Architects, owners and developers can benefit from understanding the role that intellectual property law plays in protecting architectural plans and building designs. Copyright law lends itself more to the types of protections that architects would tend to seek, while trademark law is generally more applicable to building or business owners. This article discusses trademark protection. The companion article discussing trademark protection is available here.
What Does Copyright Law Protect?
Copyright law protects original works that are fixed in a “tangible medium of expression.” An “original” work is one that (i) has been independently created by the author (as opposed to having been copied from elsewhere), and (ii) possesses at least some minimal degree of creativity. The types of works that are protectable under the Copyright Act include:
- literary works;
- musical works;
- dramatic works;
- pantomimes and choreographic works;
- pictorial, graphic, and sculptural works;
- motion pictures and other audiovisual works;
- sound recordings; and
- architectural works
Two of these categories are of particular importance to the construction industry: (i) pictorial, graphic and sculptural works, which includes architectural drawings and plans, and (ii) architectural works, g., an as-built constructed building as depicted in architectural plans. As discussed below, the owner of the copyright in architectural plans owns two separate copyright interests, one in the building as represented in the drawings, and another in the constructed building. The nature and scope of protection for these works is discussed in more detail below.
What Is Not Protectable Under Copyright Law?
Knowing what is not protectable under copyright law aids in understanding what is covered. Copyright protection “does not extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in” a given work. Rather, protection extends only to the idea, concept, etc., as it is expressed in the work itself. Also excluded from the scope of the statute are names, slogans, short phrases, titles, plans, methods, systems, devices, fonts (typeface), facts and information in the public domain. Neither of these is protectable under copyright law, though some of them are eligible for protection under trademark and patent law.
Who Owns the Copyright?
Perhaps the most common copyright law issue that arises in the construction industry is the question of who owns the copyrights in the plans or building. The answer to this question is often straightforward because copyright ownership vests in the original author—the person who creates the work—at the moment the work comes into existence. But divining the correct answer can sometimes be a challenge due to two “exceptions” to this rule, namely, when the work is (i) “made for hire”, or (ii) is a “joint work” created by the contributions of multiple authors.
Works for Hire
A “work for hire” is one that (i) is prepared by an employee within the scope of his or her employment, such as when a draftsman prepares drawings for his architect employer; or (ii) is specially commissioned by a third party pursuant to a written work for hire agreement, provided the work is one of the nine types that can be made for hire.
Determining whether a particular work falls within the author’s scope of employment is a fact-intensive inquiry. The U.S. Supreme Court identified a nonexclusive list of 12 factors that courts should consider: (1) the skill required; (2) the source of the instrumentalities and tools; (3) the location of the work; (4) the duration of the relationship between the parties; (5) whether the hiring party has the right to assign additional projects to the hired party; (6) the extent of the hired party’s discretion over when and how long to work; (7) the method of payment; (8) the hired party’s role in hiring and paying assistants; (9) whether the work is part of the regular business of the hiring party; (10) whether the hiring party is in business; (11) the provision of employee benefits; and (12) the tax treatment of the hired party. None of the factors is determinative.
As to specially-commissioned works, there are nine categories of works that can be considered made for hire by independent contractors. These include collective works, audiovisual works, translations, supplementary works, compilations, instructional texts tests, answer material for tests, and atlases. Notably absent from this list are architectural works and plans. Consequently, the way to acquire ownership rights in plans and architectural works prepared by an independent architect is through a proper written assignment. Verbal assignments of copyright ownership and exclusive licenses are void and of no effect under the Copyright Act. Nonexclusive licenses in copyrighted works can, however, be granted verbally or implied from conduct. Because of this, failing to specify in written contract documents the existence (or absence) and nature of any assignments or licenses relating to architectural plans and works can be invitation to future litigation.
A “joint work” is one that is “prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” The intention to create a common work does not have to exist at the moment of each author’s creation, but a present intention to create a joint work must exist at the time of each author’s contribution to the joint work. Additionally, the authors do not have to be in physical proximity to one another when the joint work is created, do not have to prepare their contributions at the same time and, in fact, do not even have to know one another.
