BY DAVID H. BOWSER
This article originally appeared in the American Institute of Architects' Practice Management Digest in two parts
Scope of Protection. First, you need to understand the scope of protection for architectural works. Under the AWCPA, an architectural work is statutorily defined as “the design of a building as embodied in any tangible medium of expression, including a building, architectural plans or drawings,” and “includes 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 common windows, doors, and other staple building components. Accordingly, per the definition, while individual standard features and architectural elements classifiable as ideas or concepts are not themselves copyrightable, an architect’s original combination or arrangement of such elements may be. So, there are two major elements that impact copyright claims: (1) you cannot copyright an idea, only original expressions of that idea; and (2) certain elements of architectural design are so common that they are, by law, unprotected.
To prove copyright infringement, a plaintiff must show: (1) ownership of a valid copyright; and (2) copying by the defendant of the protected elements of the copyrighted work. Copying may be established by showing that the defendant had access to the plaintiff’s work and that the two works are “substantially similar.” To determine substantial similarity, the court engages in a two-part inquiry: the allegedly infringing work must be both objectively similar (the “extrinsic test”) and subjectively similar (the “intrinsic test”) to the copyrighted work. The extrinsic test is an objective measure of whether the two works share clear, specific similarities.
Even with these definitions, it can be confusing as to just which parts of architectural plans are subject to copyright protection. A review of many cases of architectural copyright infringement quickly shows that the level of protection for a functional building, for example, is rather thin. As one court described the problem, “some architectural designs, like that of a single-room log cabin, will consist solely of standard features arranged in standard ways; others, like the Guggenheim, will include standard features, but also present something entirely new. Architecture, in this regard, is like every art form.” Because only the protected elements of an architectural plan can be compared when deciding whether substantial similarity and therefore copyright infringement has occurred, dissection of individual elements of the work is needed to determine the scope of copyright protection before the work can then be considered as a whole. An expert can be used to help with this dissection.
Unprotected elements of a copyrighted work can include: (1) ideas, as opposed to expression; (2) expressions that are indistinguishable from the underlying ideas; (3) standard or stock elements (called scènes-à-faire); and (4) facts and other public information. A related issue is the merger doctrine, which instructs that some ideas can only be expressed in a limited number of ways and when expression is so limited, idea and expression merge, and expressions merged with ideas cannot be protected lest one author own the idea itself.
Features that are as a practical matter indispensable, or at least standard, in the treatment of a given idea are not protected by copyright. For example, neoclassical government buildings, colonial houses, and modern, high-rise office buildings are all recognized styles from which architects draw. Elements taken from these styles are not protected.
Likewise, certain industry standards or market expectations for homes or commercial buildings and design features used by all architects because of consumer demand also get no protection. Any design elements attributable to building codes, topography, structures that already exist on the construction site or engineering necessity are not protected. Generalized notions of where to place functional elements, how to route the flow of traffic, and methods of construction are unprotected. There is no copyright in a building plan’s design parameters either, because constraints placed on an architect related to how the client plans to use the building do not originate with the architect.
In applying the extrinsic test, only those elements of a work that are protectable can be compared. Once the unprotected elements are filtered out and disregarded, the court considers the scope of the copyright. If few similarities remain after the unprotected elements are set aside, the scope of the copyright is thin.
In summary, the level of copyright protection depends upon the subject matter and original creativity contained in the plans. One cannot copyright the “idea” of a kitchen. If it were so, only one architect could design kitchens, which would be ridiculous. Purchasers usually expect a kitchen to have a sink, a window over the sink, and counters and cabinets near the sink. Those are standard client expectations and not protected. To be frank, there are only so many ways to design a two-story, three-bedroom house with all of the code requirements and purchaser expectations. Because none of the elements are protected, copyright protection will extend only to the arrangement and composition. Small differences are usually enough to avoid copyright infringement. As the complexity of the design increases, there should be more and more significant differences between plans to ensure no copyright infringement is occurring.
