Copyright Protection: Authorship of Architectural Plans and Architectural Works
It is well established that both architectural drawings and completed architectural works are entitled to copyright protection under the Federal Copyright Act. Under the Act, the owner of the copyright has exclusive rights to reproduce the copyrighted work and to prepare derivative works based upon the copyrighted work. As such, an important question that often arises is who owns the copyright. Generally, copyright protection extends to the “author” of the work, unless there is a written agreement to the contrary or the work is a “work for hire.”
A summary of the history of copyright protection and a brief overview of the law with regards to authorship of architectural drawings and completed architectural works is provided below.
II. History of Copyright Protection
A. Federal Copyright Act
The plans, drawings, and designs of an architect are historically copyrightable under the Federal Copyright Act. 17 U.S.C. § 101 et seq. While architectural plans are not expressly mentioned in the Copyright Act, courts commonly protect the plans and drawings as “pictorial, graphic and sculptural works.” 17 U.S.C. § 102(a)(5).1 The copyright protection afforded by § 102(a)(5), however, only extends to the architectural plans and drawings. Prior to 1990, there was no copyright protection for completed architectural works. Leicester v. Warner Brothers, 232 F.3d 1212 (9th Cir. 2000).
B. Architectural Works Copyright Protection Act of 1990 (AWCPA):
In 1990, Congress passed the Architectural Works Copyright Protection Act (AWCPA) explicitly extending copyright protection to completed architectural works. 17 U.S.C. § 102(a)(8). Congress, however, did not afford architectural works full copyright protection. Rather, it exempted the making of pictorial representations of architectural works from copyright infringement. 17 U.S.C. § 120(a).
17 U.S.C. § 101 specifically defines “architectural works” as “[t]he 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 spaces and elements in the design, but does not include individual standard features.”
After 1990, the Federal Copyright Act extended copyright protection to an architect’s plans, drawings, and models as well as the completed buildings. Under the Federal Copyright Act, the owner of a copyright has exclusive rights to reproduce the copyrighted work and to prepare derivative works based upon the copyrighted work. 17 U.S.C. § 106(1) and 106(2). Due to the significance of a copyright, the essential question becomes who owns the copyright.
III. Authorship of Architectural Plans
Generally, copyright protection extends to the “author” of architectural plans or designs. 17 U.S.C. § 201(a). As a general rule, the author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible medium of expression entitled to copyright protection. 17 U.S.C. § 102. By definition, the author is usually the architect.
A. Works for Hire
Copyright protection may not extend to the author of the architectural plans or drawings if the plans/drawings are considered “works for hire.” If a work is a “work for hire,” the employer or other person for whom the work is prepared is considered the author and owns the copyright, unless there is a written agreement to the contrary. 17 U.S.C. § 201(b). Section 101 of the Copyright Act defines a work made for hire as:
- a work prepared by an employee within the scope of his or her employment; or
- a work specifically ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered work made for hire.
17 U.S.C. § 101
1. Employee or Independent Contractor
To determine whether a work is for hire, a court will first ascertain, using principles of general common agency, whether the work was prepared by an employee or an independent contractor. Community for Creative Non-Violence et al. v. Reid, 490 U.S. 730, 750-51 (1989). After making that determination, the court can apply the appropriate subsection of § 101.
In Palazzola Architects and Assoc., Inc. v. A.M.E. Group, Inc., 865 F.Supp. 401 (E.D. Mich. 1994), the court assessed whether an architect was an employee or an independent contractor for purposes of determining whether architectural plans were “works for hire.” The plaintiff in Palazzola was an architectural firm that designed customized homes. The plaintiff brought a copyright infringement suit against the Goodmans and AME. After the Goodmans viewed a home designed with the plaintiff’s plans, they hired AME to construct a similar home on their property. The plaintiff contended that the defendants constructed a virtually identical home, thereby infringing on plaintiff’s registered copyright of the architectural plans and the building itself. Id. at 402-03.
