Tim Ellis

Inspiration is a slippery thing, and the question of what inspired a particular design solution is usually debated academically in the classroom or recreationally over dinner. Occasionally, however, that question lands in court. A copyright infringement lawsuit carries financial risks that are not easy to quantify, even when the allegedly infringed design was registered with the U.S. Copyright Office, a process detailed in September's issue (“Yours, Truly”). Most litigants want and need an honest assessment of the anticipated outcome of a lawsuit before deciding to proceed. Legal counsel can help, but regardless of a case's unique circumstances, the courts generally use the same concepts and standards to decide a copyright infringement case. A textbook example is Shine v. Childs, one of the highest profile architecture copyright infringement cases in recent memory.

Shine's Design

In the fall of 1999, Thomas Shine was a student in Yale's Master of Architecture program. The curriculum included a class on skyscrapers, for which Shine developed a design he called “Olympic Tower.” Shine's final review jury included David Childs, a consulting partner at Skidmore, Owings & Merrill. Shine's work was impressive, and he received praise from Childs and others.

The Alleged Infringement

In the aftermath of 9/11, Childs designed a skyscraper dubbed “Freedom Tower” to replace the destroyed twin towers. Childs' design was presented in late 2003. Shine and others noticed similarities between Childs' Freedom Tower and Shine's Olympic Tower, which prompted Shine to register his design with the U.S. Copyright Office in early 2004 and thereafter sue Childs for copyright infringement. Childs' lawyers responded with a motion to dismiss Shine's lawsuit.

Two to Prove

In order for Shine to prevail, he had to prove (1) ownership of a valid copyright and (2) the copying of the original elements of his work. The U.S. District Court for the Southern District of New York's decision on the motion to dismiss acknowledged that Shine's copyright registration certificates were compelling evidence of validity. For the second element of infringement—copying—Shine had to prove that Childs had access to his design and that there was substantial similarity between his design and Childs' design. Because Childs had to concede his access to Shine's design, the only remaining issue was whether the designs were substantially similar.

A detail from an exhibit in the copyright infringement case Shine v. Childs highlights the façades of Thomas Shine's Olympic tower.
Darby & Darby A detail from an exhibit in the copyright infringement case Shine v. Childs highlights the façades of Thomas Shine's Olympic tower.

David Childs' Freedom Tower.
Darby & Darby David Childs' Freedom Tower.

  Feeling the Difference

Courts typically analyze substantial similarity under what is commonly known as the “total concept and feel” test. In practical terms, this means that an infringing work is substantially similar to a copyrighted work if an ordinary observer is disposed to overlook the differences between the works and regard their aesthetic appeal as the same. In Shine v. Childs, the court concluded it was possible that a lay observer, applying this test to the two skyscrapers, might find that Freedom Tower's twisting shape and undulating, diamond-shaped façade made it substantially similar to Olympic Tower. (Although Childs' original design was scrapped for reasons of security, the court noted that because the design “remains in the public domain, Shine's infringement claim stands.”) On that basis, the court denied Childs' motion to dismiss the lawsuit. The case was resolved in June 2006.

The Takeaway

Shine v. Childs foretold a trend in architecture infringement cases that continues today. Because the subjective “total concept and feel” test leaves so much room for argument, parties may not be inclined to resolve cases early but, instead, settle them on the eve of trial after spending significant time and money. When in doubt, the prudent course of action may be to ask for permission first rather than seek forgiveness later.

Jeffrey C. Brown is an intellectual property attorney in Minneapolis.