How to Protect Yourself. Now that we have a basic understanding of what is protected by copyright, the next question naturally becomes what you can do to minimize the chance of being sued for infringement. Again, there is no silver bullet that will stop all infringement claims from being made. It is an inherent risk associated with being a design professional. As I have repeatedly told clients over the years, any idiot with some paper and enough money to cover the small filing fee can sue you. The mere filing of a suit does not mean the claim is warranted or any good. While the list of potential safeguards is endless, the following are steps you can easily take to lower the likelihood that you will be defending an infringement claim and provide you with the evidence necessary to properly defend against such claim.
1. Do not copy anything. While it may be obvious, the number one thing you can do in your practice to avoid infringement claims is not to copy any prior work. This simple rule can avoid 99% of infringement claims.
2. Avoid non-virgin development. If you are the second or third design professional working on a development, or if your client is the second or third developer on a piece of property, you can be assured that there are disgruntled prior participants who may be inclined to push the boundaries in claiming copyright infringement. You should assume that those prior relationships ended less than amicably. Where there is animosity baked into the project, there is enhanced danger. In addition, designing for a specific site when others have previously done so increases the likelihood that the constraints imposed by the site, the applicable codes, the permitting and industry practices will increase the potential of overlapping design elements, and while these elements are not copied or ultimately copyrightable, they can be used by a disgruntled prior participant to claim infringement. Every infringement suit requires a plaintiff who is ready, willing, and able to take the extraordinary measure of retaining an attorney and filing suit. The easiest thing you can do to avoid this enhanced risk of being accused of infringement by pre-disposed potential plaintiffs is to just avoid such projects. Always ask yourself if the narrow profit margins you charge are worth the substantially increased risk. In short, do not buy other people’s problems.
3. Avoid access to prior design work. If there has been any prior design work done for a piece of property or for the client in general, avoid it like the plague. Do not pull prior plans. Tell your client not to send you anything that was done prior to your involvement. If they try to give you something, politely ask what it is, do not look at it, and refuse to accept it or return it unreviewed with a clear statement that it was not reviewed. Limit the information you gather for your work to the greatest extent possible. Document what you saw. You cannot be found to have copied something if you never saw it in the first place.
4. Document right to use. To the extent that you have to review any prior work, you should take the precautionary and extraordinary measure of requiring your client to supply you with documentation of his or her right to use those materials. This may come in the form of prior contracts that give the right to use communications acknowledging such right, or even formal license agreements. It is difficult for a plaintiff to maintain an infringement claim when there is a document granting permission to use the prior materials. If your client cannot or will not provide you with such documentation, that should raise a big red flag.
5. Enhanced warranty and indemnity clauses. To the extent that you need to review any prior work done for a site or project, you should have that information gathered by the client and passed to you. In addition to the documentation for the right to use discussed above, you should negotiate clauses into your agreements with the client that provide enhanced warranties and indemnity. The client should clearly and succinctly warrant that any information provided by the client to the design professional comes with a right to use such materials. This should be partnered with an indemnity clause that requires the client to defend and hold harmless the design professional from any claims of infringement associated with having or using the prior work. Ensure that the party that makes such promises is actually financially able to fulfill those promises. A promise of defense and indemnity from a single-asset entity with no real assets or money is basically worthless. You may want to designate another entity to make those promises (and have them sign) or require a personal guaranty from an individual (and have them sign as an individual) with the assets to meet those obligations.
6. Document your own work. Lastly, you should document your own work. Copyright law recognizes the Independent Creation Doctrine. While it is sometimes called a defense, it is actually a denial of any copying. In a nutshell, you show that you did not copy; you in fact independently created your own work product. To make this showing, you should be able to “show your work,” just like your math teachers wanted you to do in school. You should establish a thorough internal records requirement wherein all of the items that were reviewed, all sketches, all plans and revisions to plans, all meeting notes, and all communications are documented and saved in a logical file system. You and your employees should track their time and briefly describe the tasks and activities performed, even where you are working on a flat fee. Your records should be sufficiently detailed that you can easily and clearly show any third-party that this is how you independently produced your own work product. In this digital age, there is no real reason not to thoroughly document your work.
Conclusion. There is no magic step you can take to avoid an infringement claim. It is just a reality that comes with being a design professional. You can take steps to minimize the risk. You can take steps that maximize your ability to defend yourself if an infringement claim is made. Considering that infringement claims are extremely expensive to defend, this is just one of those situations where an ounce of prevention is all that is available, as there is no cure.