Copyright for Architectural Works

Copyright for Architectural Works
by Thomas Hayton
© 1993-2010 Thomas Hayton.
All rights reserved.

1.  Introduction; Nature of Protections
1.1. Copyright
1.2. Moral Rights
1.3. Purpose of This Paper
2. Who Owns the Protection and How Do They Keep It?
2.1. Who is the Author?
2.2. Registration
2.3. Notice of Claim to Copyright
2.4. Transfer, Expiration, or Loss of Copyright
2.5. Government Contracts
3. Copying and Other Prohibited Acts
3.1. Copyright
3.2. Moral Rights
4. Sanctions for Infringement

1. Introduction; Nature of Protections

1.1 Copyright

People who earn their living designing buildings should learn how to protect them from unauthorized copying. Providing such protection is the function of federal copyright laws. 1

Federal copyright applies to “original works of authorship” which are “fixed in” a “tangible medium”. 2 The subject of this protection includes much more than those things with which copyright is commonly associated (i.e., literature and art); this still requires creativity, but not uniqueness. As shown in the last note, it also is necessary to distinguish the expression of an idea (which is protected by copyright) from the idea itself (which is not protected).

Until recently, however, copyright protections for architectural drawings (under the rubric of “pictorial, graphic and sculptural work”) 3 did not apply much to the building itself. A competitor was prohibited from copying the drawings, but often could copy the building. 4 (Ironically, the word “copy” is not defined in the statutes and courts differed on whether execution of the plans was itself a form of copying. 5 If not, competitors could not only copy the building by sight but also could employ the original drawings in that effort.) Making “copycat” buildings often was considered to be okay. 6

Increased coverage for buildings arrived with The Architectural Works Copyright Protection Act of 1990, PUB. L. No. 101-650, Title VII, § 70 et seq. 7 This added an entirely new type of protected work of authorship, an “architectural work”, meaning:

The design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of space and elements in the design, but does not include individual standard features. 8 (Emphasis supplied.)

In other words, a design may be manifest in a drawing and/or the building itself, and it is protected in either form. This new provision was not intended to reduce protections for architectural, engineering or other technical drawings. 9 Now, so long as the drawings are “original”, 10 are not merely functional, 11 and satisfy certain other general requirements for copyright protection, neither the drawings nor the buildings depicted by them may be copied, and both exterior and interior designs are protected. 12

The protections for “architectural works” apply to designs “created” on or after December 1, 1990, and to earlier designs so long as they were unconstructed and unpublished as of that date. 13 A drawing is ‘created” gradually, as each part is committed to paper. 14 Construction presumably means completion of the physical building to the extent that its final form may be recognized. 15

“Buildings”, such as houses, office buildings, churches and museums; are things designed to be occupied by humans. 16 Occupancy, however, can be fleeting; gazebos and “garden pavilions” qualify. The building must be affixed to the land permanently but cannot be a major civil engineering structure like a bridge or highway cloverleaf. 16. 1

1.2 Moral Rights

Public Law 101-650 included a second change to copyright provisions which has relevance to architects and engineers, but it should have a less salubrious effect on them and building owners. The Visual Artists Rights Act of 1990, Pub. L. 000-000, Title VI, §601, expanded rights of authors of “visual art”. 17 Among other things, it addresses art “incorporated in or made part of a building”. These new protections suggest tactics to be taken when renovating and demolishing buildings and when commissioning such things as murals and sculptures to be incorporated into new projects in the first place.
The Visual Artists Rights Act creates rights which are predicated upon the artists’ sensitivity and reputation: artists are protected from both inaccurate attribution and physical damage to the work. (The right of attribution and the right of integrity together are referred to as “moral rights” by commentators.) 18 While the focus of this paper is on works incorporated in buildings, moral rights are not confined to that sort of work.

Moral rights are:

1. Right of attribution. This is the right to claim authorship of the work, to stop others from claiming authorship of the work, and to disassociate the author’s name from the work if the work has been “distorted, mutilated or modified in a way prejudicial to his or her honor or reputation”. 19
2. Right of integrity. This is (1) the right to stop intentional modification of a work which would be prejudicial to the artist’s honor or reputation and (2) the right to stop the intentional and grossly negligent destruction of a work of “recognized stature”. 20 (As with the terms “honor” and “reputation”, see discussion at 19, the statute does not define “recognized stature”. Presumably, these questions are to be decided on a common-sensical basis, and depend on particular facts.)

Moral rights are additional to those included in a standard copyright. They remain with the artist even after he or she transfers not only the art itself but also the copyright. 21 The Visual Artists Rights Act applies to all the qualifying works created on or after June 1, 1991, and even to earlier works so long as the works are not sold by the artist until after that date. In no case, however, does it apply to damage or modification which occurred prior to that date. 22

1.3 Purpose of this paper

This paper examines these two bodies of new copyright provisions, particularly in light of fact patterns typical to daily architectural and engineering practice. Note, however, that copyright rules sometimes are somewhat contradictory and often are fact intensive. Deciding how any particular case should be decided under those rules should be done with similar sensitivity to the facts and the whole panoply of rules.

2. Who owns the protection and how do they keep it?

The copyright originally is owned by the author(s) of the work, but there are preconditions to an author’s practical ability to enforce those rights. Further, author must be vigilant to avoid losing the rights.

2.1 Who is the author?

Where one person creates a drawing there really is no issue, but joint participation is the norm for architectural works. Consider the following typical situations:

1. A design is undertaken by an architect who is paid by a project owner. The owner contributes ideas from time to time and makes final choices on acceptability of results.
2. Drawings are produced by a large firm and a number of employees have a hand in the final product.
3. Some of the plans are created by the principal architect, and others are created by his/her sub consultants. Together, all of the separate drawings form an integrated package.

Deciding who is the author in these situations is done through use of two rules, one for designs either by employees or independent contractors and one for joint venturers. Neither rule focuses on the training or state licensure as an architect or engineer.

Employee or independent contractor [examples 1 and 2]. The general rule for employee design is that the employer is the “author”. 23 The employee’s work product is then called a “work for hire”. 24 Accordingly, it is the architectural firm, rather than its associate architects, which holds the copyright in example 2. Likewise, a development company or design/build contractor owns the copyright to designs made by staff designers.  Note, however, that employment agreements can change this result for any particular case.
The result is different for designers who function as independent contractors (viz., individuals who have independent discretion over product and procedures), which is the norm for owner/architect contracts. This is true even where the project owner makes certain design choices or contributes sketches. 25 Accordingly, the architect is the holder of copyright in example 1. Since most architects are retained by owners as independent contractors, rather than being hired to be on the owner’s staff, it is normal for architects, rather than project owners, to own the copyright. This is more than a mild surprise to many owners. 26

A perhaps unintended result of the recent amendments is that (in contrast to employers and employees; see above) owners and architects may not be able to agree in advance to a different copyright ownership, or, at least, different designation of “authorship”. The court in MGB Homes v. Ameron Homes, Inc. 27 used this reasoning when rejecting claims that there was such an advance agreement covering “architectural drafting”.That the architect holds the copyright does not mean that the owner cannot build the building. Rather, it means that the owner’s ability to build depends upon the terms of any “license” granted him by the designer (something which should be covered by the design contract). 28 The terms of that license depend upon the precise language of the design contract. 29 See also § 2.4.

Joint works [example 3]. When a number of firms contribute to the final plans each shares in the copyright. “Joint works” are works which depend upon other works for utility, such as a set of plans consisting of architectural, structural and, say, electrical drawings. The normal rule for example 3 is that each contributing firm has an undivided interest in the copyright; each firm is the partner of the others as to the use of and profits from the design; and the drafters of the statutes perceived each to have the right to use the whole work, subject to an accounting to the others for any profits. 30

Just as architects commonly are independent contractors, drawings commonly are the product of a principal architect and sub consultants. Such an architect should consider the interests of sub consultants before permitting the plans to be built or reproduced. The architect should either pay his/her sub consultants some share of the royalties, or should endeavor to get the sub consultants to contract away their interests. (But see discussion at 27 as to whether an advance agreement would be enforceable.)

