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

imagesArchitectural 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.
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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.’
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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.

 

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.

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