101. The legislative history provides examples of such

individual standard features: "common windows, doors, and other

staple building components." H.R. Rep. No. 101-735, reprinted in

1990 U.S.C.C.A.N. at 6949. Non-standard individual features

reflecting some amount of originality are not necessarily excluded

from copyright protection. Id. Furthermore, while individual

standard features may not be individually copyrightable, as the

quoted legislative history above confirms, the combination of such

standard features may be copyrightable. Id.

Under the Copyright Act, architectural works are, in at

least one sense, "subject to a standard of copyrightability more

generous than that accorded pictorial, graphic or sculptural

works." Ginsburg, supra, at 491. Under 17 U.S.C. § 101,

-23-
 pictorial, graphic, and sculptural works . . .
include works of artistic craftsmanship
insofar as their form but not their mechanical
or utilitarian aspects are concerned; the
design of a useful article, as defined in this
section, shall be considered a pictorial,
graphic, or sculptural work only if, and only
to the extent that, such design incorporates
pictorial, graphic, or sculptural features
that can be identified separately from, and
are capable of existing independently of, the
utilitarian aspects of the article.

Id. (emphasis added). The requirement that the protectable

elements of a pictorial, graphic, or sculptural work be separated

from the "utilitarian aspects" of the work under 17 U.S.C.

§ 102(a)(5) is known as the "separability test." By contrast,

there is no separability test for an architectural work. In the

AWCPA, Congress purposefully did not impose such a separability

test for determining the copyrightability of architectural works.

See H.R. Rep. No. 101-735, reprinted in 1990 U.S.C.C.A.N. at 6951

("[T]he copyrightability of architectural works shall not be

evaluated under the separability test applicable to pictorial,

graphic, or sculptural works.").

IV.

We review the district court's entry of summary judgment

de novo. Senior, 449 F.3d at 216. "Summary judgment is proper

only if the record, read favorably to the non-moving party,

reflects no genuine issues of material fact and the undisputed

facts indicate that the movant is entitled to judgment as a matter

-24-
of law." Hadfield v. McDonough, 407 F.3d 11, 15 (1st Cir. 2005)

(citing Fed. R. Civ. P. 56(c)).

On appeal, the arguments center around whether there is

a genuine issue of material fact as to substantial similarity. The

district court, at least in its first order, also concluded that no

reasonable jury could conclude that VTW had actually copied

Timberpeg's plans. Since copying is a necessary element of a

copyright infringement claim, see Johnson, 409 F.3d at 17-18, we

would uphold summary judgment if the district court were correct on

this ground, and we may affirm on any ground supported by the

record, see Senior, 449 F.3d at 216. We briefly discuss the

evidence of copying and conclude that the district court was not

correct.

A. Actual Copying

Copying may be proven through direct or circumstantial

evidence. Johnson, 409 F.3d at 18. Timberpeg points both to

direct and to circumstantial evidence of copying, sufficient to

create a material issue of fact for a jury.

For direct evidence, Timberpeg points to the letter from

VTW's attorneys stating that Isbitski "represented to [VTW] that he

paid for and owned a set of plans, which he provided to [VTW] that

were drawn by Timberpeg." Timberpeg argues that this letter is an

admission by VTW that it relied on the registered preliminary

plans. VTW, like the district court, rejects Timberpeg's reliance

-25-
on the letters, arguing that the letters were not admissions, but

to the contrary, state that VTW did not copy Timberpeg's plans.

The letter from VTW's attorney does not say whether the plans

referenced are the second, registered preliminary plans (about

which there is a dispute as to whether VTW saw the plans) or the

first, unregistered preliminary plans (which VTW acknowledges it

received, but states it did not rely on). This is a factual

dispute about the meaning of the admission by counsel, and that

issue cannot be resolved on summary judgment.

In the absence of direct evidence of copying -- such

direct evidence is rare, see Johnson, 409 F.3d at 18 -- one of the

ways to indirectly establish that the defendant copied the

plaintiff's work is to provide evidence that (1) the defendant

"enjoyed access to the copyrighted work," and so had the

opportunity to copy the work, and (2) "a sufficient degree of

similarity exists between the copyrighted work and the allegedly

infringing work to give rise to an inference of actual copying."