Another important application of this idea is to firms which themselves are partnerships. While there are surprisingly few cases on this question, the rule probably is that each partner has an interest in the copyright of any work created by his/her partner in the course of the partnership. 31 The result is that a partner will not be guilty of infringement of the partnership’s copyright, but (under state partnership law) would be responsible to account to his/her partners for any profits earned from that use.

Copyright laws also refer to “collective works”, 32 but that category has little application to construction. Each unit of a collective work can exist independently of the others. Where applicable, the rule on collective works gives the editor a copyright only to the collection, not the individual works. The editor can reprint the collection, but may not otherwise use the individual works. The authors of each contribution retain all other rights.

2.2 Registration

The author must register the copyright before commencing the trial phase of an infringement suit, except one by a visual artist enforcing his/her moral rights. Registration is not a precondition to the copyright itself. 33 Registration is done through the U.S. Copyright Office, a part of the Library of Congress. Expedited procedures are available for emergencies and the victim can register after the infringement and still bring suit.

In any case, authors are well advised to register promptly. Registration within five years of publication makes a prima fade case of the facts stated in the copyright notice (see discussion of “notice” in § 2.3) and, thus, the validity of the copyright. 34 (Most ways in which plans get circulated are not publication. 35) Further, obtaining statutory damages and/or attorneys’ fees is preconditioned on registration before the infringement of an unpublished work commences, and no later than three months after the publication of a published work. 36 Again, this precondition of registration does not apply to cases on visual artists’ moral rights.

2.3 Notice of claim to copyright

A copyright “notice” is a written claim to copyright protection which is placed on the work itself—e.g., the ubiquitous notices on book fly leafs. A written copyright notice used to be required before publication, but no more. 37 The change occurred on March 1, 1989. 38 Even the new statute, however, makes notice advisable, since it still protects the author from an “innocent infringement” defense.

Satisfactory notices will have (1) the traditional copyright symbol CD, ‘the word “copyright”, or the abbreviation “copr.”, (2) the first year of publication, and (3) the name of the copyright owner. 39 The note must be located so as to give reasonable warning. Regulations give examples of proper locations for various types of works, including technical drawings. For drawings, notice simply should be affixed to the front or “back”. 39.1 Where they go on buildings evidently is left to judgment, but, presumably, it would include the dedication plaque or cornerstone. 40

2.4 Transfer, expiration or loss of copyright

For works created after 1977, copyrights expire 70 years after the death of the last surviving author. 41 (As shown in the note, there are slightly different rules for “for hire” works.) Federal protection also was extended to works which were still unpublished as of January 1, 1978, but the duration of protection is different, i.e., generally 70 years from the author’s death, or December 31, 2002, whichever is later. 42  Before it expires, the author may transfer a copyright and even may lose it through certain acts or omissions. Transfers may be in toto or in part.  Intentional, express transfer. Any transfer of exclusive copyright rights requires a written document:

A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent. 43  One must look closely at the writing to determine exactly what rights are transferred and whether there are conditions. Conditions may be effective. 44 Transfers may be construed quite restrictively. 45

Implied transfer; non-exclusive license. The requirement of a writing applies only to the transfer of exclusive rights; oral and implied assignments are still possible where the right claimed by the assignee is a non-exclusive license, i.e., a right to use a work in common with others. 46  As with an express written transfer, however, the key is the assignee’s apparent intent, 47 drawn from various indicia. Note, however, that one should not infer from the mere purchase and ownership of plans the right to copy or build them. 48 The court in Effects Associates v. Cohen 49 found an implied, non-exclusive license where the author prepared and supplied the defendant video footage to be used in defendant’s film. The defendant failed to pay the full contract amount for the footage, but the court held that the parties did not intend to condition the license on full payment. The plaintiff there was found to have a breach of contract action, but no copyright infringement claim.

How much of a copyright is transferred? The answer to this question depends on the transfer agreement itself; all or part of the copyright can be transferred, so exactly what was transferred requires interpretation of the agreement. There are cases against defendants for using more of a protected work than he/she was authorized to use 50 and cases considering whether the defendant used the work in markets beyond those authorized. 51

Author’s loss of right to complain: misuse, waiver, estoppel, laches. The author may lose his/her right to complain about copying. While this technically does not give the copier rights, it does stop his/her exposure to the author; i.e., it creates a defense, not rights.

Misuse means that the copyright owner has conditioned the use of his/her work on the user not also employing a competing product. 51.1 Say, for example, that an architect insists that an espresso retailer use only that architect’s designs for all of its stores. The defendant user can exploit the fact that the copyright owner so misused his/her copyright in his/her dealing with other users. This defense lasts as long as the condition does.

Waiver means the intentional relinquishment of a known right. The defendant must prove some act by the author manifesting that state of mind. 52 Consider this example:

Developer engages Architect to prepare three standard home designs for use in a new subdivision. The design contract includes a provision conditioning the developer’s use of the plans on the Architect being the construction administrator. Midstream during construction, Developer has modest financial difficulties and is
unable to continue with Architect’s contract (although Developer intends to complete construction). They engage a settlement whereby Architect accepts $10,000 to terminate the remainder of the construction administration contract. Result: Architect has waived his rights to complain about the continued execution of the plans.

Estoppel refers to the defendant’s reasonable reliance upon the author’s acts or omissions. An author should be estopped from complaining of infringement where he/she has encouraged the very use he/she later wants to stop. This defense requires proof that the author knew of the use and that he/she acted in a way which caused the infringer to rely on its own authority. The infringer must be ignorant of the author’s real intent. 53 The author of plans for a prefabricated building was estopped from complaining about the incorporation of those plans into a solicitation in Cardinal Industries v. Anderson Parish Associates. 54 The Cardinal Industries court held, in effect, that the plaintiff/author could not position itself to bid (by getting its product specifications included in the solicitation) and remove the practical ability of anyone else to perform the work (by asserting a copyright in the resulting specifications). Likewise, an architect cannot complain that an owner is producing a derivative work without authority where the architect himself suggested the changes. 55 Consider this example:

Developer hires Architect for design of a commercial building. After design is complete, but before a construction contract is let, Developer files for bankruptcy protections. Hoping to see his plans constructed, and also hoping to receive income as the construction administrator (as was promised in the design contract), Architect encourages Investor to buy Developer’s land and plans, suggesting they are ready to be built but neglecting to mention any expectation to be paid to administer the project. Result: Architect likely will be estopped from complaining that Investor did not retain Architect as the administrator.

Laches means just taking too long to assert rights. Whether plaintiff is deemed to have done so depends on the facts. 56 Consider this example:

Architect designed for Owner a unique commercial building which was constructed in New York City. Owner later built an identical building in Philadelphia, using the same plans. By reading newspaper accounts, Architect was aware of Owner’s Philadelphia project before, during and after it was built. After the Philadelphia building was completed and fully leased, Architect demands royalties. Result: Architect’s claim is foreclosed by laches.

Later assignment by assignee may not expand rights. Finally, whatever rights the assignee gets should not grow because he/she assigns them to someone else. In Schuchart & Associates v. Solo Serve, 57 for example, the owner unsuccessfully tried to assign more rights to its financing bank than the owner was given by the designer.
The same result should prevail when the assignment is involuntary, e.g., bankruptcy. While a bankruptcy court may reject continuing contracts, and thus stop the bankrupt’s responsibilities under such a contract, so too would it stop the estate’s rights under that contract. 58 Alternatively, an assumption or continuation of such a contract by the bankrupt entity is proper only if the entity abides by the original terms of the contract. 59 Thereafter, the estate can assign only those contracts it has assumed, and in the form in which it has assumed them. 60

Moral rights. Moral rights terminate on the death of the author. They can be waived, but cannot be transferred. 61 (In effect, then, these rights exist in the author(s) or in no one.) The new statute addresses explicit waivers (only) and places over them fairly strict requirements: they must identify the work, specify the uses permitted and be signed by the author. 62 Where a work is”incorporated in or made part of” a building, the artist’s consent to the installation of the work also may waive his/her right to complain about destruction or modification of the work occasioned by its removal. Like the proof requirements for a general waiver of moral rights, however, a consent dated on or after June 1, 1991, will be effective only if written, if signed by both the building owner and the artist, and if it expressly states that removal may hurt or destroy the work. 63As with other key terms, the phrase “incorporated in or made a part of” is not defined by the new statute.

