FEATURE ARTICLE, OCTOBER 2004

COPYRIGHT ISSUES IN ARCHITECTURE
A lawyer from Greenberg Traurig discusses some of the intellectual property issues architects face.
Manuel R. Valcarcel IV

An architect’s most valuable intellectual property is the ability to employ his or her knowledge and skill to develop creative building solutions that address the clients’ specific requirements. Architects express their talent through their works, which consist of the architectural plans and drawings they create and the buildings constructed based on them.

Of the various forms of intellectual property protection, including patents, trade secrets, trademarks and service marks, copyright is the most important with respect to architectural works. Copyright protects original expression in the form of works of authorship, including architectural works. The purpose of copyright law, as stated in Article 1, Section 8 of the United States Constitution, is to promote the progress of science and useful arts by securing for limited times to authors the exclusive right to their respective writings. Copyright law indeed serves this purpose in the field of architecture by providing an incentive for further originality, creativity and innovation by architects for the benefit of their clients as well as the public.

Architects must deal with copyright issues both from an offensive perspective, in protecting their rights in and to their original works, as well as from a defensive perspective, in avoiding infringement of third-party rights when creating works for clients. In order to do so, it is important for architects to have a good working knowledge of copyright law as it applies to their industry.

An original design of a building embodied in any tangible medium of expression, including a building, architectural plans or drawings, is subject to copyright protection as an “architectural work” under Section 102 of the Copyright Act, 17 U.S.C., as amended on December 1, 1990. The protect-able architectural work includes the overall form as well as the arrangement and composition of spaces and elements in the design. It does not include individual standard features or design elements that are functionally required. The term “building” means structures that are habitable by humans and are intended to be both permanent and stationary, such as houses and office buildings. Other permanent and stationary structures designed for human occupancy, including, but not limited to, churches, museums, gazebos and garden pavilions, are also covered.

Certain architecture-related matter is not copyrightable, which generally includes structures other than buildings, such as bridges, cloverleafs, dams, walkways, tents, recreational vehicles, mobile homes and boats. Standard configurations of spaces and individual standard features, such as windows, doors and other staple building components, as well as functional elements whose design or placement is dictated by utilitarian concerns, are not covered.

Protection for an architectural work created as a work-made-for-hire lasts for 95 years from the date of publication of the work or for 120 years from the date of creation of the unpublished plans, whichever term is shorter. Protection for an architectural work created by an individual in his or her personal capacity (not as a work-made-for-hire) lasts for the life of the author plus 70 years.

Copyright in architectural works has several additional statutory limitations. First, the copyright in an architectural work that has been constructed does not include 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. Therefore, the owner of the copyright in an architectural work cannot stop others from photographing the building if it is publicly visible. Second, the owners of a building embodying an architectural work may, without the consent of the author or copyright owner of the architectural work, make or authorize the making of alterations to such building, and destroy or authorize the destruction of such building.

Registration is not required in order to claim copyright. Copyright exists from the moment the work is created. However, registration is required in order to commence a legal action in federal court for copyright infringement. Registration must be obtained prior to commencement of infringement or within 3 months of first publication of the work in order to be able to claim statutory damages under the U.S. Copyright Act.

One of the unique provisions of the U.S. Copyright Act is the right to seek specified damages prescribed by the statute (from $750 to $30,000, and up to $150,000 for willful infringement) as an alternative to proving actual damages. Registration is a simple process requiring submission of a two-page form, payment of a $30 filing fee, and deposit of one or more copies or identifiable portions of the work.

Architects must deal with copyright regularly in their practice to protect and preserve the value of their work. An architect’s work is appreciable as artistic expression and can be the difference between a building that is pleasing to see or be in and one that is not, or between a project that sells and one that does not.

Top quality architectural design can add considerably to a constructed property’s tangible as well as intangible value. It is for this reason that architects, and the clients that hire them, are often very protective of their works. Part of the value of an original architectural work is the fact that its uniqueness can be protected under copyright. Builders want their projects to be distinguishable from those of others — to be one-of-a-kind.

Architects and architectural firms that work as independent contractors retain copyright ownership of the works they create unless there is a written agreement expressly stating otherwise. Ownership of copyright gives the architect exclusive rights to reproduce the work and prepare other “derivative” works based upon the work. If the architect retains the copyright in an architectural work created for a client, the client will need a license to construct the building based on the architect’s work. Clients that do not protect themselves through contractual provisions that make them the owner of the architect’s work or that impose an obligation to assign the copyright in the architect’s work to the client can run into project-stopping problems later — for instance, in the event that the architect is replaced prior to completion of the project. Such provisions can take various forms, such as a lump sum “buy-out” payment or ongoing royalty payments made by the client to the architect to obtain either outright ownership of the copyright or a license of ongoing rights to complete construction of the copyrighted work. Without such protective provisions, a client that gets into a dispute with and/or otherwise terminates the architect may not have the right to complete construction based on the architect’s work. If construction is already in progress, a replacement architect hired to create new plans modifying the original work would likely be accused of infringing the first architect’s exclusive right to prepare derivative works based on the copyrighted work.

Some architects and builders who employ or engage architects are quite aggressive in policing and enforcing the copyrights to their architectural works, as indicated by the number of published appellate court case opinions involving residential home builders bringing copyright infringement claims against former prospective buyers and those they hire, including other architects, to build a home based on the home builder’s copyrighted architectural works. In many cases the copying is obvious and undeniable. In other cases, courts have found that architects successfully designed around other copyrighted works, despite having access to them, by creating a new work that has enough differences so as to not be substantially similar to other copyrighted works. Such cases have come down to a tedious comparison of the overall expression and selection, coordination and arrangement of individual features of the allegedly infringing work to the copyrighted work. Most residential builders make it a practice to require third parties that are given access to home models or plans to sign-in and register, providing their names, addresses, home buying or building plans, and other information. Visitor registration information has been used in actual copyright infringement cases to show that infringers had access to a copyrighted architectural work, which is a requirement for proving infringement.

Architects need to understand copyright law in order to protect themselves from creating infringing works for clients. It is not unusual for clients to come to the architect with copies of floor plans, elevation drawings and other materials created by other architects or builders, seeking to have the architect create a customized architectural work for them but including features from third-party copyrighted work. The architect in such situations has to make sure that the architectural work created is original and does not infringe on any third-party works. While ideas and concepts are not protect-able under copyright law and individual standard features or design elements that are functionally required are not protect-able and can be freely used, the architect must start with a blank sheet and create an original work. If the architect’s work is substantially similar to a third party’s copyrighted work, and the architect had access to the copyrighted work, the architect could face an infringement claim. In fact, probably the safest thing for the architect to do is to refuse to look at third-party drawings and other materials sought to be provided by clients.

Manual R. Valcarcel is a lawyer with the corporate and intellectual property practices of the Miami office of the international law firm Greenberg Traurig.


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