Owner clients are often shocked to discover they do not own the designs, plans, and specifications commissioned for their building projects, whether supplied by an Architect or a Design-Builder. Rather the author of the design, be it an individual or entity, generally owns the “Copyright” over the building design unless the applicable contract provides otherwise. However, “Copyright” ownership does not impact all construction projects, but rather excludes “structures other than buildings, such as bridges, cloverleafs, dams” and generally all other infrastructure projects. Hence, “Copyright” laws provide protections for “originality” and “creativity” involving buildings, but not “functionality” and “utility” in construction.
The origins of “Copyright” laws for building design extend back to 1909 when Federal law was expanded beyond the protection of “books, maps and charts” to apply to “drawings … of a technical nature” and the growing profession of architecture. But “Copyright” ownership of building design suffered a setback in 1976 when the courts generally held that architectural plans were not automatically protected by Federal laws. Then ownership of “Copyright” for building design bounced back in 1989 when the United States became signatory to the international “Berne Convention” requiring protections against infringement over completed architectural works. Congress subsequently extended protection through the “Architectural Works Copyright Protection Act” or ACT codified in 1990 expressly recognizing that “architecture is an art form that performs a very public, societal purpose . . . deserving of protection.” Similar protections under the ACT have since been extended to designs prepared by other design professionals for building projects, including engineers, design-builders and even subcontractors and suppliers preparing shop drawings.
Ownership of the “Copyright” under the ACT vests upon completion of the design work. No formal registration or other action by the author is required as “Copyright” ownership automatically attaches as a matter of Federal law. However, “Copyright” ownership only extends to “original works of authorship” that reflect “at least some minimal degree of creativity”, independently developed and not copied from prior works. No protection is offered for standard features such as windows, doors, and other standard components of a building that are required for “functionally”, "utility", or to comply with building codes.
The types of work product to which “Copyright” ownership protects is very broad. In addition to plans and specifications, ownership can also apply to sketches, general drawings, sections, elevations, floor plans, physical models, computer generated images and models, such as BIM, and even shop drawings.
“Copyright” ownership of a building design may be transferred under the ACT to another so long as the transfer is “in writing and signed by the owner of the rights conveyed or such owners duly authorized agent”. If the owner of the “Copyright” is employed by a company and prepares the building design as part of their employment, then the Company owns the “Copyright” under the ACT's “work-made-for-hire” exception. However, entities do not become employers of the “Copyright” owner simply by commissioning the design, they must provide benefits and withhold payroll taxes as they would with any other employee.
A transfer of the “Copyright” ownership can take many forms. Typically, ownership is retained by the author, and an irrevocable license to use the design, plans and specifications is granted to the purchaser for a single project. Savvy authors often seek to issue a revocable license of “Copyright” ownership conditional upon full payment by the purchaser. Seldom do “Copyright” owners sell their entire rights thereby allowing the purchaser to become the sole owner of the design, plans, and specifications. Under all of these scenarios, the “Copyright” owner almost always seeks indemnity from the purchaser for misuse and/or unrelated use of design, plans, and specifications.
Owners and contractors who use plans and specifications to construct buildings without permission, or after permission is rescinded by the “Copyright” owner, are subject to injunctions prohibiting further construction. In 2015, a Design-Build client and “Copyright” owner successfully obtained an injunction halting all further construction using the building designs provided to the Owner prior to contract termination. The owner was essentially “handcuffed” into paying the Design-Builder and rescinding the termination so that construction could proceed forward.
Similarly, architects and engineers who copy and incorporate “Copyright” material into their building design, are subject to infringement actions by the “Copyright” owner. Prior to filing an infringement action, the “Copyright” owner must first register the design. If registration is made prior to infringement, the author is entitled to recover attorney’s fees in addition to actual damages and profits. In order to establish “Copyright” infringement, the author must show: i.) the new design is sufficiently similar to the “Copyright” material to which the offender had access, and ii.) the work is substantially similar based upon whether a reasonable, ordinary observer determines the offender unlawfully copied the “Copyright” material. If infringement is found, the offender may be responsible for actual damages, loss of profits, injunctions against further use, and even criminal penalties if the violations were willful.
The takeaways for building designs are clear. If you commission an entity to prepare customized designs, plans, and specifications make certain to at least obtain an irrevocable license for the same. Absent such a license, your project could be brought to a grinding halt if disputes arise with the “Copyright” owner of the building design.