2.5 Government contracts

Federal government design contracts likely will have a standard clause entitled “Rights in Data—Special Works”. 64 While the government is exposed, as a general matter, to suits for copyright infringement (at least for monetary damages), 65 this clause departs from the standard copyright rules in various ways:

1. Although implying that the government agrees that the designer is the author and thus the original owner of the copyright, the clause purports to give the contracting officer the power to dictate unilaterally a transfer of the copyright to the government:
… The Contracting Officer may direct the Contractor [i.e., Architect] to establish, or authorize the establishment of, claim to copyright in such data and to assign, or obtain the assignment of, such copyright to the Government or its designated assignee. 66
2. The government purports to reserve the right to prohibit the designer from affixing notices and registering the copyright. 67
3. The designer is said to grant the government a very broad non-exclusive license to use the plans indefinitely worldwide, to prepare derivative works, and to distribute copies to the public. 68

There is good reason to doubt the enforceability of clause (1), at least if it is invoked at the outset of the project, since that would clash with the notion that “special commissioning” agreements should not be made for architectural works or graphic works. (See discussion at 27.)

Since notice and registration are not preconditions to the existence or ownership of a copyright, clause (2) does not affect, technically, the copyright; but it obviously eliminates the designer’s ability to enforce his/her rights (i.e., almost the same thing). If the government uses this clause as part of a demand that the designer assign its rights before starting work, its enforceability is as questionable as the first clause’s.

As to clause (3), copyright laws do not prohibit advanced non-exclusive licensure, and, indeed, they are commonplace. (That, after all, is normally what an owner gets in consideration of its promise to pay the designer.) The questions for any designer entering such a design contract, then, is whether giving up such a broad license effectively eliminates the value of the copyright to the architect and what exposure the architect has if the design is executed in some different location.

At the least, use of any of these clauses logically should increase the price of design service to the government.

4. Copying and other prohibited acts

3.1 Copyright

The acts which are prohibited by copyright laws include more than precise duplication. Making inexact copies also is covered, so long as there is a substantial similarity. 69 As Sturdza v. United Arab Emirates shows (and our discussion in § 1.1 suggests), courts apply this test to architectural designs by first removing from consideration elements which are necessary for a particular function or are common architectural forms (e.g., domes and “Islamic patterns”), although the way in which the common forms are expressed in the two designs remains a valid inquiry. Likewise, copying only part of the work may be prohibited. 70 Since direct proof of copying is rare, courts accept a combination of (1) similarity of appearance between the original and the copy, taken from the point of view of the average lay observer, and (2) proof of the defendant’s access to the original as circumstantial proof of copying by the defendant. 71 Proof of “access” requires only evidence of opportunity to observe the work, not also that the opportunity was exploited. 72 These can be viewed as reciprocating elements; if one value is particularly high (as, say, a copy which is virtually identical to the original), the other is less important, or, maybe, irrelevant. 73 The defendant, however, can escape liability in a circumstantial evidence case by proving independent creation, i.e., that the similarities are just coincidental. 74 Translations or adaptations of the work, so-called “derivative works”, also are prohibited. 75 Derivative works can be modifications to the substance of the work, as by expanding or multiplying certain features, or by the use of a different medium, as with a movie based upon a book. The answer to the closely related question of whether there are special rules for electronic data bases is “no”.

As noted in New York Times Co. V. Tasini, this not only means that an author (barring any other defenses) is protected from having his/her work reproduced on web sites without authority, but also that the sort of individual file formatting which is peculiar to electronic data bases can turn owners of collective rights copyrights into infringers.

In the Tasini case, the defendants were newspapers who held collective works copyrights to newspaper editions containing various individual articles, some of which were freelance articles forwhich the individual copyright was reserved by the freelance author. Tasini held that the newspapers violated the limits of their collective works copyright by tendering their editions to Nexis since it was inevitable that Nexis would publish them in an individual file format. 76

“Secondary liability” is the name for the principle spreading responsibility for an infringement beyond the immediate infringer. Consider, for example, the well known situation of Napster which was found liable for its contribution to infringement by users of its system for sharing music. There are two forms of secondary liability: “contributory infringement” (which requires proof that the secondary infringer knew of the infringement and facilitated it by inducing it or contributing to it in some material way) and “vicarious infringement” (which requires proof that the secondary defendant had the right to control the infringing conduct and a direct financial stake in it). 76.1

Provided that it was legitimately obtained, the owner of a copy does not violate copyright merely by selling that copy; this is the reason why sale of a house, by itself, has no copyright significance. 76.2

Architectural works, however, do have less protection than other works. Presumably as a concession to practicality, photographs are not prohibited so long as the building is “ordinarily visible” from a public place. 77 Further, the building owner is expressly empowered to renovate and demolish the building, 78 whereas the former act otherwise might be prohibited as a derivative work.

Finally, these protections do not extend to “individual standard features” such as typical windows and doors. Related administrative rules also exclude the “standard configuration of spaces”, although that exclusion comes very close to contradicting the statute’s explicit protection for “the arrangement and composition of spaces and elements”. 79

A final note on prohibited copying: the primary focus is on commercial use. Limited copying done to teach, criticize, report on news or satirize is okay. 80 Accordingly, such things as newspaper accounts of new buildings and classroom lectures on architectural style are protected. As indicated by the note, this is the “fair use” defense.

3.2 Moral rights

As noted above (see discussion at § 1.2) visual artists enjoy protections against the destruction of their works and improved protections against alterations of them. Obviously, barring an enforceable waiver or consent, even the owner of the work of art may breach those rights by destroying or altering the work.
Of particular importance to this paper is the special treatment given to art which has become part of a building:

If removal cannot be done without covered damage to or destruction of covered art, then, barring permission by the artist (see discussion at § 2.4), removal of the art per se violates the artist’s moral rights and exposes the owner and others to damages. 81
If there is some way to remove a work without covered damage or destruction of the work, then the owner must not damage or destroy it unless he/she gives the artist reasonable opportunity to remove it. 82

The practical consequence of these provisions should be appreciated: in certain instances, demolition and remodel projects can be stymied by artists. Further,
given the deliberately vague or at least flexible terminology used by the new statute (see discussion at §§ 1.2 and 2.4), deciding whether any particular artist is so endowed may require a lawsuit. While it is clear that removals of works from buildings in which they have been incorporated will not infringe moral rights necessarily, 83 there still is room for an artist to argue that his/her artistic integrity rights in a particular work—e.g., one specially commissioned for some particularly exposed and/or unique location—inherently would be damaged by any removal, regardless of whether removal promises physical damage-to the work.

Finally, it is not necessary that the owner of the building have been involved in, or to even have been aware of, the installation of the art. The installation presumably cannot result from a trespass or completely unauthorized use of the building, but sufficient authority to install a work can be given by a tenant unrelated to the landlord. 84

5. Sanctions for infringement

The 1990 amendments did not change the remedies available for civil infringement. They are: actual monetary damages, statutory damages, injunction, and recovery of costs, including attorneys’ fees. There also are criminal sanctions for willful infringement for commercial gain.

Injunction. The statute expressly anticipates injunctions, presumably in recognition of the common difficulty of quantifying monetary damages in these cases:

Any court having jurisdiction of a civil action arising under this title may … grant temporary and final injunctions on such terms as it may deem reasonable to protect or restrain infringement of the copyright. 85

Injunctions may be granted in addition to monetary damages so long as there is good reason to think violations will continue notwithstanding a monetary judgment for past violations. 86 Injunctions also are available for threatened damage to the rights protected by the Visual Artists Rights Act. 87

Preliminary relief should be easier to get in copyright cases than elsewhere; harm (the likeliness of which normally must be shown by anyone trying to get a preliminary injunction) commonly is presumed from prima facie proof of copyright violation. 88

Actual damages and profits. The copyright owner may get actual damages plus the infringer’s profits. 89 The victim’s “actual damages” are the monies it would have received but for the stealth of the defendant, such as the victim’s normal charge for the use of its plans, 90 lost profits which they would have received from spin-off contracts, e.g., serialization deals, 91 damages for harm to reputation, 92 and dilution of the value of the copyright. 93 Plaintiffs also can get the defendant’s “profits” from the use of the work where they are not merely redundant of the plaintiff’s loss of income. 94

Special evidentiary rules enhance this recovery. To prove the loss, the victim need only show that it suffered a reduction of gross receipts during the period of infringement and a reasonable probability that the reduction is connected to the infringement. It is then up to the defendant to show something else caused the loss. 95 Similarly, to prove defendant’s profits, plaintiff need only show defendant’s gross receipts from the copies; defendant then must prove its costs. 96 It is possible for “lost profits” to be applied as a measure of damages even if the infringer has not yet sold the infringing article.

