Protecting Your Designs & Avoiding Litigation
by Danielle Maya, Cotney Construction Law
(Editor’s Note: Danielle Maya is a partner at Cotney Construction Law and has over 20 years of experience as an attorney. Cotney Construction Law is an advocate for the roofing industry and General Counsel of Western States Roofing Contractors Association. Maya can be reached at (866) 303-5868.)
Copyright protection has existed in the United States since the signing of the Constitution, but did not extend to design professionals until the Architectural Works Copyright Protection Act was signed in 1990. Copyright protections give an owner exclusive rights to reproduce, publicly display, and prepare derivative works based on any original work they have created. The protection exists from the moment the work has been fixed in a tangible medium. For architects, this means that the plans produced for a single use by builders and contractors are their copyrighted intellectual property so long as they have not released their rights by contract.
The American Institute of Architects (AIA) is the leading professional association of architects in the United States and provides access to nearly 200 industry standard construction contracts and forms on its website. The forms are an excellent starting place for architects and contractors seeking a template for how to draft a contract, which will protect both parties’ interests from the outset of a project to completion. All of the architectural copyright provisions in AIA’s form contracts are negotiable, but they provide a guide as to what types of provisions have been useful in the past, and their drafting has been informed by years of industry experience and expertise.
Article 1.5 in AIA Form 201 addresses ownership and the use of design documentation during and after the completion of a project. Protecting the copyright of an architect’s instrument of service, which could include drawings, formal plan sets, models, and more, can sometimes be harder than just including a contract provision to reserve rights. Forming an agreement on how design documentation will be managed, for instance, can save parties from misunderstandings once a project is already underway. Additionally, making up front decisions about who will have access to full scope design documentation copies can prevent documents from being shared freely. The AIA 201 provision affords contracting parties an opportunity to consider how to handle design documents and plan sets that will be stored and transferred online, how to limit their availability, and keep login credentials secure.
While including language that expressly reserves any copyrighted works for exclusive ownership of the architect is industry standard, the case law surrounding architectural copyright suggests that reserving rights alone is not enough. Architects wishing to protect their intellectual property need to take proactive steps to limit unnecessary access to design documentation. In particular, they should negotiate provisions which state that any design documentation produced for a project is intended only for single use on that project, and that all extraneous copies of plan sets and design documentation should either be returned, deleted, or destroyed upon completion of the work.
The problem with allowing contractors and builders to maintain copies of design documentation upon completion of the work is that it provides an opportunity to use old plan sets for future projects. While in a majority of situations the next project will not be an exact replica of the last, it can be easy to look to old plans as a starting point for future projects, but this poses a problem for the architect who wishes their design to be protected by copyright laws.
If copyright infringement is flagrant and all other methods of resolution prove ineffective, an architect may find that litigation is necessary. In order to prove that an architect’s design copyright has been infringed in court, a subsequent design must be considered substantially similar. However, this standard is subject to limitations. For instance, all features which are considered elements of a well-established architectural style get no protection, and any feature relating to building codes, topography, structures that already exist on a construction site, or engineering necessity, also get no copyright protection. In addition to the tough standard in court for architectural copyright infringement, filing and attaining a formal copyright in an architectural work is a required first step before litigating. That process can take up to one year and requires paying an application fee.
Litigation can be costly, time consuming, and burdensome, so it is better to prevent the potential issues with architectural copyright infringement at the outset of a project. By looking to AIA form provisions and implementing a procedure for handling design documentation, architects can greatly reduce their risk of ending up in court to protect their designs. It is helpful to contact a local construction attorney if you have any questions regarding your architectural copyright or if you need assistance in registering a design.