Id. The similarity inquiry used to indirectly establish copying is

referred to as "probative similarity" and is "somewhat akin to, but

different than, the requirement of substantial similarity" that

must be shown to prove copyright infringement. Id.

As to access, Timberpeg argues that VTW had access to its

registered preliminary plans both because Isbitski had made those

plans public by filing them with the Town of Salisbury, and because

-26-
VTW could have received the plans directly from Isbitski. A trier

of fact may impute access when there is "evidence that a third

party with whom both the plaintiff and defendant were dealing had

possession of plaintiff's work," and the "plaintiff's and

defendant's dealings took place concurrently." 4 Nimmer & Nimmer,

supra, § 13.02[A]. That is the case here.

As to whether there is a genuine issue of material fact

as to "probative similarity" -- whether "a sufficient degree of

similarity exists between the copyrighted work and the allegedly

infringing work to give rise to an inference of actual copying" --

this analysis merges somewhat with the question of "substantial

similarity" (although they are separate questions). We discuss

below the similarities and dissimilarities between Timberpeg's

registered plans and VTW's frame in the context of the substantial

similarity inquiry. We conclude that a reasonable jury could find

a sufficient degree of probative similarity exists between

Timberpeg's architectural work and VTW's frame "to give rise to an

inference of actual copying" for the same reasons a jury could find

there is substantial similarity.

B. Substantial Similarity

The substantial similarity inquiry "entails proof that

the copying was so extensive that it rendered the works so similar

that the later work represented a wrongful appropriation of

expression." Johnson, 409 F.3d at 18. The inquiry focuses not on

-27-
every aspect of the copyrighted work, but on those "'aspects of the

plaintiff's work [that] are protectible under copyright laws and

whether whatever copying took place appropriated those [protected]

elements.'" Id. at 19 (second alteration in original) (quoting

Matthews v. Freedman, 157 F.3d 25, 27 (1st Cir. 1998)); see also

Feist, 499 U.S. at 361 (noting that wrongful copying requires

showing of "copying of constituent elements of the work that are

original" (emphasis added)). Summary judgment on substantial

similarity is "unusual" but can be warranted on the right set of

facts. See Segrets, 207 F.3d at 62. "Summary judgment on

[substantial similarity] is appropriate only when a rational

factfinder, correctly applying the pertinent legal standards, would

be compelled to conclude that no substantial similarity exists

between the copyrighted work and the allegedly infringing work."

Johnson, 409 F.3d at 18.

The copyrighted work at issue is Timberpeg's

architectural work as embodied in the second preliminary plans. As

for the allegedly infringing works, there are both VTW's shop

drawings and the frame as actually erected by VTW. The parties

have assumed that the frame as erected matches VTW's shop drawings.

VTW's shop drawings also reflect certain other features that VTW

did not actually build -- the exterior walls and the actual

staircase (although VTW did build the posts that define the stair

-28-
bay). We include these features as part of the allegedly

infringing work when conducting the similarity analysis.

Substantial similarity can be measured by the "ordinary

observer" test. Id. Under that test, two works will be said to be

substantially similar if a reasonable, ordinary observer, upon

examination of the two works, would "conclude that the defendant

unlawfully appropriated the plaintiff's protectable expression."

Id. The two works need not be exact copies to be substantially

similar. Differences between the works have some effect on the

inquiry, but the mere existence of differences is insufficient to

end the matter in the defendant's favor. Id.; see also Concrete

Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 608 (1st

Cir. 1988) ("Slight or trivial variations between works will not

preclude a finding of infringement under the ordinary observer

test."). "If the points of dissimilarity not only exceed the

points of similarity, but indicate that the remaining points of

similarity are, within the context of plaintiff's work, of minimal

importance, either quantitatively or qualitatively, then no

infringement results." 4 Nimmer & Nimmer, supra, § 13.03[B][1][a].

