DESIGN PROFESSIONAL ASSERTING COPYRIGHT INFRINGEMENT AND CONTRIBUTORY COPYRIGHT INFRINGEMENT

Posted on April 7, 2019April 24, 2020 by Edward Garber

Standard form construction contracts between an owner and design profesional will address copyright protection, as well as other contractual protections, associated with a design professional’s “instruments of service.” An owner negotiating an agreement with a design professional should consider alternative language that broadens the scope of the contractual license given to it with respect to the use of the design. Regardless, a design professional’s copyright infringement claim is still a challenging claim to ultimately prevail on. While a design professional may likely survive the motion to dismiss stage in a copyright infringement claim, whether it survives the summary judgment stage is another, more challenging, story.

“To state a claim for copyright infringement a plaintiff [design professional] must assert [and prove the following two prongs]: ‘(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.’” Robert Swedroe Architect Planners, A.I.A., P.A. v. J. Milton & Associates, Inc., 2019 WL 1059836, *3 (S.D.Fla. 2019) quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991).

In the first prong, the design professional must establish it complied with statutory formalities to own a valid copyright. Id.

In the second prong, the design professional must establish that the defendant copied constituent elements that are original. Id.

There is also a claim known as contributory copyright infringement.

“Contributory copyright infringement occurs where a party with knowledge of infringing activity materially contributes to the infringing conduct of another.” Robert Swedroe, 2019 WL at *4. Actual knowledge is not required – it just needs to be shown the defendant had reason to know (i.e.,knew or should have known) of the copyright infringement. Id. (citations omitted).

For example, in Robert Swedroe, an architectural firm was hired by a developer to prepare plans and specifications in connection with a residential building project. The contract was based off an AIA B141 agreement between an owner and architect. The architect was to initially prepare plans to obtain approval of the governing Planning Board and, upon approval, prepare the permit plans for the residential building. Once the Planning Board approved the project, the developer sold the property to another developer. The new developer, however, hired another architectural firm–that was provided and had access to plans from the initial architect–with the intent on moving forward with the design and construction of the residential building.

The original architect submitted its technical drawings and architectural work to the United States Copyright Office and obtained a Certificate of Registration. (Notably, this satisfied the first prong on the copyright infringement claim as the original architect satisfied statutory formalities). The original architect sued the new developer and new architect for copyright infringement asserting the new architect copied original elements of its design for the residential building project. The original architect also sued the new developer for contributory copyright infringement. The new architect and new developer moved to dismiss the copyright infringement claims. Although the trial court denied the motion to dismiss, the original architect will still need to support the burden of its copyright infringement claims. For more information on the difficulties proving a design professional’s copyright infringement claim, review this article.

Please contact David Adelstein at dadelstein@gmail.com or (954) 361-4720 if you have questions or would like more information regarding this article. You can follow David Adelstein on Twitter @DavidAdelstein1.

A DESIGN PROFESSIONAL OR ARCHITECT’S COPYRIGHT INFRINGEMENT CLAIM…DON’T THINK SO…

Posted on May 24, 2015May 24, 2015 by Edward Garber

A design professional or architectural firm has an uphill battle proving a copyright infringement claim. Why? Because it is hard…very hard…for a design firm to show that another’s design is substantially similar to their original copyrighted design to warrant a finding of copyright infringement.

This uphill burden has been reaffirmed by the Northern District of Florida in Home Design Services, Inc. v. Turner Heritage Homes, Inc., 2015 WL 1482301 (N.D.Fla. 2015). In this case, a residential design was copyrighted. The design firm that owned the copyright for the residential design sued a homebuilder for copyright infringement alleging that the homebuilder built 165 custom homes based on the design firm’s copyrighted design. The jury returned a jury verdict in favor of the design firm for copyright infringement; however, the trial court entered judgment for the homebuilder finding that the design firm failed to prove a copyright infringement claim. That’s right—the jury returned a verdict finding copyright infringement and the trial court entered a judgment for the homebuilder notwithstanding the verdict.

