Co-Author: Amy E. Allison, Esq.
Question: I am an architect. A builder client of mine asked me to prepare plans for an office building. After constructing the initial building, my client worked with a different architect who slightly modified the drawings to fit another site. The builder intends to construct many other versions of the building which are essentially identical to the one which I designed. Do I have any claims for copyright violation? What steps can I take in the future to avoid this problem?
Response: The ease with which we can pass around digital information raises an ever increasing number of copyright disputes.
Not all works are owned by the persons who created them. If you create a protectible work on someone else’s behalf, that person may be considered the author of the work and, as a result, will own the right to copy the product. These situations are called “works made for hire.” The actual creator of the work made for hire has no copyright in the work.
Some of the factors used to determine whether an architect is an employee under general common law include: the skill required to produce the work; the source of the materials; whether the hired party works in his own office or at the client’s site; the hiring party’s right to assign additional projects to the hired party without paying new or additional compensation; the extent of the hired party’s discretion over when and how long to work; the method of payment for the work (is it a salary or simply a flat fee); the regular business of the hiring party (is it an architectural firm or a construction company, or something unrelated); the provision of employee benefits by the hiring party to the hired party; and the tax treatment of hired party (does the hiring party withhold taxes for the hired party or does the employee pay his own).
No single factor determines the issue. Rather, the responses are judged as a whole. If the balance of the factors weighs in favor of recognizing the creator as an employee, then the work will be considered a work made for hire and the hiring party will own both the work and the copyright. If the responses favor recognizing the creator as an independent contractor, then the work and the copyright are owned by the independent contractor. Unless there is a written agreement to the contrary, the copyright for plans drawn by an independent architect is owned by the architect.
Infringement occurs only if all three of the following requirements are present: (i) ownership of a work protected by a valid copyright; (ii) actual copying of the work by the infringer; and (iii) improper use of the work’s protected expression by the infringer.
First, the issue of infringement does not arise unless the work is protected by copyright. This means that the allegedly infringed work must be: (i) fixed in a tangible medium of expression; (ii) independently created; and (iii) at least minimally creative. Second, actual copying is generally established by showing (i) that the alleged infringer had access to the work; and (ii) that the work allegedly infringed and the alleged infringer’s work, or at least parts of the works, are substantially similar. Third, improper use of a work’s protected expression may occur as a result of verbatim copying, paraphrasing, or the copying of a work’s total concept or feel.
In order to bring a copyright infringement claim under the Copyright Act of 1986, you must have registered the work with the Copyright Office or the court will dismiss your claim for lack of jurisdiction. The advantage of registering your copyright and filing a claim under the Copyright Act, is that you may be entitled to recover special statutory damages and attorneys’ fees and costs if your claim is successful. However, even if you do not register your work with the Copyright Office, you may still have claims under state or common law for infringement, civil theft, and deceptive trade practices. In most cases, you will not be entitled to special statutory damages and may not be entitled to recover your attorneys’ fees and costs, but generally you may be entitled to recover your actual damages (lost profits) and the infringer’s profits.
To protect yourself in the future, your best plan would be to file a copyright application with the Copyright Office. The registration forms are simple and the fees are nominal.
Another method of protecting your work, whether it is registered or not, is to include a copyright notice on the work. A copyright notice is not required for works published after March 1, 1989. However, it is a good idea to place a valid copyright notice on every copy of every work you publish. (A work is published for copyright purposes when it is made generally available to the public by the copyright owner or others acting with the owner’s permission. It is not necessary to sell or otherwise transfer any copies of the work.) Placing a copyright notice on your published work costs nothing and may end up saving you thousands of dollars by deterring others from copying your work and enabling you to recover your full measure of damages against those who do copy it. Further, notice protects you work in countries that do not adhere to the Berne Convention, an international copyright treaty. A copyright notice should be included on a work when it is first published and on every subsequent published edition. A valid copyright notice contains three elements: (i) the copyright symbol; (ii) the year in which the work was published; and (iii) the name of the copyright owner. An example of a valid copyright notice is: Copyright ©2002 by Arthur Dent.
Amy E. Allison is no longer with the law firm of Frascona, Joiner, Goodman and Greenstein, P.C.
A version of this article appeared in the Colorado REALTOR® News, the monthly publication of the Colorado Association of REALTORS®.