November 20, 2003
Don't be violated — protect plans with copyrights
By MARK ROSENCRANTZ
When a building is constructed, ownership rights to it are generally easily determined and carefully provided for in contracts between the owner, lender and others. Unfortunately, rights to copyrights in the architectural and engineering aspects of a building are not always so well spelled out.
In broad terms, unless all plans for a project were designed for that specific project by the architects and engineers working on the job, potential liability exists for every contractor on the job, as well as subsequent engineers, architects, owners and developers.
The Architectural Works Copyright Protection Act, passed in 1990, extended copyright protection to architectural works unless the building was constructed or the plans to the building were otherwise published before Dec. 1, 1990. Courts have generally agreed that all buildings not yet substantially complete as of Dec. 1, 1990, are covered by the act.
Courts interpreting the copyright act have held it allows, in addition to architectural plans, things such as maps, technical drawings and site plans to be copyrighted. Copyright owners have the exclusive right to: reproduce, in original or derivative form; distribute; perform; and display a copyrighted work.
As a result, copyright owners have the right to prevent things such as reproduction of plans, construction of additional buildings from the same or similar plans, and construction of additional buildings that are the same or substantially similar to the original building, even if the original plans are not utilized.
The copyright act does not, however, prevent anyone from taking or painting pictures of any building visible from a public place, or displaying such pictures.
One key right to consider for architectural and engineering plans is that of reproduction. Certainly verbatim use of plans prepared by someone else can readily result in liability.
Murkier questions are created, however, when plans are used as a starting point to prepare a new set of plans, or they are adapted. New plans prepared in such a manner could be judged to be a derivative work, the use of which is, for legal purposes, the same as use of the original plans.
Likewise, if multiple sets of plans are combined to create a new set, the new set could be held to be a compilation, the use of which would also create liability.
The key under scenario is whether it can be shown that the two works are “substantially similar.” That analysis is done by a detailed comparison of the two works.
To obtain full copyright protection, a copyright registration form, along with a fee, must be filed with the Copyright Office. The right to file a registration lies with the creator of the plans, or his assignee. Thus, architectural plans to a building are owned by the architects who created them, unless the rights are transferred or sold.
However, owners and contractors are free to have provisions in their contracts with architects and engineers transferring such ownership rights. Moreover, such rights can be agreed to orally, or created by implication. As a result, clearly spelling out such rights in contracts is much safer, and creates certainty otherwise unavailable.
The timing of filing a copyright registration is also important. In order to be eligible to recover the full range of damages the copyright act allows, strict timelines must be met. If plans are unpublished, or never given to anyone, certain damages and awards of attorneys' fees cannot be recovered if an infringement takes place before registration.
If a work is published, certain damages and attorneys' fees can only be awarded by a court if the infringement takes place after the plans are published and the registration is filed. However, the author of the original plans does have a 90-day grace period to file for protection after the first publication of the plans.
Because of such deadlines, plan creators should be careful to file copyright registrations as early as possible. Similarly, close attention should be paid to who receives drafts and copies of plans.
Failure to carefully allocate ownership of the copyrights in plans can cause substantial problems. For example, if lenders foreclose on a project before construction is completed, the lender or new owners might, in the course of completing construction, hire new contractors or architects, an make new copies of the plans for them. Doing so could result in copyright violations for the lender from copying the plans and hiring new contracts or architects to use them, and by the architect and contractor who use them.
Another potentially problematic situation occurs when an owner has a building he wishes to reproduce at another location. Reusing the plans for the original building, even with slight modifications, could also result in a copyright violation, unless the owner obtained the rights to the plans from the architect who designed the original building.
Thus, for example, in one case a homeowner had an architect prepare plans to remodel her house. Although the architect prepared plans, a contract was never agreed to, and the owner fired the architect before construction began. The owner then gave the plans to a new architect, who traced them, put his name and seal on them, and submitted them to obtain a building permit.
Ultimately, a building permit was issued and the plans used by a general contractor to remodel the house. During construction, the original architect dropped by the site, noticed that the plans being used were nearly identical to those he drew and immediately took pictures of the plans.
The original architect then successfully sued the new architect and the general contractor for copyright infringement and unfair competition. On appeal, the court awarded the original architect the entire profit made by the general contractor and the new architect, which totaled $107,125. Furthermore, because the new architect and general contractor were co-infringers, they were jointly and severally liable for the entire amount. Thus, the old architect had the ability to collect from the new architect the entire $107,125, even though the new architect's share of the profit was about $2,500.
Accordingly, copyright ownership should be clearly allocated in contracts before plans are exchanged and construction begins. Further, contractors should never make copies of or use architectural or engineering plans before determining who owns the copyrights to them. This is particularly true if the plans were used by another contractor or to build another building.
Contractors, engineers, architects and others involved in construction projects should determine what protections they will and will not receive from contracts for copyright violations before signing any contracts or beginning work. Doing so will make sure that liability is avoided, and that the last step of a project is a final payment, not a lawsuit.
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