A leading issue in this case was whether the design firm’s copyrighted design was an original design and whether there were differences between the copyrighted design and the homebuilder’s allegedly infringing design. The reason being is that in order to prove a copyright infringement claim of an architectural design:

“For copyright infringement, a plaintiff must prove: (1) ownership of a valid copyright, and (2) copying of protectable elements. In order to establish ownership of a valid copyright, the plaintiff must prove, among other things, that the work is original. Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity. To establish copying, the plaintiff must show as a factual matter that the defendant copied the protected work, and, as a mixed question of law and fact, that the protected expression itself was copied. In the absence of direct proof of copying, a plaintiff may prove copying by demonstrating that the defendants had access to the copyrighted work and that the works are substantially similar. To show access, the plaintiff need not prove actual viewing and knowledge but simply a reasonable opportunity to view the work. The test for substantial similarity for architectural works is whether a reasonable jury could find the competing designs substantially similar at the level of protected expression. [S]pacial depictions of rooms, doors, windows, walls, etc. are not protected. [O]nly the original, and thus protected arrangement and coordination of spaces, elements and other staple building components should be compared. Moreover, given the subtle distinction between protected and unprotected expression, the Eleventh Circuit has recognized that judges, rather than juries, are usually better equipped to resolve questions of infringement. The Eleventh Circuit has further instructed that copyright protection in a compilation is thin, and that modest dissimilarities are more significant than they may be in other types of art works.”

Home Design Services, supra, at *6.

Focusing on whether the design firm’s copyrighted design was substantially similar to the homebuilder’s home design, the trial court found dissimilarities between the designs including, but not limited to, the porches were different, fireplaces were in different locations, elevations were different, hallways had different dimensions and openings, toilets were positioned differently, the nooks had different windows, master bathrooms contained differences, etc. (you get the point…there were differences). Although the design differences were slight when comparing architectural designs, the fact remained that there were dissimilarities to preclude a copyright infringement claim. No matter how modest the dissimilarities truly were, that fact that there were dissimilarities precluded a finding for copyright infringement.

THE UPHILL BURDEN OF A DESIGN PROFESSIONAL’S COPYRIGHT INFRINGEMENT CLAIM

Posted on March 1, 2014March 1, 2014 by Edward Garber

Architectural firms hate the idea, as they should, that the creativity embodied in their design concepts could be used by another firm. For this reason, architectural firms sometimes submit their design to the United States Copyright Office to obtain a copyright and are very protective over this design. If the firm gets fired, it does not want another firm to utilize and get credit for a substantially similar design. This makes sense. However, it is very challenging for an architectural firm to establish and prove copyright infringement simply because conceptual components of their copyrighted design were utilized by another architect. The recent Southern District opinion in Sieger Suarez Architectural Partnership v. Arquitectonica International Corp., 2014 WL 585883 (S.D.Fla. 2014), contains a lengthy discussion, a portion of which is reflected below, of what an architect needs to establish and prove to support a copyright infringement claim. Again, it is a challenging burden, to say the least, as exemplified by this opinion in which the plaintiff architect’s copyright infringement claims were dismissed against a defendant architect dealing with the design of a condominium in Miami.

In this case, the plaintiff architect was hired in 2000 to design plans for a condominium. The plaintiff completed the plans and obtained a copyright in 2006. Subsequently, the ownership group decided to replace the plaintiff architect and hired the defendant architect. The plaintiff learned that construction of the condominium was underway based on the defendant architect’s plans that plaintiff contended infringed on its copyrighted design (for the same condominium). The plaintiff architect filed this copyright infringement lawsuit and the defendant architect moved to dismiss the complaint.

Regarding copyright infringement of architectural works, the Southern District stated:

“Copyright infringement requires that a plaintiff owned a valid copyright and a defendant copied constituent elements of the work that are original…..[A] plaintiff may establish copying by demonstrating that the defendant had access to plaintiff’s work and that the plaintiff’s and defendant’s works are substantially similar.
***

Architectural works, and other compilations, have ‘specific copyright protection’ in that the copyright protects the exact work itself; only subsequent works which copy the work’s specific expressions and designs will infringe upon that protection. The precise expression in the plan which was submitted to the United States Copyright Office is the work which is protected. However, certain standard elements which do not comprise the expression are not protectable. For example, the Eleventh Circuit has held that there are a finite number of ways buildings such as condominiums, homes, and offices can be arranged and such arrangements are not protectable. This must be the case because, to borrow a phrase used by the Ninth Circuit in a photography case, ‘the range of protectable expression’ is limited by the fact that the work is architectural.