In Christopher Phelps & Assocs. v. Galloway, 96.1 for example, the court agreed with the proposition (but did not award damages because of the facts in that case) that a homeowner who uses a house design without authority to do so might be charged with “lost profits” in the form of the difference between his/her cost to build and the value of the completed home. This is of particular importance to a person who uses his/her own labor for all or part of the construction.
Statutory damages. Situations which do not allow sufficient proof of actual damages can be resolved by use of a statutory schedule of damages (assuming registration; see § 2.2). The top of this schedule is $150,000 (or $30,000 if plaintiff cannot show that infringement was willful). 97

Attorneys’ fees and other costs of litigation. The court also may award costs, including attorneys’ fees, to the prevailing party. This sometimes includes expert witness fees. 98 While the standard for the awarding of fees and costs is theoretically the same for plaintiffs as defendants, 99 there actually is one more barrier for plaintiffs than for defendants in that plaintiffs also must register the copyright before the infringement to enable the recovery of attorneys’ fees. (See discussion at § 2.2.)

It is more likely that fees will be awarded if the infringement was deliberate and even more likely yet if litigation costs were enhanced by the defendant’s obstreperous conduct. 100 One court awarded fees merely because the plaintiff was a small business and the monetary damages also were not large, saying that any other result would discourage small businesses from trying to enforce copyright protections. 101

Class

1 Title 17 USC. See particularly 17 USC § 106. One determines whether potentially relevant state law claims are pre-empted by federal copyright by a functional test which, in the 9th Circuit at least, has two elements: (1) whether the subject matter of the state claims fall within that of federal copyright (i.e., work of authorship fixed in a tangible medium) and (2) whether the rights protected by the state claims are the same as those protected by copyright (e.g., right to reproduce the work). The fact that the state law claim has additional or some different elements is not dispositive (but probably is necessary). Laws v. Sony Music Entertainment, Inc., 448 F.3d 1134 (9th Cir. 2006) (state right of publicity claim against reproduction of plaintiff’s voice singing copyrighted song preempted). The prior federal law was The Copyright Act of 1909. Since The Copyright Act of 1976 (which became effective in 1978), copyright has been the exclusive province of federal law. The 1976 Act also has a retroactive effect in that it applies to unpublished plans (works not “in the public domain”) created before 1978—but the duration of protection is different. 17 USC 5 303, See discussion at § 2.4. Note also that ownership of the copyright is distinct from the ownership of the work itself, 17 USC § 202, so the owner of house plans does not necessarily have the right to build them nor to replicate the house. Likewise, however, the owner of a house cannot be held to have violated copyright merely by selling the house. Christopher Phelps & Associates, LLC v. Galloway, 477 F.3d 128 (4th Cir. 2007) (discussing the “first sale” doctrine of 17 USC § 109(a)).

2 17 USC § 102(a). “Original” means “independently created” (rather than “necessarily novel” or even “good”), Situation Management Systems, Inc. v. ASP Consulting LLC, 560 F.3d 53 (1st Cir. 2009), but there also has to be at least some creativity. Sparaco v. Lawler, Matusky, Skelly, Engineers LLP, 303 F.3d 460 (2d Cir. 2002) (map not protected, but site plan is). CSM Investors, Inc. v. Everest Development. Ltd., 840 F. Supp, 1304 (D. Minn. 1994) (single-story office building qualifies for copyright protection even though the design was dictated by the conditions of the lot and zoning restrictions). Whether a list of data or other compilation is sufficiently original depends on the creativity involved in selecting and arranging the data. BUC Intern. Corp. v. International Yacht Council Ltd., 489 F.3d 1129 (11th Cir. 2007). This should be compared to what is not covered by copyright, viz., “any idea, procedure, process, system, method of operation … concept [or] principle….” 17 USC § 102(b). Baker v. Selden, 101 U.S. 99 (1879) (no copyright in accounting system introduced by plaintiff in a textbook). The textual description of such a system still can be protected by copyright. Situation Management System (2009). The more faint the copy, the more likely that what is being copied is only the non-copyrightable idea underlying the original work. Oravec v. Sunny Isles Luxury Ventures, L.C., , 527 F.3d 1218 (11th Cir. 2008); 1 Petry, Copyright Law & Practice p. 320, citing Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960). A related doctrine (the so-called “merger” doctrine) provides that certain works are so inherently descriptive of the underlying idea as to not allow any copyright, by definition. This latter doctrine would work to leave unprotected (and thus allow copying of) lists of steps needed to perform some productive process—as perhaps with the accounting system in Baker (1879). Patry at 322. An interesting, but unsuccessful, attempt to apply the merger doctrine to avoid copyright protection is described in Danielson v. Winchester-Conant Properties, 322 F.3d 26 (1st Cir. 2003) where the design for a planned group of condominiums was attached to a public variance as the description of a restrictive covenant. The court resisted application of the doctrine, saying that there were ways to develop the property without using those plans, although one such way mentioned by the court seems of little comfort to owners: getting a sufficient majority of voters at a town meeting. Computer program menus may not be protected by copyright laws since they are “methods of operation” in the sense of instructions to make the program operate. Lotus Development Corp. v. Borland Intern. Inc., 49 F.3d 807 (1st Cir. 1995), aff’d, 133 L. Ed. 2d 610.
Slogans and symbols also are not protected under copyright. Protections for some of these things may be had through other means, such as trademark and patent. Eales v. Environmental Lifestyles, Inc., 958 F.2d 876 (9th Cir. 1992); Project Development Group, Inc. v. OH Materials Corp., 766 F. Supp. 1348 (W.D. Pa. 1991) (copyright protection is not implicated in prime contractor’s lifting of subcontractors bid description of intended procedure for removing asbestos); Taco Cabana Intern., Inc. v. Two Pesos, Inc., 932 F.2d 1113 (5th Cir, 1991) (protection of unique appearance of restaurant chain under rubric of “trade dress”); Robert R. Jones Associates, Inc., v. Nino Homes, 858 F.2d 274 (6th Cir. 1988). Compare Rock and Roll Hall of Fame and Museum, Inc., v. Gentile Productions, 134 F.3d 749 (6th Or. 1998) (I.M. Pei’s design for a new museum is not protectable (at least here) as a trademark because there is insufficient proof of an identification between the image—which is unquestionably unique—and any product or service by the museum). There is some overlap between patent and copyright protections in that there can be a patent for a design. See Schnadig Corp. v. Gaines Mfg. Co., Inc., 620 F.2d 1166 (6th cir. 1980). Other federal protections are those for trade secrets—e.g., The Economic Espionage Act, 18 USC ch 90—and unfair trade practices. See Johnson v. Jones, 149 F.3cI494 (6th Cir. 1998) (architect liable to original architect under Lanham Act for removing signature block and re-issuing drawings as his own).

3 17 USC §§ 101, 102. This protects the graphic representation of the design. It also may protect the format of the presentation. Kunycia v. Melville Realty Co., 755 F. Supp. 566 (S.D.N.Y. 1990). See discussion at 12. “Architectural plans” were not mentioned explicitly in this list until the 1988 amendments to the copyright statutes. See Pub. L. 100-568 § 4(a)(1)(A). This, however, did not stop federal protection for them before that under the basic 1976 Act and even predecessor federal codes. See 18 Am. Jur. 2d Copyright & Literary Property g 35; Robert R. Jones.
4 Richmond Homes Management Inc. v. Raintree Inc., 862 F. Supp. 1517, 1524 (W.D. Va. 1994). One exception to this was where the structure could qualify as a work of art, such as the Eiffel Tower. Richmond Homes.

