Let's assume you're very pleased with the design of your new manufacturing facility – so pleased, in fact, that you want to replicate it with only minor modifications at a corporate location in another state. When you contact the architect of the original facility to get further copies of the design documents, he or she shares your enthusiasm for the new project. In fact, the architect is ready to sit down immediately to talk about an appropriate licensing fee for the new building. After all, the architect reminds you, you don't own the design.
You don't?
This may be a shock to many owners, but the architect is probably right. Even though you may have paid for design work on the original building, the architect retains ownership and significant control over the design documents, based on copyright law and the terms of a commonly used owner-architect agreement. If you want to acquire the rights to the design, you need to negotiate the issue up front.
Copyright Protection of Architectural Works
A. What is Protected?
Architectural works created on or after December 1, 1990, are subject to copyright protection. The law defines an architectural work as "the design of a building as embodied in any tangible medium of expression," including any permanent, habitable structure such as houses, office buildings, churches, museums, and even gazebos. By comparison, bridges, dams, tents, mobile homes, recreational vehicles, and boats are not eligible for copyright protection.
As with other forms of expression, copyright protection for architecture is limited to original works. In addition, functionally required elements of a building are not protected by copyright. Thus, standard configurations of spaces, and individual standard features, such as windows, doors, and other staple building components, as well as functional elements whose design or placement is dictated by utilitarian concerns, are not protected.
B. What are the rights?
It is commonly understood that a copyright prohibits copying the work, such as by putting a document in a photocopier and making copies to use, sell, or otherwise distribute. In other words, the owner of the copyright-protected architectural design documents controls who makes copies of those documents and for what purpose. As a result, unauthorized construction of a building based on the unauthorized copying of copyrighted designs may also be an infringing act.
In addition to the right to reproduce the copyrighted work, the copyright owner also has the exclusive right to prepare derivative works based on the copyrighted work, and to perform or display the work publicly. For an architectural work, a derivative work might include any photograph, painting, or other representation of either the design drawings or the building itself.
Recognizing that application of some of these traditional rights to architectural works could cause draconian results, the Copyright Act does include limitations on the copyright for architectural works. For example, the copyright in an architectural work that has been constructed does not prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work – but only if the building in which the work is embodied is located in or ordinarily visible from a public place. In addition, a building owner may make alterations to or destroy a building without the copyright owner's consent.
C. Who Owns the Copyright?
It may come as a surprise to learn that even though the owner pays for the design work, it does not automatically own the copyright in the design documents. The copyright in an architectural work is usually owned initially by the author or authors of the work – namely, the architect and any other the contributors to that work. There are exceptions to cover works of employees, or "works made for hire," but the work of an architect in designing a building for an owner will generally not fall under either of these exceptions. An owner can only acquire the copyright by negotiating a transfer in writing from the copyright holder.
D. What are the implications of infringement?
A violation of any of the exclusive rights of the copyright owner is an infringement of the copyright, which may entitle the copyright owner to an injunction against further infringement, impoundment and disposition of infringing articles, damages and profits, and costs and attorney's fees. For the owner of a building, this could mean not only monetary damages, but potentially an injunction against commencing or continuing construction.
Thus, unlicensed use of protected design documents can result in significant consequences for the owner in several ways. First, the owner must take appropriate steps to ensure it has permission – by license or transfer of rights – to use the design documents created for a project by the architect, both during construction and after. In addition, the owner must be aware of the potential problems that may arise if the design or building created by the architect infringes on someone else's copyrighted design or building.
AIA Document B141-1997 and Ownership of the Design Documents
Where there is no contractual language specific to the ownership and use of the design documents, the copyright laws will apply. However, the importance of this issue is reflected in the fact that today the ownership of design documents is commonly addressed in standard agreements for use by owners and architects. Not all of these agreements are friendly to the owner.
One well-known standard owner-architect agreement was developed by the American Institute of Architects, Document B141-1997. Although many owners routinely sign this agreement, it is weighted toward preserving the interests of the architect. As far back as 1977, the B141 included language providing that the drawings and specifications "remain the property of the Architect." In the 1997 document, this language was further expanded and refined. As a result, B141-1997 includes many pitfalls for the unwary owner regarding the ownership of the design documents.
First, under B141-1997, the design documents are "instruments of service" for use solely with respect to the project, and the Architect is the "author and owner" such that the architect retains all rights, including copyrights, to the documents. This language has been carefully selected in support of the architect's position that she or he has been retained in furtherance of the completion of a construction project and that the design documents are not an end result in and of themselves, but are actually the "instruments" by which this goal is accomplished. In addition, by specifically identifying the architect as the author, this provision protects the copyright of the documents and limits the ability of the owner to claim joint authorship.
By retaining all rights to the documents, the architect controls the right to copy the documents, as well as the use of the documents by others. Obviously, if the architect refused to permit copying and use of the documents, the owner would not be able to pursue construction of the project or maintenance of the building. Accordingly, B141-1997 provides that upon execution of the B141 agreement, the architect grants the owner a "nonexclusive license to reproduce" the documents for the limited purposes of constructing, using and maintaining the building.
Importantly, the license to copy and use the documents is conditioned on full compliance by the owner with all the obligations under the contract "including prompt payment of all sums when due." Should the architect deem the contract terminated prior to completion, the license to use and reproduce the documents likewise terminates, and the owner must return all originals and reproductions within seven days.
Can the owner terminate if the architect defaults? B141-1997 does recognize this possibility and provides that the owner is given a "nonexclusive license . . . to authorize other similarly credentialed design professionals to reproduce, and where permitted by law, to make changes, corrections or additions" to the documents as necessary to complete, use or maintain the project. However, this second license arises only "[i]f and upon the date the Architect is adjudged in default of this Agreement." Thus, when the relationship with the architect goes sour, the owner is faced with a difficult decision to either (1) continue work on the project and risk a copyright infringement claim in the event the courts do not agree that the termination of the architect was proper, or (2) halt construction until a court renders its opinion as to whether the architect was to blame. Neither option is favorable to the owner.
It should be noted that the license granted the owner to reproduce the documents does not extend to use of the documents by the owner for "future additions and alterations" of the building without the architect's prior written consent. While the copyright laws permit the owner to make additions and alterations to a building itself as the embodiment of the design without the copyright owner's consent, this does not extend to the design documents. Thus, should the owner wish to use the original design documents to expand or alter the building in the future, or to build an identical building in another location, the AIA contract would require the architect's consent.
The financial implications of such a contractual limitation are unclear. Should the owner merely wish to provide copies of the documents to another architect or a contractor so that person is aware of the layout of the current building, the architect may not object or may charge a minimal fee. However, the value of the designs will likely be dependent on many factors specific to the work and the bargaining positions of the parties. Given this uncertainty, the owner would be wise to provide for the possibility of such future uses in the contract for the original work, or when possible, to obtain ownership of the design documents.
Summary
In summary, both the copyright laws and the AIA Owner-Architect Agreement, B141-1997, provide significant protections to the author of an architectural work – usually the architect – that could hamper or restrict the owner's activities in constructing a building or in making future changes. Owners would be wise to negotiate alternative language to minimize these risks that provides for the transfer of ownership of the documents and the copyright to the owner, or at least expands upon the license for use provided for in the contract. By taking such precautions, owners can prevent a situation from arising whereby a project is delayed or derailed by design document ownership limitations.