A plaintiff cannot use copyright to control the right to unoriginal arrangements, and so the protection afforded architectural works must be specific. An architectural copyright is not ‘minimal’ or ‘thin’ because the copyright does protect what it was issued to protect, i.e. the plan submitted to the Copyright Office. A copyright of an architectural work is a full-fledged copyright which protects the specific expression embodied in the plan which was issued a copyright by the Copyright Office.” Sieger Suarez, supra, at *3, *4 (internal quotations omitted).

Regarding whether architectural works / designs are substantially similar, the Southern District explained:

“[T]his Court endeavors to illuminate the substantial similarity analysis in architectural copyright infringement actions. Emphasis must be placed on the protectable expression of an idea, not the idea itself. As the Eleventh Circuit has noted, ‘The substantial similarity required for infringement … must be substantial similarity of expression, not substantial similarity of ideas.’
***
Substantial similarity in an architectural work is a high standard; it revolves around the entirety of the specific work embodied in the copyright, but relies on the expression found in specific places, such as:

(1) The manner by which a design is achieved

Two distinct architectural designs may create results that are visually similar without one infringing upon the other. A copyright protects the manner by which the end result is created, not the appearance itself. This is the essential distinction in the expression/idea dichotomy. Two works which have similar outward appearances or shapes are not necessarily substantially similar. Indeed, the Eleventh Circuit has ‘caution[ed] trial courts not to be swayed in an infringement action by the fact that two works embody similar or even identical ideas.’ Factors to consider in determining how a design is achieved include if internal or external structures are used, if the structures used to achieve the design are part of the work’s support system or are removable, and the importance of those structures in relation to the work as a whole.

(2) Use of structures and details
An architectural work’s use of ornamental structures and details is integral to the work’s expression of an idea. Details such as what features adorn the exterior and interior of a work are avenues for an architect to express his vision for the work. These features also make one building distinguishable from another. These details provide the work with elements that others do not have and, thus, tend to establish the specific expression protected by a copyright.

(3) How an individual interacts with the space
The manner in which an individual interacts with a structure is a product of the copyrighted plans and affects the way a building is used. For example, comparing the use and placement of entrances, walkways, doors, and elevators can reveal important differences in architectural expressions. These features alter how much square footage there is for living space, how an individual relates to a room, and for what purpose the space is used.

(4) Location

A structure’s location may be more determinative of the arrangement of elements, such as bedrooms, kitchens, and stairways, than an architect’s originality. For example, houses may be arranged in such a way as to have the bedroom windows face the prevailing winds, or particular views for rooms may be favored in certain areas. Thus, the general arrangement of a floor plan, which may be dictated in whole or in part by a structure’s location, is not necessarily protectable. Sieger Suarez, supra, at *5, *6 (internal quotations and citations omitted).

The Southern District, applying these factors, held that the defendant architect’s design was NOT substantially similar to the plaintiff’s copyrighted design. The Court noted that while the designs were conceptually similar, any relationship between them was purely intellectual, and that certain architectural features such as the number of condominium units per floor, the condominium’s height, and the height of the floor’s ceilings are not protectable under a copyright.

While it is still a good idea for architectural firms to submit their design to the United States Copyright Office for copyright purposes, the firm needs to understand that it is a tough burden in actually prevailing on a copyright infringement claim. Perhaps, the architect wants to specifically address this situation in its direct contract with the owner. There are numerous ways this circumstance can be negotiated in the contract, particularly the termination provision, but the fact will remain that the provision would be governed by contract law and not copyright law. On the other hand, if the owner has paid the architect for all of the work / services the architect performed, the owner is going to want certain ownership of the concepts it paid for. And, perhaps, the owner will even agree to indemnify the architect for the utilization of any design concept the architect submitted for the project that the owner uses if it elects to terminate the architect, whether for convenience or for cause.