5 Authorities saying “yes” include Eales and Lifschitz & Strickland, “Copyright of Construction Plans and Structures,” 92-2 Constr. Briefings, Sept. 1992 (Fed. Pub.). See also Robert R. Jones. Those saying “no” include Schuchart & Associates, Professional Engineers, Inc. v. Solo Serve Corp., 540 F. Supp. 928, 941 (W.D. Tex. 1982) and Note, 16 Constr. Contr. § 38. See Demetriades v, Kaufman, 680 F. Supp. 658 (S.D.N.Y. 1988) (stating the use of unauthorized copies of plans to build the building was inappropriate, but refusing to enjoin construction evidently because there were legitimate ways in which it could be forwarded once the purloined plans were impounded).

6 Demetriades. See also “Reconstructing Copyright Law, by Design”, The Washington Post (3/28/90).

7 1990 USCCANS p. 6950, et seq.; Richmond Homes; Value Group Inc. v. Mendham Lake Estates, L.P., 800 F. Supp. 1228 (D.N.J. 1992). See, generally, Tanenbaum, “Copyright Protection Extended to Buildings,” The National Law Journal (2/24/92).

8 17 USC § 101; Richmond Homes (copyright for assembly, not for parts).

9 Guillot-Vogt Associates Inc. v. Holly & Smith, 848 F. Supp. 682 (E.D. La. 1994). The Architectural Works Protection Act protects both the building and the plans. Hunt v. Pasternack, 192 F.3d 877 (9th Cir. 1999) (overruling in part Eales).

10 “Original” means creative and independent, rather than novel or unique. Guillot-Vogt. 18 Am. Jur. 2d §§ 18-19. This does not mean that there must be much originality or creativity. Richmond Homes; The Value Group. Nor does it suggest that the court will be doing any sort of critical review of the artistic merits of the work; copyright goes just as much to advertisements as to fine art. Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903). On the other hand, site plans which merely record existing conditions have run afoul of the de minimus creativity requirement. See Sparaco v. Lawler, Matusky, Skelly Engineers, LLP, 303 F.3d 460 (2d Cir. 2002). While a derivative work might be registered separately from its base document, the new features must be more than trivial changes to qualify it for such treatment. Eden Toys v. Florelee Undergarment Co., Inc., 697 F.2d 27, 34 (2d Cir. 1992). See discussion at § 3.1.

11 The features of the design which the author tries to protect cannot be functionally required (as where there is no other way to do a task or display a design). Robert R. Jones; The Value Group (useful articles are something of “intrinsic utilitarian function”; a window is not copyrightable, but the design of a window frame may be); Guillot-Vogt (mechanical/electrical engineering drawings for project to renovate state building protected). Non-functionality is part of the statutory definition of “graphic” work, but not explicitly so for “architectural work”. Legislative notes, however, say that Congress intended the new category also to be affected by that idea. Compare 17 USC § 101 with 1990 USCCANS p. 6951-2. But see Richmond Homes; T-Peg, Inc. v. Vermont Timber Works, Inc., 459 F.3d 97 (1st Cir. 2006). Ironically, the court in Robert R. Jones suggests one reason why protections for buildings were so long in coming: it declines to expand the protections to buildings on the basis that they all are inherently utilitarian. The non-protection of functional elements is related to the inapplicability of copyright to ideas. [pdf] ILOG, Inc. v. Bell Logic, LLC, 181 F. Supp. 2d 3 (D. Mass. 2002). See also Sparaco (site plan at issue was more than mere sketch of potential configuration of future improvements and so qualified for copyright protection).

12 17 USC §§ 101, 102(a); Richmond Homes. The protection also may go to the way drawings are presented, i.e., their format. Kunycia. “Format”, for this purpose, means: layout of the project, arrangement of detailed drawings on the sheet, the style and perspective of the drawings, the language of the notes, and the method of presenting the notes.

13 Pub. L. 101-650 § 706. Protection for unbuilt, unpublished designs ends on December 31, 2002, unless the work is built by then. Note, however, that an author now may refresh an earlier copyright by creating a derivative work. A December 1, 1990, (or later) creation date for any such derivative work will bring the entire work (both original and new parts) within the operation of the 1990 Act. Richmond Homes.

14 17 USC § 101. Where the author creates a number of versions of one work, each version may be a separate work for copyright purposes.

15 Cf. Bryce & Palazzola Architects & Associates, Inc. v. A.M.E. Group, Inc., 865 F. Supp. 401 (E.D. Mich. 1994) (question of fact whether there was sufficient work completed to constitute “construction”).
16 57 Fed. Reg. Ill 45,307 (October 1, 1992).

16.1 See Patriot Homes, Inc. v. Forest River Housing, Inc., 548 F. Supp. 2d 647 (N.D. Incl. 2008) (noting regulations provide gloss that a building must be permanent and deciding that a modular home is sufficiently permanent).

17 “Visual art” for this purpose is what commonly is considered fine art, i.e., painting, drawing and sculpture. 17 USC § 101. It does not include technical drawings (and, thus, architectural plans) or models, but probably does include murals. 1990 USCCANS p. 6921. (Congress expects courts to use common sense and generally accepted standards in determining whether any particular work qualifies.) Note that the latter authority says that “modelings” are “visual art”, but that comment probably is only meant to refer to models of sculpture, not buildings (i.e., architects’ typical three-dimensional displays). The Visual Artists Rights Act has been codified principally at 17 USC §§ 106A and 113. It does not apply at all if the work was made for hire. 17 USC § 101.

18 See 1990 USCCANS p. 6915.

19 17 USC §§ 106A(1) and (2). Neither “honor” nor “reputation” are defined by the statute. Congressional reports reveal the legislature’s intent that the issue be handled on a factual and common-sensical basis by reference to the stature of the work, the stature of the artist, and the type of modification. See 1990 USCCANS p. 6925. The court in Carter v. Helmsley-Spear, Inc., 861 F. Supp. 303 (S.D.N.Y. 1994), rec’d on other grounds, 71 F.3d 77 (2d Cir. 1995) evidently based its finding of damage to reputation on the fact that the destruction of the work by itself would be embarrassing to the artist.

20 17 USC § 106A(a)(3). For a case appearing to revel in the latitude given it to define “recognized stature”, see Carter. There, steel contraptions welded to the lobby walls of a building were declared to be qualified because of expert testimony based on personal impressions of the work gleaned from contact which appears in all cases to have been incident solely to the lawsuit—a result which most likely was not in the mind of the draftsperson.

21 17 USC § 106A(b) and (e)(2).

22 Pub, L. 101-650 § 610; 17 USC § 106A, n.

23 17 USC § 201(b). At least under the 1909 Act, works created before the employment relationship existed still could be construed to be “works for hire”. See Wilkes v. Rhino Records, Inc., 133 F.3d 931 (9th Cir. 1997) (festival artwork created by festival’s art director to audition for job was motivated by the job and so is “work for hire”). See also Siegel v. National Periodical Publications, Inc., 508 F.2d 909 (2d Cir. 1974) (work fully developed before employment is not a “work for hire” because it was not done at the insistence of the employer and was not motivated by the job).

24 17 USC § 201(b). Whether the author was an employee is a factual question, the answer to which depends on a long series of issues, some dealing with the typical question of whether the author had much control. See Carter, 71 F.3d 77 (sculptor held to be an employee); Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989) (sculptor held to be independent contractor). This also is a critical question for the protection of moral rights under The Visual Artists Rights Act since moral rights are not recognized in works for hire (as are produced by employees). Carter.

25 Meltzer v. Zoller, 520 F. Supp. 847 (D.N.J. 1981) (owner); M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486 (11th Cir. 1990) (contractor). The prior (1909) copyright code was interpreted more favorably to those upon whose “instance and expense” the work was created. Twentieth Century Fox Film Corp. v. Entertainment Distributing, 429 F. 3d 869 (9th Cir. 2005).

26 See generally, McKee “Stop Thief”, Architecture, April 1997. Formerly, the presumption was that the project owner was also the copyright owner even of plans authored by independent consultants.