The record shows the following similarities between VTW's

shop drawings and Timberpeg's registered plans:

1. VTW's shop drawings and the frame as constructed had a

backwards-L-shaped footprint with exactly the same dimensions as

the timberframed portion of the main house in Timberpeg's plans.

-29-
2. VTW's shop drawings and the constructed frame had a kitchen

"bump-out" along the western wall, although the VTW bump-out was

about two feet wider than the one in Timberpeg's plans.

3. VTW's shop drawings showed a central switchback staircase in

precisely the same location as the staircase in Timberpeg's plans,

and the constructed frame included the posts used to define the

stair bay.

4. VTW's frame showed a lofted second floor in the same location

and with the same dimensions as in Timberpeg's plans.

5. VTW's frame had the same roof pitch and dimensions as in

Timberpeg's plans.

6. The plate (wall) height was the same in both Timberpeg's plans

and VTW's shop drawings.

7. VTW's shop drawings appeared to contemplate a further wing

attached to the eastern wall of the timberframe; the shop drawings

showed the location of exterior wall panels (which VTW would not

erect but were nonetheless reflected in the drawings), and there

were no such panels along the eastern side. The Timberpeg plans

showed a separate stick-built wing attached to the eastern side of

the timberframed portion of the home.

VTW and the district court pointed to a number of

differences shown in the record between VTW's shop drawings and

Timberpeg's registered plans:

-30-
1. VTW asserts that its frame was able to support any number of

designs, depending on how the panels and walls were applied to the

frame, while the Timberpeg design showed a particular internal

floor plan and external features. Timberpeg acknowledges that the

frame was not determinative, but points out that VTW's frame could

accommodate Timberpeg's whole house design (if one chose to do so).

2. Timberpeg's registered plans did not show a complete

timberframe design, while VTW's shop drawings showed only a

timberframe, and VTW only erected a timberframe.

3. The frame components that were shown in Timberpeg's second,

registered preliminary plans reflected a certain framing style with

common rafters and principal purlins,6 while VTW's shop drawings

and frame were in a bent style.

4. While Timberpeg's plans and VTW's frame both had 27 posts,

there are differences. There were two posts in the VTW shop

drawings without any corresponding equivalents in the Timberpeg

design. Of the twenty-five equivalent posts, only two were

identical in size, orientation, notching, and location.

VTW argues that these differences "preclude[] the

existence of a material dispute on whether there was 'substantial

similarity.'" Timberpeg argues that all of these differences are

6
The Timberpeg construction plans showed a bent frame but
were not registered with the Copyright Office.

-31-
minimal, and are insufficient to overcome the similarities such

that summary judgment for VTW is warranted.

Keeping in mind the definition of an "architectural work"

as "includ[ing] the overall form as well as the arrangement and

composition of spaces and elements in the design," 17 U.S.C. § 101,

we conclude that there are genuine issues of material fact as to

substantial similarity.

The district court erred in failing to consider those

similarities that went to the "overall form" of the building as

well as the "arrangement and composition of spaces and elements."7

The district court found that the only similarities were in "the

idea of a twenty-eight by forty-four foot part of a house, with a

stair bay located in a particular position"8 and so found that no

7
"The extent to which the [copyrighted work] contain[s]
protected expression is a matter of law, determined by the court.
Once this determination is made, the question of whether two works
are substantially similar (and corresponding application of the
ordinary observer test) is a matter for the trier of fact unless
summary judgment is proper." Yankee Candle Co., 259 F.3d at 34
n.5.
8
The district court referred to the "idea/expression"
dichotomy in copyright law. "It is axiomatic that, while 'no
author may copyright his ideas or the facts he narrates,' an author
may copyright the expression of those ideas." John G. Danielson,
Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26, 42 (1st Cir.
2003) (quoting Harper & Row Publishers, Inc. v. Nation Enters., 471
U.S. 539, 556 (1985)). Drawing the line between an idea and the
expression of that idea can be difficult. As Judge Learned Hand
recognized, "Obviously, no principle can be stated as to when an
imitator has gone beyond copying the 'idea,' and has borrowed its
'expression.' Decisions must therefore inevitably be ad hoc."
Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489
(2d Cir. 1960). Regardless of whether a house of certain

-32-
reasonable jury could conclude that VTW's shop drawings were

substantially similar to Timberpeg's registered plans.

