February 19, 2008

The Federal Copyright Act expressly protects architectural works: the original design of a building, including the building itself, architectural plans, blueprints, sketches and schematics. Violation of the Copyright Act may result in a lawsuit in federal court seeking an injunction to prohibit further infringement, and to order destruction of the plans and/or buildings, an award of statutory damages of up to $150,000, in addition to compensatory damages, and recovery of attorneys’ fees and costs. As a consequence, copyright is a construction issue that all participants in the process must and should consider.

At the outset, the first and best piece of advice is to address the issue during contract negotiations in order to avoid potential problems down the road. For owners engaging design professionals, ownership of the design should be addressed and, if the design professional retains ownership, the nature and extent of the permitted use of the design by the owner should be carefully set out, including any future limitations on that use.

In addition, the continued use of the plans in the event of a dispute during the work needs to be addressed, as many architectural agreements we have seen attempt to deprive the owner of use of the plans in the event of a fee or other dispute.  Owners, thus, can become faced with the Hobbesian choice of paying up under protest or facing a court claim by the design professional for copyright violation alleging that they are a willful infringer.  Contractors need to be cautious about the use of plans they are provided to build with and should, as a matter of practice, require language in the construction contract by which the owner affirmatively represents that it owns or has a license to use the plans and agreeing to defend and indemnify the contractor for any copyright claims as to them.

One of the misconceptions we often hear about copyright claims is the belief that there has to be actual evidence that the blueprints at issue were copied. That is not true. The copyright owner need only show that the alleged infringer had access to the design, which could be as simple as an opportunity to view and to photograph the building at issue, and that the new building is substantially similar to the original work. Stated another way, there does not need to be any proof of actual copying of the drawings. Instead, a court would only proceed to weigh the similarities and dissimilarities of the designs to determine whether an average lay observer would recognize the alleged copy was derived from the misappropriated work. The alleged infringer would have the right to present evidence of independent creation.

It is also a misconception to assume that, with blueprints, there is no potential copyright problem if there is no © mark placed on them. Although the © mark makes the copyright claim that much stronger, as it clearly places parties on notice of possible ownership by a third party, it is not a prerequisite to a federal copyright claim.

A piece of advice we would provide to creators of architectural works is to register early their copyright with the Copyright Office. This involves payment of a fee and sending a set of the plans to the Copyright Office. Registration, importantly, creates a presumption of ownership of the copyright of the plans. Registration is also a prerequisite to a federal copyright lawsuit.  We advise clients to register early, such as upon issuance of the plans, because otherwise a party will forfeit its right to statutory damages and attorneys’ fees under the Copyright Act if, in the case of plans made for a particular project, it delays registering the plans until after it discovers the infringement. On plans made for general sale, the plans need to be registered prior to publication of the plans by offering them for sale. Otherwise, the right to recover statutory damages and attorneys’ fees under the Copyright Act will be forfeited.

As we are seeing an increase in disputes involving copyrights as to construction plans, we would suggest that consideration of copyright issues certainly be included in the check list of issues to be considered and addressed, along with such items as insurance, indemnity and the like, on every construction project.