Attorneys Offer Tips for Avoiding Architectural Copyright Infringement

Attorneys Offer Tips for Avoiding Architectural Copyright Infringement

Sometimes ignorance is bliss, but when it comes to architectural copyright, what you don't know can hurt you.

So says Jordanna Smida, editor of KBDN sister publication, Design/ Build Business, who attended a seminar on architectural copyright at the IBS in Las Vegas. Below, she offers advice from attorneys who shared their expertise on copyright law, outlined rights and responsibilities, and discussed how to avoid infringement traps at the seminar.

The Law
Louis Bonham, with Rosenthal & Osha, LLP, in Houston is one of the leading copyright attorneys in the country. His clients range from one-man architectural firms and small builders to international architectural firms and developers. Bonham has handled hundreds of architectural copyright disputes, including cases that have resulted in some of the largest judgments and settlements in this area of law.

Architectural copyright law has existed since 1990. However, Bonham says that, even with the laws, large judgments are garnering publicity, leading many builders to fall victim to copyright myths:

  • Plans that don't have a copyright notice are not protected.
  • Plans aren't protected unless they're registered with the copyright office.
  • Only novel, unique or special designs are protected.
  • Copyright only protects the actual plans, but doesn't forbid copying the building itself.
  • If you take a work and change it, it becomes yours.
  • If you didn't know the design was protected by copyright, you're protected.
  • If the works aren't at least 70% similar, it's not copyright.
  • If found guilty of infringement, your liability is limited to the reasonable value of the plans.
  • The client owns the architectural copyright to the plans if he purchases them.

According to Bonham, every item listed above is a myth. "If you believe these to be true, you're putting yourself in jeopardy You can get burned badly if you don't know what you're doing," he warns.

While Bonham hears from people quite often that everyone in the industry copies everyone else, he says it's no longer legal to do. "For a long time that was fine, until the laws changed," he explains.

In 1990 Congress officially instituted the Architectural Works Copyright Protection Act of 1990 (AWCPA) into law. One of the issues the law raises is what constitutes an architectural work. According to the law, Bonham says the statute defines it as the design of a building as by any tangible medium of expression, such as plans, buildings or sketches. "If you build an infringible house, that's treated as an infringement," he notes.

Works including bridges, cul de sacs and parking lots are not encompassed, but buildings including gazebos, apartments, homes and churches are protected by the act.

A work's overall form and individual arrangements and combinations are also protected under this act. "It doesn't include individual standard features like a 32"-wide door. But how you combine the features can be protected under copyright," he notes.

Protection limits
There are certain limitations under the act as to what is actually protected. The main limitation to note is that only works that were created and first constructed after Dec. 1, 1990 are copyright protected under AWCPA.

"You can copy Frank Lloyd Wright, as long as you don't copy his plans directly," Bonham stresses.

It's also important to know that copyright protects an expression, not an idea. "If you have a particular idea of a home, the idea isn't protected. It only becomes protected once you build it or put it down on paper. This protects against copying. Someone can't copy your expression. If someone comes up with it independently, they're okay," he explains.

The term of copyright exists for the life of the owner plus 70 years. Bonham points out that, by the time a copyright expires, the industry should be moving on to better designs and buildings. "For all intents and purposes, copyright in architecture is permanent," he reports.

Having or obtaining copyright gives you certain exclusive rights, according to Bonham:

  • Right of copy; you can make additional copies.
  • To create derivative works (i.e., a take-off, using the style for a different work).
  • Right to distribute copies or the right to vend. Sales of homes are considered to be copies of the architectural works. If you are selling houses and don't have rights to the design, you're violating the copyright owner's exclusive right to vend.
  • Rights performed for public display.
  • Any violation of an exclusive right is infringement.

Often, one of the most disputed issues in copyright infringement is who owns the copyright. The owner is the person who actually creates the work.

"Just because a builder pays for an architect or designer to create a plan does not give the builder ownership. The copyright owner is the one who fixed the work," Bonham explains.

"If it's your employee, on your payroll, then your company owns the copyright. If you have a work-for-hire agreement, it has to be in writing, signed by both parties before work commences, and then you own the work," he stresses.