In fact, the relevant similarities here go beyond those

recognized by the district court. At issue here is a particular

combination of elements in Timberpeg's architectural work: a

portion of a home featuring a timberframe with a backwards-L-shaped

footprint, with a particular arrangement of posts, with certain

dimensions and a bump-out along the western wall, featuring a

central switchback staircase, with a lofted second floor of a

certain floor area and in a certain location, with a certain roof

pitch with certain dimensions, and certain wall heights. A

reasonable jury, properly considering this combination of elements,

could conclude that VTW's frame was substantially similar to

Timberpeg's registered plans.

The district court also concluded that the differences

between VTW's frame and Timberpeg's registered plans were such that

no reasonable jury could conclude there was substantial similarity.

We disagree.

The district court and VTW emphasized that VTW designed

only a frame, while Timberpeg's plans did not contain a complete

frame design. This emphasis wrongly assumes that the only question

here is whether a reasonable jury could conclude that VTW's frame

dimensions with a central staircase might be regarded as an idea,
the combination of elements at issue here go beyond an idea into
the realm of expression.

-33-
is substantially similar to Timberpeg's frame design, and that

since Timberpeg never designed a complete frame, there can be no

infringement. That is wrong. The question here is whether a

reasonable jury could conclude that VTW's frame as drawn and built

is substantially similar to Timberpeg's architectural work (which

includes "the overall form as well as the arrangement and

composition of spaces and elements in the design") as embodied in

the second preliminary plans for the Isbitski house. This does not

necessarily turn on whether Timberpeg created a complete frame

design or not.9

As to VTW's claim that it is a dispositive difference

that the VTW frame could accommodate any number of internal layouts

and external features other than those reflected in the

9
VTW might be understood to be making a slightly different
argument as well: that under 17 U.S.C. § 101, an architectural work
is the "design of a building" and that because the VTW frame is not
a "building" and Isbitski never completed the "building," then
VTW's frame is not an "architectural work" and cannot be
substantially similar to Timberpeg's architectural work. The
predicates of this argument are shaky, but the more fundamental
problem is that the statute does not require that the infringing
work meet the definition of an architectural work. For instance,
the AWCPA excludes from the scope of exclusive rights in
architectural works "the right to prevent the making, distributing,
or public display of pictures, paintings, photographs, or other
pictorial representations of the work, if the building in which the
work is embodied is located in or ordinarily visible from a public
place." Pub. L. No. 101-650, § 704, 104 Stat. at 5133 (codified at
17 U.S.C. § 120); see generally Leicester v. Warner Bros., 232 F.3d
1212 (9th Cir. 2000) (discussing this exception). Such a specific
carve-out for works that are not architectural works weighs
strongly against any argument that only architectural works can be
infringing.

-34-
architectural plans created by Timberpeg, this too stems from a

misunderstanding of Timberpeg's claim. Copyright protection exists

not only in the architectural work taken as a whole (which includes

a particular floor plan and arrangement of external features), but

also in protectable portions of the work. Timberpeg bases its

claims here on a combination of elements, which, taken together,

are protectable under the definition of an architectural work in 17

U.S.C. § 101. As the legislative history for the AWCPA states,

"[t]he phrase 'arrangement and composition of spaces and elements'

recognizes that . . . creativity in architecture frequently takes

the form of a selection, coordination, or arrangement of

unprotectible elements into an original, protectible whole." H.R.

Rep. No. 101-735, reprinted in 1990 U.S.C.C.A.N. at 6949. A jury

could reasonably conclude that VTW's frame is substantially similar

to these protectable elements of Timberpeg's architectural work.

The fact that VTW's frame might not necessarily result in

other elements being taken from Timberpeg's architectural work is

not dispositive.

