COVER STORY, DECEMBER 2007

PROTECTING YOUR ELEMENTS
Copycat projects can bring copyright lawsuits.
Dave Barnard

When developers set out to build their next big project, they’ll likely rely on a team of lawyers to handle contracts, land use issues, permitting, environmental matters, and financing.

But where on that list of legal experts is an intellectual property attorney? For many developers, the answer is “nowhere.”

Copyright law has afforded protection to architectural designs for many years…and most developers know that building a clone of the Sears Tower in Tulsa could land them in court defending a copyright lawsuit. But intellectual property protection is not limited to iconic structures. Everything from land use plans to single-family home designs can be protected under copyright statutes.

The potential expense, duration and liability associated with being on the wrong side of an IP lawsuit is enough to make most developers long for the simpler days when their biggest worry was a breach of contract dispute or a lawsuit over a planning board action.

While the potential consequences of copyright infringement are serious, they are relatively easy to avoid if developers invest the time to understand the applicable laws and take a few proactive measures.

Evolution of Architectural Copyright Law and Establishing Protection

The level of copyright protection afforded to architectural designs has increased significantly over the years. In the early 1900s Congress began to better codify our country’s copyright laws. While the Copyright Act of 1909 did not explicitly address architectural designs, it did grant protection to “drawings or plastic works of a scientific or technical nature.”

An update to copyright statutes in 1976 specifically recognized architectural drawings as protected, but not the building itself. That changed in 1990 when the Architectural Works Copyright Protection Act was signed into law.

That act strengthened copyright protections, recognized buildings themselves as protectable, and provided additional clarity on how the statute should be practically applied.

Under the terms of the 1990 act, buildings are defined as “structures that are habitable by humans and intended to be both permanent and stationary, such as houses and offices buildings, and other permanent stationary structures designed for human occupancy, including but not limited to churches, museums, gazebos, and garden pavilions.”

The law draws a distinction between unique design elements, which are protectable, and essential functional elements, which are not. It also recognizes the difference between common building designs considered in the public domain and new creative designs.

Copyright protection can only be granted to unique design elements that are not essential to the function of the building.

Individual standard features of any building, such as windows, doors and rooms, cannot be protected. Neither can the placement of these functional elements when their location is dictated by purely utilitarian concerns. The act does, however, recognize that the aesthetic arrangement and composition of these basic elements may collectively form a unique, protectable work.

An architectural work is eligible for protection once it has been fixed in “any tangible medium of expression,” such as architectural plans, drawings, or the completed structure.

A designer does not need to register the work to claim copyright, but registration with the U.S. Copyright Office is required to pursue legal action for copyright infringement in federal court.

In order to seek statutory damages under the copyright act, a design must be registered prior to the commencement of any alleged infringement, or within three months of the first publication of the work.

Types of Infringement and Potential Penalties

As with many areas of the law, there is a distinction between willful and unintentional infringement. While ignorance of the law is not an excuse, penalties levied against so-called innocent infringers are likely to be far less severe than those who have willfully and intentionally infringed upon a protected design.

The most common remedy in a simple unintentional infringement case is to pay the plaintiff’s legal costs along with the licensing fee the owner of the design would have typically received if the work had been properly licensed.

In a willful infringement case, more severe monetary penalties are possible.

Given the unique nature of architecture, it can be difficult to assign a dollar value to actual damages realized by a party whose design has been infringed upon. Imagine the difficulty calculating and proving the precise value of a building’s design or how much the infringement of that design has cost the original owner.

To that end, the act allows for the awarding of statutory damages rather than actual damages. Statutory damages may range from as low as a few hundred dollars to as high as $30,000 or even $150,000 for willful infringement. A copyright owner does not have to prove actual monetary losses to be awarded statutory damages.

It is also worth noting that the prevailing party in a copyright lawsuit, whether it’s the plaintiff or defendant, may recover attorney’s fees from the losing party. In the vast majority of other civil matters, each party pays its own fees regardless of winning or losing. 

Protecting Your Project

There are a number of simple steps that a developer can take to establish protection for a unique design or protect a project from an infringement claim.

Seek Professional Counsel

Not every project demands the expertise of an intellectual property attorney, but make sure your general counsel or design consultant is familiar with the laws governing copyright of architectural works. Their counsel will help minimize the chance of a claim against you, or help you establish proper protection if your project is unique and eligible for its own protection.

Get a Guarantee/Indemnity

If the project is an original creation, require that your design consultants guarantee the originality of the work in writing. If the project is a license of a previous work, require the licensor to warrant that he or she is the owner of the design and has the legal right to license it to you.

In either case, request that the designer indemnify you for any copyright claims against the project.

Don’t Assume Anything

Copyright law allows developers to freely use any designs that are in the public domain, but it is important to remember that ubiquity is not analogous to being in the public domain. Believing a design is in the public domain is also very different from being able to prove it.

Countless homes of an identical design could be scattered throughout neighborhoods across the country, but that doesn’t necessarily mean that it is in the public domain. That design could be a popular copyrighted work that has been licensed thousands of times. Think of it like a pop single on the Top 40 charts: you hear the song over and over on radio stations everywhere, but it is still a protected work. Each time the song gets played, a rights fee is paid.

An experienced IP attorney or architect can help determine what is and is not within the public domain.

Document Your Inspiration

Designs aren’t created in a vacuum. Most great creative expressions are inspired by what has come before. If your design is the product of multiple inspirations, document those inspirational buildings and architectural details. The more proof you can show that your design is an original work with numerous inspirations, the stronger your defense against a claim will be.

Establish Clear Ownership

If your project is designed by an outside consultant, make it clear in the engagement agreement who owns the rights to the design.

Imagine the frustration of a developer who invests significant money to commission a unique design for a project, and later finds that the architect has licensed that exact design (or a derivative thereof) to other developers.

Clear definition of ownership rights also becomes critical if a developer chooses to switch designers in the middle of the project. If the engagement agreement does not specify that the design belongs to the developer, there could be legal issues if the final design is substantially similar to the one produced by the original consultant.

Emphasize Functionality

As previously noted, copyright law specifically excludes functional design elements from copyright claims. If you can show how many of the features in a project were motivated by utilitarian or functional considerations, you will strengthen your case against any potential claim.

Emerging Areas

Recent case law has expanded the scope of the law beyond mere blueprints, bricks and mortar.  Copyright analysis of architecture must always work in three dimensions, not two.  One example is 11 Sparco v. Lawler, Matusky, Skelly, 303 F.3d 460 (2d Cir. 2002) finding that a site plan was protectable.

This is particularly relevant to the growing “new urbanism” trend among commercial developments.

Across the country, enclosed malls are being bulldozed and replaced with mixed-use developments that follow the new urbanism philosophy. These new developments largely shun the utilitarian boxes of the ‘70s in favor of dense, walkable destination centers filled with unique architectural details and narrow, winding streets.

These highly stylized designs are perfect examples of projects that could be protected under copyright law. Developers of these projects would be well advised to give their plans additional scrutiny to avoid any legal missteps.

Trying to decipher what designs are in the public domain and what constitutes a functional element can easily overwhelm even the most seasoned of developers. While the nuances of copyright law can be confusing and filled with murky definitions, a small investment in research and professional counsel at the beginning of a project can eliminate many of the potential problems and significantly mitigate the risk of ending up in a copyright dispute.

Dave Barnard is a member (partner) in the intellectual property department of Lathrop & Gage LC.

©2007 France Publications, Inc. Duplication or reproduction of this article not permitted without authorization from France Publications, Inc. For information on reprints of this article contact Barbara Sherer at (630) 554-6054.