27 903 F.2d 1486 (11th Cir. 1990). Accord, Warren Freedenfeld Associates, Inc. v. McTigue, 531 F.3d 38 (1st Cir. 2008). See also CCNV (sculpture created for non-profit group not “work for hire”). But see Arthur Rutenberg Homes, Inc. v. Drew Homes, Inc.,29 F.3d 1529 (11th Cir. 1994); 3 Nimmer, Nimmer on Copyright, § 10.03[A] pp. 10-37. Rutenberg says that an oral transfer at the time design work starts can be perfected by a post-design writing, but there is no indication in the decision that the parties discussed that issue in their respective arguments. Nimmer discusses assignments of copyright rights (see discussion at § 2.4) as something which includes the prospect of assignment of rights to future works. Cases cited there, however, do not address architectural works or technical drawings, and also do not consider the specific problem created by the limited definition of “work for hire” in the 1976 Act. (Indeed, all of the cited cases predate the 1976 Act.) Some of those cases, however, deal with subjects which do fall within special categories which now allow for commissioning agreements—reducing their value as authority for the proposition that such advance agreements can affect architectural works and technical drawings. Finally, one of Nimmer’s cases—Buck v. Virgo, 22 F. Supp. 156 (W.D.N.Y. 1938) — actually says that, while licenses may be granted by the author before a work is created, that is not true for legal ownership of the copyright itself.

28 Indeed, standard AIA contract forms do leave the copyright with the architect and give owners and contractors limited licenses. The standard contract, AIA Document B141 (1997), says this about the relationship between the owner and designer at 11 1.3.2.1:
Drawings, specifications and other documents, including those in electronic form,
prepared by the Architect and the Architect’s consultants are Instruments of Service for use solely with respect to this Project. The Architect and the Architect’s
consultants shall be deemed the authors and owners of their respective Instruments of Service and shall retain all common law, statutory and other reserved rights, including copyrights.
The standard construction contract general conditions, AIA Document A201 (1997), have this to say about the relationship between the owner, contractor and architect at 11 1.6.1:
The Drawings, Specifications and other documents, including those in electronic form, prepared by the Architect and the Architect’s consultants are Instruments of Service through which the Work to be executed by the Contractor is described. The Contractor may retain one record set. Neither the Contractor nor any Subcontractor, Sub-subcontractor or material or equipment supplier shall own or claim a copyright in the Drawings, Specifications and other documents prepared by the Architect or the Architect’s consultants, and unless otherwise indicated, the Architect and the Architect’s consultants shall be deemed the authors of them and will retain all common law, statutory and other reserved rights, in addition to the copyrights. All copies of Instruments of Service, except the Contractor’s record set, shall be returned or suitably accounted for to the Architect, on request, upon completion of the Work.
The Drawings, Specifications and other documents prepared by the Architect and the Architect’s consultants, and copies thereof furnished to the Contractor, are for use solely with respect to this Project. They are not to be used by the Contractor or any Subcontractor, Sub-subcontractor or material or equipment supplier on other projects or for additions to this Project outside the scope of the Work without the specific written consent of the Owner, Architect, and the Architect’s consultants. The Contractor, Subcontractors, Sub-subcontractors and material or equipment suppliers are authorized to use and reproduce applicable portions of the Drawings, Specifications and other documents prepared by the Architect and the Architect’s consultants appropriate to and for use in the execution of their Work under the Contract Documents. All copies made under this authorization shall bear the statutory copyright notice, if any, shown on the Drawings, Specifications and other documents prepared by the Architect and the Architect’s consultants. Submittal or distribution to meet official regulatory requirements or for other purposes in connection with this Project is not to be construed as publication in derogation of the Architect’s or Architect’s consultants’ copyrights or other reserved rights.

29 Joseph L. Legat Architects, P.C. v. U.S. Development Corp., 601 F. Supp. 673 (N.D. Ill. 1985). See also Eales. Unless these terms expressly include the right to assign the license, there is no such right. Gardner v. Nike, Inc., 279 F.3d 774 (9th Cir. 2002).

30 See 17 USC § 201(a) note; Respect v. Committee on Status of Women, 815 F. Supp. 1112, 1119 (N.D. Ill. 1993); Edward B. Marks Music Corporation v. Vogel Music, 42 F. Supp. 859 (S.D.N.Y. 1942). Failing evidence that the joint authors intended to divide rights differently, each gets an equal share. Sweet Music, Inc. v. Melrose Music Corp., 189 F. Supp. 655 (D.C. Cal. 1960). For a discussion of conflicting tests for determining whether a party actually is a joint author, see Berman v. Johnson, 518 F. Supp. 2d 791 (F.D. Va. 2007). See also Respect at 1119-20 (the intent of principal author that the total work is interdependent is the key).

31 Oddo v. Reis, 743 F.2cl 630 (9th. Cir. 1984). Oddo applied California general partnership law to copyright ownership, considering one of the copyrights in this case as an asset of the partnership. The defendant partner, however, was held responsible for infringement of a copyright the court found to be held by the plaintiff partner individually, viz., magazine articles the plaintiff prepared before the partnership was formed.

32 See 17 USC § 201(c); New York Times Co. v. Tasini, 533 U.S. 483 (2001).

33 See 17 USC § 411(a). Registration is retroactive to the date of the Register’s receipt of a full and proper application. Accordingly, some authorities have found that it only is necessary that there be an application for a registration before the plaintiff file its suit. See Nimmer § 7.16[B] [1] [a]. Cf., Dielsi v. Falk, 916 F. Supp. 985 (C.D. Cal. 1996). Nimmer refers to other cases which only require that the registration, whenever it was applied for, be in place by the time of the trial.

34 17 USC § 410(c). See Foreign Car Parts, Inc. of New England v. Auto World, Inc., 366 F. Supp. 977 (N.D. Pa. 1973).

35 Publication is the distribution of copies to the public in general. U.S. Copyright Office, “Circular 1,” p. 3 (1992). But see Letter Edged in Black Press, Inc. v. Public Bldg. Commission of Chicago, 320 F. Supp. 1303 (N.D. Ill. 1970) (maquette published when exposed to publicity photos). Circulation of plans to contractors or city building departments for bidding is not publication. Schuchart. So too for drawings used as the basis for restrictive covenants. Danielson. Submission of design proposals to a prospective client is not publication. MacMillan Company v. IVOW Corp., 495 F. Supp. 1134 (D. Vt. 1980). But see, De Silva Constr.Corp. v. Herrald, 213 F. Supp. 184 (M.D. Fla. 1962) (submitting plans to city building department is publication). Courts have differed on whether constructing the building constitutes publication of the plans. Compare Seay v. Vialpando, 567 P.2d 285 (Wyo. 1977) and Nucor Corp. v. Tennes, see Forging Steel Service, Inc., 476 F.2d 386 (8th Cir. 1973) (no) with Ballard H.T. Kirk & Associates, Inc. v. Poston, 293 N.E.2d 102 (Ohio Ct. App. 1972) (yes). Since there traditionally was a large distinction between protection for plans and that for buildings, logically the execution of the plans should not constitute publication. Seay. The Copyright Office regulations on registration have a curious compromise that construction of multiple copies of a building will constitute publication of the design, but a single venture will not. See 37 CFR § 202.11(c)(5). Note that the language of the 1990 amendments suggest that there is a difference between publication and building the building in that it stops protections for designs neither built nor published as of a certain date. See § 1.1.

36 17 USC § 412. See Schuchart (no statutory damages for early infringement of engineering drawings); Aitken, Hazen, Hoffman, Miller, P.C. v. Empire Const. Co., 542 F. Supp. 252 (D. Neb. 1982) (no attorneys’ fees for infringement of unpublished architectural drawings before their registration). See also discussion at § 3. This creates a two-tiered time limit—one for published and one for unpublished works.

37 Danielson, 17 USC §§ 401(a), 405.

38 See U.S. Copyright Office Circular 1 at 4.

39 17 USC § 401(b).

39.1 See 37 CFR § 201.20(1) (1).

40 Cf. Lifschitz St Strickland p. 7. Copyright Office regulations do address technical drawings which are manifested in three dimensional copies. Notice for such three dimensional copies are to be “fixed directly [and] … durably … to any visible portion of the work….” 37 CFR § 201.20(i) (2).

41 17 USC § 302(a). Note, however, that protection for a work for hire has a different length: either 95 years from the publication date or 120 years from the date of its creation, whichever is shorter.