The defendants filed a motion for summary judgment alleging, among other things, that the plaintiff lacked standing to bring the copyright action, since the plaintiff’s architectural plans fit the definition of a work made for hire, and the person for whom the work was prepared is considered the author for purposes of alleging copyright infringement. Id. at 404. The defendants alleged that the plaintiff was engaged on a fee-for-service basis to design and create the architectural drawings for Executive Square Homes Corporation, and as such, the drawings were a work for hire, and only Executive Square Homes had standing to sue for copyright infringement. Id.
The court in Palazzola held that the plaintiff was clearly an independent contractor, not an employee of Executive Squares, and as such, the work was not prepared by an employee within the scope of employment. The court further noted that there was no written instrument signed by the plaintiff and Executive Square expressly stating that the drawings constituted a work made for hire. Consequently, since there was no written agreement and the drawings were not prepared by an employee in the scope of employment, the court held that the drawings were not a work made for hire under §201(b). Id. at 404.
As demonstrated by the Palazzola case, the general rule is that if an architect is an independent contractor and there is no express agreement stating that the architectural plans are “works for hire,” the architect is considered the author and copyright protection for the plans is extended to the architect.
2. Architects Employed by an Architectural Firm
Based on the definition of a “work for hire,” in general, works produced by architects employed by architectural firms will be considered works for hire, and the copyright protection will extend to the architectural firm that employed the architect that authored the plans. It is important to note, however, that employment agreements between architects and their firms may alter the ownership of copyrights. 2
3. Client Ownership in Drawings/AIA Standard Form Agreement
Generally, architects hired by clients for individual projects will not be considered to have produced “works for hire.” The custom in the architectural profession is for the architect, and not the client, to retain ownership in the drawings and plans. Specifically, the standard AIA contract provides that an architect will retain copyright protection for his or her plans and/or drawings. AIA document B141-1997 Standard Form of Agreement between Owner & Architect provides:
1.3.2 Instruments of Service
22.214.171.124 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.
See also Kunycia v. Melville Realty Company, Inc., 755 F. Supp. 566 (S.D.N.Y. 1990); Wright v. Tidmore, 430 S.E. 2d 72 (Ct. App. Ga. 1993) (noting that Article 8.1 of the standard agreement form issued by the American Institute of Architects provided that the drawings and specifications of the buildings were to remain the property of the architect whether or not the project for which they were made was executed.)
The case of Kunycia v. Melville Realty Company, Inc., 755 F. Supp. 566 (S.D.N.Y. 1990) demonstrates the ownership issues that arise between architects and clients. In Kunycia, the plaintiff, a licensed architect, was employed as a designer at SRA, an industrial design firm. One of SRA’s clients was Kay-Bee Toys. Kay-Bee engaged SRA to develop a uniform design for all of the Kay-Bee stores to be opened in numerous shopping malls. SRA billed Kay-Bee a set fee for each store, and the original drawings were maintained by Kay-Bee. There was no contractual provision between any of the parties with regard to ownership or copyright of the drawings. Id. at 568.
During his time at SRA, the plaintiff prepared the preliminary drawings for more then seventy Kay-Bee stores. The designs only differed slightly based on information obtained from the landlords. The plaintiff eventually left SRA, and SRA assigned another architect to work with Kay-Bee. After the plaintiff’s departure from SRA, the president of Kay-Bee contacted him and asked whether he would continue to work for Kay-Bee. The plaintiff agreed and prepared a new set of drawings from scratch with new formats, notes and details. The plaintiff used the old SRA/Kay-Bee drawings only as a reference, after he prepared his own drawings. Id. at 568-69.
Kay-Bee was eventually acquired by the defendant, Melville Realty Company, and after the acquisition, the plaintiff continued to deal with the former president of Kay-Bee in the same manner. At some point, however, Melville’s drafting department began to prepare its own construction drawings for the Kay-Bee stores, and the drawing department reproduced drawings previously prepared by the plaintiff. Thereafter, the drafting department redrew and cut and pasted the plaintiff’s drawings into new drawings. Once the plaintiff learned of Melville’s actions, the plaintiff filed suit against Melville for copyright infringement alleging that, based on the plaintiff’s format, Melville developed construction drawings for approximately 400 additional Kay-Bee stores. Id. at 569.