Each co-owner of a joint work owns an equal, undivided interest in the entire work—even those parts which it did not contribute. Absent a written agreement to the contrary, each joint owner is entitled to a pro-rata share of the proceeds from the exploitation of the work. Thus, three co-owners of a single work would each have a right to receive 33% 1/3 of the compensation from the sale, licensing or other exploitation of the jointly-owned work. And, each owner is entitled to exploit the copyright interest in whatever manner it sees fit, even over the objection of the other co-owner(s); a co-owner’s only duty in this context is to account to the other owners.
What Rights Does a Copyright Owner Have?
Insofar as architectural plans and works are concerned, the Copyright Act grants to a copyright owner four exclusive rights during the copyright term, including the exclusive rights to:
- make copies of the work;
- prepare derivatives of the work, g., revisions or modifications to architectural plans;
- publicly distribute copies of the work by sale or other transfer of ownership, or by rental, lease, or lending, e.g., licensing; and
- publicly display the copyrighted work.
NATURE & SCOPE OF PROTECTION
FOR “ARCHITECTURAL PLANS”
Architectural plans are protected as “pictorial, graphic and sculptural works” under the Copyright Act, a category of works that includes “two-dimensional and three- dimensional works of fine, graphic and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models and technical drawings, including architectural plans.” The plans do not have to be capable of fully describing how to construct a building in order to qualify for protection, but they do have to be sufficiently “original.”
The protection afforded to architectural plans as pictorial, graphic or sculptural works is limited: the copyright owner has the exclusive right to copy, distribute, and otherwise exercise its exclusive rights in the plans, but it does not have the exclusive right to construct the building depicted in the plans. A detailed explanation of the nuanced legal historical reasons for this dichotomy is beyond the scope of this article but, generally speaking, the reason for the dichotomy is that the copyright in the plans protects only the idea of the building as it is expressed in the drawings, not idea of the building as expressed in a physical structure. Prior to the implementation of the Architectural Works Copyright Protection Act of 1990 (“AWCPA”), physical buildings were not protected under copyright law because they are “useful articles,” which are expressly excluded from the scope of the Copyright Act. Consequently, “an owner of copyrighted architectural plans [was] granted the right to prevent the unauthorized copying of those plans” but [was] not granted “a protectable interest in the useful article depicted by those plans.” Or, as one court plainly put it: “an as-built structure or feature cannot be an infringing copy of a technical drawing.”
The line between unprotectable ideas and protectable expression is a blurred one, one that must be considered on a case-by-case basis. Below are some of items that have been held to consist only of concepts that had not taken sufficiently original form to constitute protectable expression:
- the placement of a new building;
- the use of truss technology to transfer weight;
- the alignment of floor heights and corridors;
- the creation of a continuous traffic loop through a hospital complex;
- the placement of emergency services and ambulance parking along that roadway;
- the location of a pedestrian area and of mechanical equipment; and
- the arrangement of space on particular floors.
NATURE & SCOPE OF PROTECTION FOR
The AWCPA protects “architectural works,” which means the “design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings.” In turn, “building” means “humanly habitable structures that are intended to be both permanent and stationary, such as houses and office buildings, and other permanent and stationary structures designed for human occupancy, including but not limited to churches, museums, gazebos, and garden pavilions.” Structures that are explicitly excluded from the purview of the AWCPA include bridges, cloverleafs, dams, walkways, tents, recreational vehicles, mobile homes, and boats.
Many types of structures obviously satisfy the definition of “buildings,” such as private homes and commercial office towers, but what about structures such as modular homes, parking garages, enclosed spaces within structures (like a store within a shopping mall), or kiosks?
In Patriot Homes, Inc. v. Forest River Hous., Inc., one court held that although mobile homes do not qualify as “buildings,” modular homes do. In that case, a modular home manufacturer sued a competitor under the AWCPA for infringing one of its designs. The competitor defended the case by arguing that the design was not protectable under the AWCPA because the design was for a “mobile home,” which is expressly excluded from the scope of the statute. The plaintiff pointed out that the design at issue was for a modular home, not a mobile one, a contention with which the competitor ultimately agreed. On summary judgment, the court honed in on a key distinction between mobile homes, which “are built on a permanent chassis and once pulled by a truck to its destination, the chassis remains attached to the home,” and modular homes that “are transported by a flatbed trailer not using an attached chassis” and secured to a permanent site. These differences, coupled with the fact that modular homes are required to meet building code requirements but mobile homes are not, demonstrates the “permanent and stationary” nature of modular homes such that they qualify as “buildings” under the statute.