42 17 USC § 303. Even longer protection could be secured by publishing the work before December 31, 2002; then the copyright is extended until December 31, 2047. This is important to a firm’s portfolio of plans for past projects. Assuming the construction of a building does not constitute publication of the plans, see discussion at § 2.2, copyright protection under the 1976 Act would be available even for drawings of projects long since completed.

43 17 USC § 204(a). The document must state terms and be signed. Lyrick Studios, Inc. v. Big Idea Productions, Inc., 420 F. 3d 388 (5th Cir. 2005).

44 Eales.

45 See, e.g., Cassway v. Chelsea Historic Prop., 1993 U.S. Dist. LEXIS 5329 (E.D. Pa.) (giving owner right to build plans may not also give owner right to alter them); McCormick v. Amir Const. Inc., 279 Fed. Appx. 470 (9th Cir. 2008) (design contract which reserved copyright in architect but also said that the plans were for use only on the owner’s project did not give the owners an exclusive license, but rather was a covenant by architect not to reuse the plans).

46 Asset Marketing v. Gagnon, 542 F.3cI748 (9th Cir. 2008) (implied license to use and modify computer program created by consultant at company request). See MacLean Associates, Inc. v. wm. M. Mercer-Meidinger–Hansen, Inc., 952 F.2d 769 (3d Cir. 1991); Nimmer at 10-38.

47 Wilchombe v. Teevee Toons, Inc., 555 F.3d 949 (11th Cir. 2009) (“implied nonexclusive license is created when one party creates a work at another party’s request and hands it over, intending[objectively determined] that the other party copy and distribute it”); N.A.D.A. Services Corp.v. Business Data of Virginia, Inc., 651 F. Supp. 44, 49 (E.D. Va. 1986) (no implied license where owner told user that owner was starting to copyright work); Foreign Car Parts v. Auto World, 366 F. Supp. 977, 980 (N.D. Pa. 1973) (distributor did not have implied license to republish manufacturer’s photographs supplied with plaintiff’s brochures because of cautionary language in cover letter); Key Map, Inc. v. Pruitt, 470 F. Supp. 33 (S.D. Tex. 1978) (county defendant found to have a license to mark and copy limited numbers of maps because author sold the maps to the county with a suggestion that it use them to show fire district boundaries).

48 17 USC § 202 (“ownership of a copyright … is distinct from ownership of any material object in which the work is embodied”). Eiben v. A. Epstein & Sons Intern, Inc., 57 F. Supp. 2d 607 (N.D. Ill. 1999) (owner’s license provided by original architectural contract to hold reproducible plans of completed building for use and occupancy allows for use of the plans in king bids for subsequent project to alter interiors of the building even though the design contract also prohibited the use of the plans for adding to the building itself). See MacLean (cannot imply license to use just from transferring computer software, but transfer is a factor in determining intent).

49 90 F.2d 555 (9th Cir. 1990).

50 See Love v. Kwitny, 706 F. Supp. 1123 (S.D.N.Y. 1989) (defendant quoted more extensively than authorized from plaintiff’s paper). Oddo (defendant had the right to publish a book, but not to supplement and change it).

51 See Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983) (painter may have retained rights to exhibit a painting everywhere except in conjunction with plaintiff’s contest, for which painter prepared and submitted the painting). Accord, MacLean. See also 29.

51.1 Practice Management Information Corp. v. American Medical Assoc., 121 F.3d 516 (9th Cir. 1997).

52 See Bryce & Palazzola (validity of defense that author “dedicated” work to public by indiscriminate publication depends on facts—unresolved questions here); Hampton v. Paramount Pictures Corp., 279 F.2d 100, 104 (9th Cir. 1960). In contrast, it should not be sufficient for the defense that the copyright owner merely has not enforced the copyright in the past. See Hampton at 103-104; 9th Circuit Manual of Model Jury Instructions § 17.4.2 (1997).

53 Love; Hampton.

54 1986 W.L. 32,732 (unpublished, N.D. Fla. 1986).

55 Schuchart.

56 See, e.g., Hampton (action commenced nine months after infringement is not laches); Silva v. MacLaine, 697 F. Supp. 1423, 1430 (E.D. Mich. 1988) (six-year wait to complain is laches); Danjaq LLC v. Sony Corp., 263 F.3d 942 (9th Cir. 2001) (19+ year delay in prosecuting claim of infringement of James Bond character, where defendant was prejudiced in various ways by it, is laches); Chirco v. Crosswinds Communities, Inc., 474 F.3d 227 (6th Cir. 2007) (applying ‘aches as a ban on claim to the extent relief sought was destruction of infringing condominium development, but not to the extent a different sort of relief was sought).

57 Schuchart & Associates v. Solo Serve Corp., 220 U.S.P.Q. 170 (W.D. Tex. 1983). See also Guillot-Vogt (attempted transfer by architect of rights to drawings by his subconsultants void because architect had not paid for the drawings).

58 11 USC § 365(g).

59 11 USC § 365(f)(2). Accord, Lebowitz, Bankruptcy Deskbook (1986), p. 436.

60 Lebowitz pp. 299-300.

61 17 USC § 106A(d), (e).

62 17 USC § 106A(d), (e).

63 17 USC § 113(d)(1)(13). This statute also provides, however, that the artist’s oral consent merely that the work be installed in a building is sufficient to waive complaints about any negative impact of removal if the consent occurred before June 1, 1991. Note, however, that the applicable Congressional record suggests that Congress may have intended to limit the effectiveness of oral etc. consents to works which actually were installed before June 1, 1991, rather than merely to consents predating that date. See 1990 USCCANS p. 6930.

64 See FAR 27.409(a)(1)(iv); 52.227-17. FAR 27.409 gives contracting officers authority to use this clause or a sui generis clause when setting up architect-engineer services or construction work contracts. The discussion in our text, however, assumes that the Rights in Data—Special Works clause is used.

65 See 28 USC § 1498(b). Note, however, that state governments and instrumentalities may be immune from a federal copyright infringement action (although a state employee is subject to an injunction). InfoMath Inc. v. University of Arkansas, F. Supp. 2d, 2007 WL 4562878 (E.D. Ark. 2007).

66 FAR 52.227-17(c)(ii).

67 FAR 52.227-17(c)(1).

68 FAR 52.227-17(c)(i).

69 Sturdza v. United Arab Emirates, 281 F.3d 1287 (D.C. Cir. 2002) (“substantial similarity” normally is a question of fact as to both individual elements, on which there should be more concentration as to the elements which are similar than those which are dissimilar, and the overall look and feel; here an architectural design by a second architect was held to have sufficient promise in this regard to demand a jury determination). Richmond Homes (lay person’s view); 18 Am. Jur. 2d § 207. A detailed display of the way a comparison of elements is properly done is found in T-Peg.

70 Id; Nucor. At least in cases without direct evidence of copying, courts tally up the number of “objectively” similar points and then ask whether people would “subjectively” view the collection of such items as similar. Kootenia Homes v. Reliable Homes, 2002 U.S. Dist. LEXIS 235 (D. Minn.) (functionally comparable home interior is not infringing, especially in light of the number of dissimilar elements). In Tiseo Architects, Inc. v. B&B Pools Service and Supply Co., 495 F,3d 344 (6th Cir. 2007), the trial court properly explained away the apparent similarity of a commercial building plan as the result of (1) comparable suggestions made by the project owner to both the senior and junior architects and (2) practical limits on space available.

71 Richmond Homes; Kunycia; Robert R. Jones. At least as analyzed by other circuits, the 9th Circuit test for similarity has two parts, an extrinsic and intrinsic test. The extrinsic test compares specific expressive elements and is referred to as an “objective” analysis, involving expert testimony and “analytical dissection.” The intrinsic test is subjective (i.e., factual and to be judged by the trier of fact) and consider the “total concept and feel” of the two works. Summary judgment is permitted on the “similarity” issue only to the extent that it pivots on the extrinsic test. Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365 (Fed. Cir. 2006). There also is the rare situation where a defendant escapes liability (even though he/she actually used the plaintiff’s work as a starting point for new plans), but making such changes to the baseline as makes the new one substantially different. See, e.g., Lifetime Homes, Inc. v. Walker Homes, Inc., 485 F. Supp. 2d 1314 (M.D. Fla. 2007).

