David N. Schachter, Esq.
Hall & Evans, L.L.C.

For decades, architects, engineers and builders have complained that competitors could copy and use their designs without fear of legal repercussions. Copyright laws were silent on such conduct, and legal relief was sporadic and inconsistent. The problem was compounded with the development of CAD-CAM technology and the rapid increase in the use of computers to create and store this information. The problem has worsened further with the adoption of the Internet as a mainstream business tool, which has made it incredibly easy to transmit illegally copied materials to a remote location without a trace.

Fortunately, Congress reacted to the problem by enacting the Architectural Works Copyright Protection Act in 1990. The Act created a new category of copyrightable subject matter called "Architectural Works." The definition of an architectural work includes the design of a building and the associated architectural drawings. This law makes it possible to take full advantage of Federal Copyright Laws to protect the ownership and use of architectural work products. Under the Copyright Act, the owner of a copyright possesses exclusive control over the copying, distribution and publication of a copyrighted work. Thus, if an architectural work is copied, the owner of the copyright can take advantage of the numerous remedies available for copyright infringement. These include: an injunction prohibiting the infringer from continuing to create, own or possess infringing copies; an order requiring the impoundment and destruction of infringing works; an award of damages against the infringer arising from the infringing conduct; and, in appropriate cases, an award of attorney's fees as well as an increase in damages for "willful" conduct.

How The Courts Deal With Copyright Infringement

Although the literal amendments comprising the Architectural Works Copyright Protection Act may have seemed relatively simple, the task faced by the courts of enforcing remedies against architectural pirates may prove more difficult than imagined. Copyright infringement can be dealt with in terms of monetary damages, which may be relatively easy to assess, but the real teeth of copyright law lies in the injunction, which is the court's power to halt infringing conduct and, more importantly, to seize and destroy infringing works. We've all seen news clips of federal marshals crushing piles of bootleg CDs or fake Rolex watches with a rented steamroller. In the case of architectural works, however, the Act extended protection not only to the engineering drawings used to create the building but to the actual structure itself. Liability can be imposed even if there is no evidence that actual drawings or blueprints were copied. In fact, unauthorized copying could occur simply by utilizing information from brochures, photographs or even a simple tour of the copyrighted premises. Since the ultimate sanction for copyright infringement is destruction of the infringing work, the question is whether a court, confronted with a clear case of infringement, will actually order the destruction of a building constructed from illegally copied architectural plans. Congress recognized that this particular issue could be vexing when it came to applying it to a real life situation. One legislator noted that "buildings are now the only known form of copyrightable subject matter that is habitable." Nonetheless, the amendments make clear that destruction remains an available remedy for the victim of infringement of a copyrighted architectural work.

So far, no court has ordered the public demolition of an infringing building, although several courts have been willing to order a halt to construction projects in various stages of completion. Thus, at least for the time being, you can rest assured that a sheriff will not be serving an order on you to vacate a counterfeit building so that it may be "flattened forthwith." A number of other questions remain to be answered as well, including whether insurance would cover the innocent owner against the loss of the building under these circumstances, whether public policy concerns could override a request that a building be destroyed, and, finally, just how much similarity is required to justify a finding of infringement. The more bizarre scenarios predicted by some observers are unlikely to take place. As the legal maxim goes, "no one should suffer by the act of another."

What The Act Does Not Protect

Not everything created by the architect or engineer is protected under the Act. Essential or "utilitarian" structural features are not protected, but rather the protection extends typically only to creative and unique design elements, and to the buildings that display them. These features now occupy the same status as songs, plays, computer programs and other copyrightable works, enjoying the same degree of federal protection from illegal copying. Certain other exceptions were also recognized in the interest of practicality. The Act does not forbid taking photographs of the building if the building is in public view. The owner of the building, furthermore, is entitled to engage in remodeling or even destruction of the building even if the architectural copyright is owned by someone else. The Act also recognizes that the architectural copyright cannot be used to interfere with local building or zoning plans.

Owning & Protecting A Copyright

So how do you take advantage of this new legal weapon? Here comes the good news. Over the last 20 years, Congress has streamlined the mechanisms for owning and protecting a copyright. First, nothing is required for the initial existence of a copyright other than the act of creation of the work itself. The copyright arises from the moment of the work’s inception and no registration or other procedural action is necessary. The initial owner of the copyright is determined by the circumstances under which the work was created. The general rule is that the copyright vests in the author. Where the author is an independent contractor and the work is created for use by a third party -- a common scenario in the construction field -- ownership will vest in the third party but only if there is a written agreement which specifically calls for a transfer of ownership from author to recipient. It is therefore extremely dangerous to enter into such relationships without executing a written agreement. Finally, where the work is created by an employee in the course and scope of the employment, the copyright belongs to the employer.

Second, there is no longer any requirement that a copyright notice (similar to that appearing at the end of this article) be displayed with the work when it is published. But don’t be fooled. If it becomes necessary to pursue an infringer in a court of law, the fact that a copyright notice appeared on the work when it was copied can serve as compelling evidence of "willful" infringement, which can justify an increase in the award of damages. Since it requires virtually no effort to affix a copyright notice, it is always recommended that a properly stated notice be used whenever a copyrighted work is disclosed or published, or in our case, constructed.

The third element of protection, federal registration, is also relatively simple to accomplish. Registration requires the preparation and filing of an application with the United States Copyright Office along with a filing fee and a copy of the work in question. The information on the form must be as precise as possible and knowledge of copyright law is sometimes necessary to correctly prepare portions of the application. Thus, since an improperly prepared application can jeopardize the validity of the copyright, legal advice should be obtained in preparing the papers. A one-hour consultation usually suffices. The filing fee for copyright registration is $20.00 per application. Where the applicant wants to register a copyright for both the plans to a building and the actual building itself, separate applications are required. Finally, the applicant must submit a copy of the work to be copyrighted. This copy is stored in the archives of the Copyright Office, and is publicly available. For registration of a copyright in a building that has already been constructed, the Copyright Office now requires both a set of plans and a set of 8 x 10 interior and exterior photographs. Where the copyright involves computer source code or other material containing confidential information, procedures exist to protect the trade secret portions from being examined.

While registration is not a prerequisite to copyright ownership, it most certainly is required for effective enforcement. A suit for copyright infringement cannot be maintained unless the work is registered. In addition, early registration of a copyright greatly increases the amount and types of remedies that are available should infringement proceedings become necessary.

Thus, for the practitioner, whether engineer or architect, there are two keys to effective use of the Architectural Works Copyright Protection Act. First, take steps to protect the copyright as soon as the work is created. Secondly, because "diligence" must be shown whenever copyright enforcement is sought, act quickly and seek legal advice as soon as you believe an infringement has taken place.

© 1999 by Hall & Evans, L.L.C.

David N. Schachter heads the Intellectual Property Department at Hall & Evans, L.L.C. For more information or to discuss specific questions, contact David N. Schachter at 303-628-3360 or by e-mail at schachd@hallevans.com. For more information about Hall & Evans, L.L.C., visit our website at www.hallevans.com