• Keeping Perspective When an Architect Threatens a Copyright Infringement Suit
  • June 4, 2008 | Author: Thomas H. Adolph
  • Law Firm: Jackson Walker L.L.P. - Houston Office
  • For real estate investment firms, developers, and builders, an occasional unpleasant surprise comes when an architect claims that the latest project – just completed or still in construction – is infringing the architect’s copyrights in existing buildings or blueprints.  The source of this surprise is the copyright protection extended to certain structures and blueprints by the 1990 Architectural Works Protection Act.  Under that act, the owner of a copyright in a structure or blueprint can sue others for copyright infringement for actions such as:

      • Revising the blueprints
      • Copying the blueprints
      • Building an unauthorized structure from the blueprints
      • Copying an existing structure  

    The architect commonly threatens a lawsuit against a developer or property owner seeking all profits relating to the project or other significant damages.  Some architects have even sued for damages for lost reputation.  The architect may also threaten criminal prosecution and threaten to seek an injunction against continued construction or sales.
    While an architect’s copyrights are real and must be honored, and while an architect does have significant legal remedies, it is important not to panic and not to take all of the claims by the architect or her attorney at face value.  You have defenses and you should investigate all of them.
    No Guaranteed Windfall – Not all of your profit
    The law does not guarantee an architect huge damages in an infringement case.  The Architectural Works Protection Act was not intended as a guaranteed windfall for an architect.  Rather, the monetary remedies available to a copyright owner include:

    1.  Damages which may be one (and only one) of the following:

    • The architects actual damages and the infringer’s profits (attributable to the copyrighted work)
    • An award by the judge of “statutory damages” for each infringement, which can be between $200 and $100,000

    2.  Costs and attorney's fees

    In almost all architect copyright infringement cases, despite the claims of the architect and the attorney, the architect is not entitled to 100% of your profits.  If the architect proves infringement, the architect is still only entitled to the portion of the profits attributable to the copyrighted work.  Further, a developer or building owner has significant defenses to each monetary remedy and should not begin “opening the pocketbook” as soon as an architect asserts a claim.

    Prevent architect claims by contracting to own the copyrights
    Prevention is always better than remedies.  The best prevention is to own all rights in the copyrights that you use.  You can prevent architect claims by always insisting on contract provisions that assign the copyrights to you or that give you full rights to copy the blue prints, build structures according to the blue prints, and create derivative works.  You must be diligent if you attempt this preventive measure.  AIA forms give ownership of copyrights to the architect.  Even if you originally negotiate for ownership of the copyright, you must be diligent to check all future agreements to ensure that your rights to the blueprints and copyrights are properly reflected by revisions or amendments to the AIA forms.
    Prevent architect claims by avoiding copying situations
    Another way to avoid architect copyright claims is to avoid any possibility of copying. 
    Do not copy existing buildings.
    Also, if possible, do not mix architects on a project.  But, if you must change architects, do not provide the old blueprints to the new architect unless you have clear rights to the blueprints.
    Reduce damages by identifying factors influencing profit
    Perhaps the most important lesson for a building owner is that there are important fact questions to be investigated concerning the profits attributable to the copyrighted building or blueprint.  It is highly unlikely that all of the profits are attributable to the copyrighted work.  Most real estate firms have their own secret formulas for valuing real estate.  Such documents would be highly relevant to the damages in an architect’s copyright suit – and how much of that formula would have anything to do with the architect’s work?
    The list of factors that can affect real estate value is almost endless.  First and foremost, as the adage goes, real estate value is determined by location, location, location.  Other factors that might affect value include advertising, materials, any services involved in the construction, market conditions, and any other purchaser decision criteria.  It will be the defendant’s burden to reduce the amount of the total profit, but it is not an impossible task.  One must consider any fact that suggests that the total profit, or any portion of the total profit, is “not the natural and probable consequence of the infringement but is the result of other factors that add intrinsic value or have independent promotional value.”
    Reduce damages by acting in good faith
    As an alternative to damages and profits, an architect could seek an award of “statutory damages.”  Statutory damages are simply a dollar amount determined by the judge in the judge’s sole discretion.  Statutory damages can range between $200 for each “innocent” infringement and $100,000 for each willful infringement.
    Avoid the risk of a large award of statutory damages by never copying a building or a blueprint if you know or have reason to know that the copyright in the building or blueprint may belong to someone else.
    Look for other defenses
    Many other defenses to an architect’s copyright suit may be available.  This e-Alert is limited in length and cannot list all of the possible defenses, but the following is illustrative:

    • The failure of the architect to register timely or properly may preclude the suit or may preclude statutory damages.
    • No claim for infringement can succeed if you can prove that you did not copy the copyrighted work or that you had no access to the copyrighted work.
    • The Architectural Works Protection Act does not apply to architectural works created before December 1, 1990.
    • The Architectural Works Protection Act does not apply if (1) the architectural work was embodied in unpublished plans that existed as of December 1, 1990, and (2) the architectural work was not constructed until after December 31, 2002.
    • The Architectural Works Protection Act does not apply if the structure is not habitable, e.g., if the structure is a bridge, a cloverleaf, a dam, or a walkway.
    • The Architectural Works Protection Act does not apply to something that is not a “structure,” e.g., a tent or a boat.
    • No claim for infringement can succeed if the structure is a functionally required element such as a standard configuration of space.
    • No claim for infringement can succeed if the structure is an individual standard feature, such as a window, a door, or another staple feature.
    • The Architectural Works Protection Act does not prohibit photography, sketches, paintings, or pictorial representations of an architectural work that is in or is visible from a public place.
    • The Architectural Works Protection Act does not prohibit alterations or destruction of a structure. 

    Final Words
    Investigating all defenses in the event of an architect’s claim of copyright infringement is extremely important. The increasing frequency of architect suits, and the fact that so many architect agreements provide that the architect retains all copyrights, underscores the need to protect against a surprise claim from an architect.