During AIBD’s First Tuesday @ 2:00 program (May 7, 2013) on how to register your architectural works and technical drawings using the U.S. Copyright Offices eCO online process, our moderator received many questions which went unanswered due to time constraints. Attorney Mitch Tuchman, who attended the presentation, reviewed each of the attendee’s messages and found that a majority fell into clearly recognizable categories, including what should I register, why should I register, when should I register, what are the benefits and limitations of registration, and what value does an attorney bring to the registration process? Attendees also asked questions about sole and joint ownership of copyrights, works made for hire, and when are architectural plans or an architectural work deemed published? Courts weighing issues of infringement often remind us that copyright jurisprudence is fact-based. Copyright law is not a decision tree: if A, then B; if B, then C or D. The responses below reflect the circumstantial nature of copyright.
When you submit an application to the Copyright Office, you are not asking to register your work. You are asking to register your claim of copyright in the work. The information you include in your application serves to illustrate the scope of that claim.
You may register claims of copyright in architectural plans, on the one hand, and architectural works, on the other hand as long as the plans or works, as the case may be, are original. “Original” doesn’t mean novel or unprecedented. It simply means not copied from someone else’s plans or works. A modicum of creativity is also required.
Architectural plans are technical drawings. They may be fixed in a tangible or a machine-readable, intangible medium. The plans you deposit with your application constitute the sum total of the plans in which you claim copyright. The concept is straightforward.
Describing architectural works, by contrast, is anything but straightforward. Understanding what you may claim with respect to an architectural work requires close attention: an architectural work comprises “the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features.” This definition of an architectural work, found in the Copyright Act at Section 101, shares a lot with the definition of a “compilation,” found elsewhere in that Section. A compilation is formed by selecting, coordinating and arranging preexisting materials or data “in such a way that the resulting work as a whole constitutes an original work of authorship.” An architectural work is much like a compilation. It may include both commonplace and unique elements, which are selected, coordinated and arranged by the designer so that as whole they form an original design even if many of the incorporated elements may be dictated by function or historical precedent. You’ve heard the phrase, the sum is greater than its parts: that describes an original architectural work. I recommend that you look at the Copyright Office circular on architectural works: http://www.copyright.gov/circs/circ41.pdf.
Copyright law provides the copyright owner with certain exclusive rights. Among them are the rights to reproduce the protected work in copies, to distribute copies, to display the work, to create derivative works and to authorize others to exercise these rights. (Note that I’m using the term “work” here in a generic sense, not in the sense of an architectural work per se.) Copyrights come into existence automatically when a architectural plan or architectural work is fixed in a tangible or machine-readable medium. Registering a claim of copyright in the Copyright Office is therefore not necessary for a copyright to exist. Enforcing any of the copyright owner’s exclusive rights in federal court, however, does require a registration in most judicial circuits in the country. Some circuits are willing to proceed on the basis of a pending application rather than requiring a registration certificate. It is important for you to know which interpretation of the registration requirement prevails where you operate your business. (These rules also affect the ability of third parties to seek declaratory judgments that their activities are non-infringing, but that is a subject for another day.)
No rule governs when you must or should register your claim of copyright, if you elect to register it at all. Note, however, that registration prior to publication or at least no more than three months following publication may provide the copyright owner with an array of remedies not otherwise available to a successful litigant.
Benefits and Limitations
Some benefits of registration are discussed in the two preceding sections. The limitations may surprise you. Litigation for infringement is highly complex. It is not a matter of “This is mine, you stole it, I win.” With respect to architectural plans, the exclusive rights of a copyright owner notwithstanding, a third party may construct a building based on those plans as long as they were lawfully obtained. Clearly there are inherent risks in disseminating plans in brochures and online. The limitations with respect to architectural works are stated in the law: “The work . . . does not include individual standard features.” What constitutes standard features is frequently litigated. These may include structural features, conceptual features, adherence to historical styles or other styles currently in vogue, and so on. What is more the federal circuits differ in the way they construe this limitation. Again, it is important for you to know how courts where you operate your business construe these limitations.
What Value Does an Attorney Bring to the Registration Process?
Preparing an application to register a claim of copyright particularly in an architectural work should never be dismissed as an act requiring little forethought. Think of registration as preparation for litigation that you hope will never come. Think about what you might need in order to demonstrate the originality and creativity embodied in your architectural work. While you probably cannot predict the issues presented at trial, your attorney can at least assist you in preparing deposit materials that might conduce to a favorable judicial outcome given the law of the circuit where you operate your business.
You may think of the author of an architectural plan or architectural work as a “he” or “she,” but what if the author is an “it” instead—an entity rather than a person? When an employee, for instance, creates a protect-able plan or work, the employer, whether an individual or entity, is by law the author and initial owner of copyright. When an independent contractor creates a protect-able plan or work, he or she (or his or her employer) is the owner of copyright unless there is a written assignment of rights to the commissioning party. Standard AIA contractual terms notwithstanding, work-made-for-hire language in service contracts pertaining to architecture is likely unenforceable in the absence of an assignment in the alternative.
What about plans you create for you own company? Much may depend on how that company is set up. Consult your corporate attorney to determine whether, despite your ownership, you are an employee for purposes for work you create alone or together with your employees. Issues of liability and tax may be implicated. It is highly unlikely that the copyright in any resulting architectural plan or architectural work is jointly owned by you and your company. Similarly it is highly unlikely that you and your customer or you and your independent contractor are joint owners of copyright. I often think it is best for the parties to contracts to think about which party has the greater continuing need for the intellectual property. If the needs of a party, such as the owner of a home in a subdivision, are satisfied by a single iteration of the copyrighted work, that party does not need to own the rights. If a party’s needs are likely to be continuing, that party does need to own the rights or to have a perpetual license to exercise the rights. Skillful contractual drafting is intended to satisfy the needs of all concerned. If you think of copyright ownership as your only guarantee of payment, you may be boxing yourself into something that is otherwise undesirable.
As Mr. Briganti made clear during the webinar, the Copyright Office cannot advise whether your architectural plans or architectural works have been published. The law speaks of publication as “the distribution of copies . . . of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending.” The devil is in the details, and questions have arisen and been litigated in the context of submission of plans for permitting purposes, distribution of plans to contractors, and actual construction. Your attorney can advise you with respect to your special circumstances.
Mitch Tuchman is a transactional intellectual property attorney in the Research Triangle Park, NC, office of Womble Carlyle Sandridge & Rice, LLP: http://www.wcsr.com/lawyers/mitchell-tuchman.
Womble Carlyle Sandridge & Rice, LLP
P.O. Box 13069
Research Triangle Park, NC 27709
Tel: (919) 484-2333
Fax: (919) 484-2070