Bonham notes that if an architect leaves a firm, then the firm owns the copyright to his designs. "What can he do? Nothing. He doesn't own the rights; the company does. Making copies and derivatives is also infringement. He can go and make his own photographs if his works are visible from a public place, and he can take the photos to show the work he can do, but he can't actually create it for a client," he points out.

It's good business practice, Bonham advises, to be sure everything's in writing. "If you want to transfer the copyright, it has to be in writing, signed by the copyright holder. No implicit transfers such as 'I understood I was going to be the copyright holder' will work.

The courts have come down hard on this. It's just like transferring land; it has to be in writing," he explains.

Partial assignments are also something to consider. For example, an architect can give exclusive rights to a builder for a design in a specific geographic area, Bonham says.

He also advises that if you're in doubt as to whether or not you are committing infringement, use the book test. "If you bought a book at the bookstore, you can loan it to someone, etc., but you can't make copies of it. You own the book, but not the right to copy it. So, because you bought a set of plans, you don't have the exclusive rights to the plans. You may get a license for use for one time, but just because you buy plans, the copyright is not transferred at all," he says.

Bonham notes that courts do not accept that a homeowner went to a builder with a sketch or suggestion of ideas as enough of a case to have copyright ownership or co-ownership. "AIA contracts state very clearly that the architect is the sole owner. If that is in place, there's no dispute," he says.

"Talk to your attorney, and make sure your contracts actually do what you want them to," he states.

Protecting yourself
So, what happens when the worst occurs you've created a design and suddenly it starts appearing everywhere?

"If you think someone used your designs, the first thing you need to ask yourself is, 'Do you own the plans?'" advises Walt Kelley, a trial lawyer and partner with Troutman Sanders, LLP, in Norfolk, VA.

"You'll also want to be sure you have the paper stating your use of the plans and permission to that use," he adds.

Another tip Kelley offers is to keep back-ups of your invoices and software files that produce job detail reports.

An architect working with a draftsman without a work-for-hire agreement needs to be sure the draftsman assigns the copyrights to the architect as well, notes Kelley.

Infringement, according to Kelley, is any unauthorized copying and sales. "We had a question where someone started a job, and got kicked off, and the client took the plans elsewhere for another builder to build them. If there was no permission given, then that's copyright infringement," he explains.

Copying a plan, photocopying blueprints and building the house itself are infringements, and there is no such thing as an innocent infringer defense, according to Bonham.

This is important because of the remedies for copyright infringement. "When you get into dealing with buildings, the results are horrifying," Kelley says.

While plaintiffs are usually only able to recover the damages lost, Kelley says in a copyright case, you're not only entitled to recover your damages, but also your fee and any profit made from selling the home that violated the copyright.

"In essence it's a double recovery. Disgorgement awards can be huge, particularly when you're moving from single-family structures to larger projects. The value of these structures and the profit earned from them can be huge," he explains.

One of the quirks of the copyright laws is that you don't have to prove the infringer's damages, Kelley says. "All you have to do to prove your damages is figure out what the gross sales price of the structure is or the present value rents and then relax."

He says it is the burden of the alleged infringer to prove his/her innocence. And since there's no practical way to tell how much profit goes to the design, to the craftsmanship and other factors, Kelley says the tie goes to the copyright owner. "The entire profit of the house goes to the owner of the copyright," he says.

Kelley notes that statutory damages can be proven, and can result in larger settlements if the copyright is registered ahead of time.
"People will take the precaution of registering plans with the copyright office, especially if they know it will be a well-selling plan. It's worth its weight in gold if you have to get into litigation," he explains.

Registering copyright can be beneficial in preventing litigation, as well. "If you send someone violating your copyright a cease-and-desist letter and a copy of your registration, most likely the problem will go away," he says.

If someone has violated your copyright, one step to prevent the infringement is to get an injunctive relief. "This gives you the potential ability to stop the resale or sale of infringing homes," Kelley says.

The copyright owner can also block the bank from selling an infringed home after taking it back in foreclosure. "The bank would have to pay off the copyright owner and take a loss on the loan," Kelley explains.