This is a guest blog by Danny Swift, LicenseSure LLC Intern, with guidance from Patricia A. Harris, Esq., Founder and CEO of LicenseSure LLC. LicenseSure provides business formation and licensing compliance services for design professionals throughout the US. A/E businesses must conform with both business and licensing rules in every state in which they have a project, and requirements are often opaque and frequently differ from state to state. Failure to comply with these rules results in fines and penalties for unlicensed practice, not to mention project stoppages, disrupted client relationships and bad publicity. LicenseSure assists its clients in all 50 states with establishing and maintaining compliance throughout the course of their projects.
Historically, architectural designs were not subject to intellectual property (IP) protections. It was not until 1976 that Congress expanded protection to explicitly include “an architect’s plans and drawings.” However, most courts held that this protection did not extend to the right to actually build the structure depicted––anyone could build the building in question, so long as they didn’t create a copy of the architect’s drawings! It wasn’t until passage of the Architectural Works Copyright Protection Act of 1990 that architectural works were truly protected from IP infringement.
How a Copyright is Created
For a building design to be copyrighted, there are two requirements. First, the design must be sufficiently original. Second, the design must be fixed in a tangible medium of expression (e.g., written down, digitally rendered, sculpted from whale bone, etc). If these two requirements are met, a copyright exists for this piece of work.
You can register your copyright with the United States Copyright Office at http://www.copyright.gov. Registration is not required, but makes litigation cheaper and easier should you need to pursue a case of infringement, as the existence of your copyright will not be subject to debate. Furthermore, registration will qualify you to be remunerated for attorney’s fees and statutory damages of up to $150,000 per instance of infringement. In order to be eligible for the benefits copyright registration confers, the copyright must be filed prior to the infringement, or within three months of first publication if it is a published work.
In almost all cases, ownership of the architectural copyright defaults to the architect, unless a project owner has procured ownership pursuant to contract. The standard American Institute of Architects (AIA) contract language has the architect retaining the copyright in drawings, specifications, and related documents. If the architect does in fact transfer copyright to the project owner, the architect should recognize this may result in the owner building additional, similar, or slightly modified projects. The architect should be compensated for the transfer of this valuable asset.
There have been numerous instances of employees of architecture firms attempting to claim ownership of designs. However, courts have consistently held that within the scope of one’s employment, copyright ownership resides with the employer. Such work-for-hire must meet statutory standards. That means the creator must either be a full-time employee and the work created within the scope of his/her employment, or the work must be commissioned as a part of one of several specific types of larger works. If you do use contractors, absent an express written assignment or meeting the work-for-hire standard, the contractor owns the copyright. In any event, the prudent course of action is to procure a written assignment of intellectual property rights from all employees and contractors.
One also has the option of filing for a design patent. With a design patent, actual copying is not needed for a case of infringement. A design patent can be used to protect the ornamental aspects of functional items from being copied, whereas a copyright protects only designs without a practical application, or where the artistic expression can easily be separated from the useful object. However, there are certain drawbacks to design patents: they require filing with the United States Patent Office. Filing is more expensive (typically in the range of $2,500–$3,000 plus attorneys’ fees) which can mount quickly in the case of complicated designs. Furthermore, the patent only lasts for 14 years compared to a minimum of 70 years for copyrights. Lastly, patents do not entitle their holders to the statutory damages that copyrights do.
As the old saying goes, “Imitation is the sincerest form of flattery.” However, sometimes imitation isn’t so sincere and often times in construction, it is far from flattering. Building plans and design solutions are the lifeblood of any professional design firm. Advances in technology make copying of designs easier every day. Make sure you have a plan for protecting your plans!
Start planning the protection of your designs by identifying the designs that you do have. Learn how ID your IP® can help.