72 Robert R. Jones.

73 Richmond Homes; Arthur Rutenberg Corp. v. Perrino, 664 F. Supp. 479, 481 (M.D. Fla. 1987); 18 Am. Jur. 2d § 206, This evidently has reached an extreme in the 9th Circuit, where the court in Kroft v. McDonald’s Corp., 562 F.2d 1157 (9th Or. 1977), dealing with plastic figurines, stated that a very high degree of similarity allows a plaintiff to dispense altogether with proof of access.

74 Richmond Homes; Rutenberg v. Parr/no; 18 Am. Jur. 2d § 207.

75 See 17 USC §§ 103, 106. This prohibition is inapplicable to the author of the original work; i.e., the original author has the right to make derivatives. Christopher Phelps & Assocs.

76 18 Am. Jur. 2d § 41.

76.1 Perfect 10, Inc. v. Visa Intern. Service Ass’n, 494 F.3d 788 (9th Cir. 2007). Perfect 10 found the connection and control of credit card companies insufficient in this regard to share the blame for infringement of the plaintiff’s photographs by certain merchants—even though the merchants’ scheme depended upon the credit card companies for payment.

76.2 Christopher Phelps & Assocs. (adding to this so-called “first safe doctrine” the notion that the sale of a house is non-infringing even if the plans were infringed, provided the infringer has paid the judgment for that infringement). See also Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982 (9th Cir. 2008) (copy legally must have been made in the United States for first sale defense to apply).

77 Compare 17 USC § 106(2) with § 120(a), See also 17 USC § 113 (protection of plans does prohibit reproduction of the likeness of the plan on a useful article). There has been debate over whether this right to photograph buildings also applies to visual art which has become part of a building. In a recent split decision, the 9th Circuit court answered “yes.” See Leicester v. Warner Bros., 232 F.3d 1212 (9th Cir. 2000) (building in background of “Batman” movie included some artistic details by architect’s art consultant).

78 17 USC § 120(b).

79 Compare 57 Fed. Reg. 11 45,307 with 17 USC § 101.

80 17 USC § 107. This statute codifies a judicial “fair use” doctrine by listing four non-exclusive criteria (character of senior use, character of junior use, quantity of senior use copied, and effect on the senior use’s potential market). Courts sometimes call a sufficiently different type or purpose of the junior use a “transformative” use. See A.V. v. Paradigms, F.3d (4th Cir. 2009) (company which archived student term papers for client’s use in determining whether student submittals were plagiarized did not violate the copyright in the archived papers). But see Bourne v. 20th Century Fox, ___ F. Supp. ___ (S.D.N.Y. 2009) (song parody is OK); Gaylord v. United States, 85 Fed. 2d, 59 (2008) (photo used on postal stamp of Korean War Memorial sculpture sufficiently transformative because of the dramatic altering created by photographer’s technique). “Transformative use” (somehow) needs to be distinguished from “derivative use” which (as discussed in the text) is something reserved to the senior user. Until recently, there was a question as to whether any use of an unpublished work could be “fair”. That was removed by Pub. L. 102-492. It amends 17 USC § 107 so that it now makes clear that it is possible. An example of the application of this doctrine to architectural and engineering drawings is the Washington case of Lindberg v. County of County, 133 Wn. 2d 729 (1997) wherein the county unsuccessfully tried to use copyright protections (of the designer) as a reason why it should not allow copying of plans held in the building department files. The plaintiffs were attempting to employ the Public Records Act to get copies of county files to prepare for environmental review hearings; they wanted the drainage plans associated with the subject development. The court determined that this was a “fair use” and that copyright afforded the county no excuse. On the other hand, improper “commercial” use is not limited to profit-generating activity. Use of copyrighted material by public entities is not protected per se even though it obviously is not intended to compete with the owner of the copyright. Wall Data Inc. v. Los Angeles County Sheriff’s Department, 447 F.3d 769 (9th Cir. 2006).

81 17 USC § 113(d)(1).

82 17 USC § 113(d)(2). Note that this refers only to works which are a “part of” a building, whereas the prior subsection (on removals which inherently damage the work) talks about works “incorporated in or made part of” buildings. It is hard to say if any significance will be accorded by a court to this difference in language. It appears from the Congressional record that the legislature did not intend anything by it. See 1990 USCCANS p. 6930.

83 This proposition is implied by the mere existence of Subsection (d)(2), providing that some removals of works will not destroy or modify them. Note also that 17 USC § 106A(c)(2) specifically excludes from coverage modifications to the work resulting from efforts to conserve the work and from decisions concerning lighting or placement of the work for public display, so long as such conservation and placement decisions and acts are not grossly negligent. On the other hand, this way of expressing the exclusion of protection for conservation and placement efforts does say that they modify the work; it is just that that sort of modification is not covered. The “public presentation” exclusion was interpreted so broadly by the court in Phillips v. Pembroke Real Estate, Inc., 459 F.3d 128 (1st Cir. 2006) that the Court concluded that no work could fetch protection from being moved merely because it was designed to be used in some specific place (“site specific art”). Phillips, however, is of debatable validity.

84 Carter. The basis for the reversal was a determination by the appellate court, overruling the lower court on the facts found at trial, that the sculptors were functioning as employees and that, thus, their work was one “made for hire”. Made-for-hire work is not protectable under The Visual Artists Rights Act.

85 17 USC § 502.

86 18 Am. Jur. 2d § 223. Cf. Gnossos Music v. Mitken, Inc., 653 F.2d 117 (4th Or. 1981).

87 Carter.

88 Franklin Computer Corp. v. Apple Computer, Inc., 714 F.2d 1240, 70 A.L.R. Fed. 153 (3d Or. 1983), cert. denied, 79 L. Ed. 2d 158; 18 Am. Jur. 2d § 222. See The Value Group. In contrast, there is no such presumption for permanent injunctions sought as part of the relief after trial. Christopher Phelps & Assocs. (citing eBay v. MercExchange, 126 S. Ct. 1937 (2006)).

89 17 USC § 504(b).

90 See Eales.

91 18 Am. Jur. 2d § 235.

92 18 Am. Jur. 2d § 235.

93 The Value Group. “Dilution” means the lowering of the value of the copyright merely by redundancy, as where a design for an expensive home loses its cache from numerous close-by look-alike structures. The Value Group at 1234.

94 17 USC § 504(b); Eales. But see Danielson (developer should be able to show what else caused income other than plans); Mackie v. Rieser, 296 F.3d 909 (9th Cir. 2002), cert. denied, 154 L. Ed. 2d 1022 (2003) (plaintiff must prove in detail all elements of causation for “indirect” profits).

95 18 Am. Jur. 2d at § 235. See Harper & Row v. Nation Enterprises, 471 U.S. 539 (1985). But see Danielson (mathematical precision and segregation is not necessary).

96 17 USC § 504(b); L&L White Metal Casting v. Joseph, 387 F. Supp. 1349, 1358 (E.D.N.Y. 1975) (dicta).

96.1 477 F.3d 128 (4th. Cir. 2007).

97 17 USC § 504(c)(1) and (2). Statutory damages may be considered to include both compensatory and punitive elements. Accordingly, the size of actual damages does not necessarily cap—the amount of statutory damages. Los Angeles News Serv. v. Reuters TV Intl, 149 F.3d 987, 996 (9th Cir. 1998). See also Columbia Pictures v. Krypton, 259 F. 3d 1186, 1194-95 (9th Cir. 2001).

98 17 USC § 505. 18 Am. Jur. 2d § 241. An interesting corollary is that infringement which commences prior to registration may continue after that without risk of attorneys’ fee awards; a repeated use of an infringed architectural work (as with building more homes) constitutes a continuation of the original infringement, not new, separate infringements. Robert R. Jones.

99 Fantasy v. Fogerty, 510 U.S. 517, on remand, 94 F.3d 553 (9th Cir. 1996) (award to successful defendant on the same basis as plaintiff).

100 See Acuin Management v. Neil’s Fads, 210 U.S.P.Q. 967 (E.D. Mich. 1979).

101 See MSR Imports v. Greenspan, 220 U.S.P.Q. 361 (E.D. Pa. 1983).