Next, in a case involving a parking garage at Central Connecticut State University, a court determined that the garage was protectable under the Act because it was a “permanent and stationary structure as much designed for human occupancy as a gazebo or a garden pavilion,” both of which are explicitly covered by the AWCPA. To hold otherwise, the court said, would mean that “stand-alone garages built for private homeowners to store their cars would not benefit from the protection afforded the main home,” which would be an illogical result.
But in Yankee Candle Company v. New England Candle Company, another court concluded that an enclosed space within a larger structure—here, a store within a shopping mall—did not qualify as a building. And in Viad Corp. v. Stak Design, Inc., a court found that although pergolas, gazebos and garden pavilions fall within the ambit of the AWCPA, stand-alone kiosks do not. The court appears to have based its decision on a communication from the Copyright Office rejecting the kiosk owner’s attempt to register the designs in which the Copyright Office said that a “structure within a preexisting building such as a mall, designed to display items for sale, is not a work capable of sustaining an architecture claim.” The Copyright Office’s statement supports the rationale and outcome of the Yankee Candle case.
What Buildings Are Eligible for Protection Under the AWCPA?
The AWCPA applies to designs created on or after December 1, 1990, and to designs that were created in unpublished plans or drawings but which were constructed between December 1, 1990 and December 31, 2002, inclusive. The term “constructed” is the line of demarcation for determining whether a building is protectable under the AWCPA. As used in the statute, courts have interpreted the word to mean “substantially constructed,” rather than completely “finished.”
What Elements of a Building Design Are Protectable Under the ACWPA?
Protection under the AWCPA extends to the “overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features” such as windows, doors, and other staple building components, or standard configurations of spaces. Some specific examples of items that have been determined not to be protectable include:
- domes, wind-towers, parapets, and arches;
- generalized notions of where to place functional elements;
- existing physical characteristics of a site, including its shape and dimensions, the grade contours, and the location of existing elements; and
- the concept of a one-story office showroom.
The AWCPA’s Limitations on a Copyright Owner’s Exclusive Rights
The AWCPA imposes two limitations on the exclusive rights granted to copyright owners. First, although a copyright owner has the exclusive rights to reproduce, distribute and publicly display the plans and building, it does not have the right to “prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the [constructed building], if the building in which the work is embodied is located in or ordinarily visible from a public place.” Second, notwithstanding the copyright owner’s exclusive right to prepare derivatives of the building design, the owner of a building, e.g., a physical structure embodying a protected rchitectural work, is permitted to modify, alter or destroy the building without the consent or authorization of the owner of the copyright in the architectural work.
It is worth noting, however, that unless the proper waivers have been obtained or other certain conditions are satisfied under the Visual Artists Rights Act of 1990 (“VARA”), altering or destroying a building, or a portion thereof, could under some circumstances infringe the rights of a person whose VARA-protected works are integrated with the building. For example, the author of a work of visual art that has been incorporated into a structure has the right—regardless of whether he or she is the copyright owner—to prevent:
- the intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation; and
- the intentional or grossly negligent destruction of a work of recognized stature.
It is thus imperative that owners, architects, builders and others involved with the design and construction of buildings, consult with counsel about obtaining the appropriate consents from artists whose works may qualify for protection under VARA prior to commissioning or installing covered works.
How are Plans and Architectural Works Registered With the Copyright Office?
As discussed above, there are two separate copyright interests in a set of architectural plans, one in the drawings themselves and another in the building itself. A registration for one type of work does not protect the other; separate registrations are required. Plans are registered as Visual Works, whereas architectural works are registered in their own category, Architectural Works. It is important to obtain a registration for each type of work for a number of reasons, an important one of which is to avoid later having to defend the argument that attorney’s fees or statutory damages are recoverable for one, but not the other.
In sum, copyright law provides valuable protection for architects, owners, and developers. As general rule, copyright law lends itself more to the protections that architects would tend to seek, and trademark law is generally more applicable to building or business owners. Thanks also to Stephen Lewis for providing input and co-writing certain portions of this paper.