Ownership of the drawings prepared by the plaintiff, while he was employed by SRA, was not at issue. The issue before the court in Kunyica was whether the defendant Melville or the plaintiff owned the drawings produced by the plaintiff after he left SRA. The court noted that, generally, an architect owns his own drawings, unless expressly agreed otherwise by the parties. Further, evidence was presented to the court that in the business of designing chain stores, there is an understanding that the owner does not have the right to use the architect’s drawings for successive stores, unless there is a prior agreement otherwise. The defendant alleged, however, that it, and not the plaintiff, owned the drawings, since the president of Kay-Bee actively participated in the design of the Kay-Bee store, upon which the plaintiff’s drawings were based.
The court relied on § 101 of the Copyright Act, which defines “works for hire.” The court held that because there was no express agreement as required in subsection (2) of §101, the issue before the court was whether the plaintiff’s drawings were prepared by an employee acting within the scope of his employment. Relying on principles of general common law agency, the court held that in producing the drawings for Kay-Bee, the plaintiff was not an employee, but an independent contractor, and therefore, the work was not made for hire and proper ownership lies with plaintiff architect. Id. at 573-74; see also Fun Spot of Florida, Inc. v. Magical Midway of Cent. Florida, Ltd., 242 F. Supp. 2d 1183, 1190 (M.D. Fla. 2002)(holding that amusement park go-kart track drawings, made as part of an amusement park construction project, were not “works for hire,” commissioned and owned by the ultimate builder of the park, after the author of the drawings withdrew from the project; there was no written declaration that the works were for hire, and there was no evidence that the ultimate developer had ever employed the author in any capacity.)
B. Assigning/Transferring Copyright
Although the copyright protection generally extends to the architect, it is important to note that an architect can assign or otherwise transfer his ownership in a copyright. 17 U.S.C. § 201(d). Written agreements between architects and their firms, and architects and their clients, may alter the ownership of copyrights.
IV. Authorship of Completed Architectural Works
Authorship of completed architectural works is slightly more complicated. As opposed to architectural plans, completion of architectural works requires the involvement of additional parties, including contractors and engineers. Nevertheless, only in unusual relationships will authorship be found in parties other than the architect.3
Although the copyright protection generally extends to the architect, the owner of a completed architectural work also receives some protection under the Federal Copyright Act. “[T]he owners of a building embodying an architectural work may, without the consent of the author or copyright owner of the architectural work, make or authorize the making of alternations to such building, and destroy or authorize the destruction of such building.” 17 U.S.C. § 120(b).
Both architectural plans and drawings and completed architectural works are protected under the Federal Copyright Act. Generally, copyright protection extends to the author of the work, the architect, unless there is a written agreement to the contrary or the work is a “work for hire.”
Although copyright owners are not required to take formal steps to obtain copyright protection for their works of authorship, registering a copyright with the United States Copyright Office affords copyright owners certain important advantages, including that a registration is a prerequisite for bringing a copyright infringement lawsuit in federal court, 17 U.S.C. § 411, and a registration is necessary to obtain statutory damages and attorney fees should the copyright owner prevail in an infringement action. 17 U.S.C. § 412.
Clausen Miller’s corporate group is available to assist design firms in obtaining copyright protection. •
1American Law Reports, Copyright, Under Federal Copyright Laws, of Architectural Plans, Drawings, or Designs, Jonathan M. Purver, 3 A.L.R. Fed. 793 (1970-2004).
2 Duke Law Journal, Note: Copyright Protection for Architecture After Architectural Works Copyright Protection Act of 1990, 41 Duke L.J. 1598 (June 1992).
3 41 Duke L.J. 1598, 1642-43.