VTW also considers the differences in the posts between

Timberpeg's plan and VTW's frame to be dispositive. This is an

argument that can be addressed to the jury, but is not itself

dispositive on summary judgment. Timberpeg argues that differences

in almost all of the posts are measured on the scale of inches

rather than feet. VTW has not argued that Timberpeg is wrong on

-35-
this point, and has not demonstrated that no reasonable jury would

find the differences insignificant. VTW makes general statements

that certain posts have a different size, orientation, or notching,

but the actual measure of the differences is important to

evaluating substantial similarity; a difference of a few feet

obviously weighs more strongly against substantial similarity than

a difference of a few inches. Both the magnitude and significance

of any differences present disputed issues of material fact that

cannot be resolved on summary judgment.

VTW also relies on the difference in the size of the

kitchen bump-out and the fact that Timberpeg's second preliminary

plan contemplated a common rafter style, whereas the VTW frame

featured a bent style. While these differences may also weigh

against a finding of substantial similarity by the fact finder,

this is evidence for the jury to weigh.

This analysis alone requires reversal. We also comment

on one other point to give guidance to the district court and to

clarify an earlier decision of ours.

Timberpeg and VTW both introduced reports prepared by

expert witnesses. The district court rejected any reference to

expert affidavits in the context of substantial similarity, citing

our Segrets case.10 We have not, however, uniformly rejected the

10
In Segrets, we noted in a footnote in dicta the rule that
"[w]hile expert testimony may be used to establish that there was
copying . . ., where factual copying has been established, as here,

-36-
use of expert testimony on substantial similarity. See Johnson,

409 F.3d at 20 (noting that the plaintiff's "burden of establishing

both probative similarity . . . and substantial similarity . . .

[are] dependent on three purported similarities (points one, two,

and seven in Mr. John's [expert] report)").11 Moreover, the need

for expert testimony may be greater in cases involving complex

subject matters where an ordinary observer may find it difficult to

properly evaluate the similarity of two works without the aid of

expert testimony. As Nimmer notes, "[a] special challenge is posed

in adjusting the traditional categories of substantial similarity

to the burgeoning areas of technology protected by copyright." 4

Nimmer & Nimmer, supra, § 13.03[E][4].

We leave to the district court the determination of

whether this may be a case in which expert testimony would be

helpful on the issue of substantial similarity. We also note that

the district court did not determine whether the expert reports

otherwise met applicable standards for admissibility, see Fed. R.

Evid. 702, 703, and we do not address this issue. If admissible,

the conflicting reports indicate material issues of fact as to

substantial similarity. Timberpeg's expert (who was also a

there should be no expert testimony to establish whether or not
there was substantial similarity." 207 F.3d at 66 n.11. In this
case, factual copying has not been established, and expert
testimony is at least admissible for that purpose.
11
Johnson was decided after the district court issued its
decisions in this case.

-37-
Timberpeg employee) stated that "the outline and design of the

Isbitski house in the [VTW] drawings matches almost exactly the

architectural design represented in Timberpeg's plans" and that

"the overall dimensions are the same, the stair is the same design

in the same location, and the area shown as a loft is the same size

in the same location." VTW's expert report, by contrast, noted a

number of differences, including the fact that the VTW frame was a

bent frame rather than a frame using common rafters with purlins as

in Timberpeg's plans. It also noted that the VTW posts were placed

on basement "footings" that were already in place when the frame

was constructed.

V.

The issue of whether VTW's shop drawings and constructed

frame were substantially similar to Timberpeg's architectural work

as embodied in the second preliminary plans for the Isbitski home

is one for a jury to decide after trial. At present there are

genuine issues of material fact both as to copying and as to

substantial similarity, making the question one that cannot be

resolved on summary judgment.

We reverse the entry of summary judgment against

Timberpeg, vacate the attorneys' fee award, and remand for further

proceedings consistent with this opinion. Costs are awarded to T-

Peg, Inc. and Timberpeg East, Inc.

-38-