ARCHITECT-ENGINEERS' COPYRIGHT AND LANHAM ACT PROTECTIONS

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Wise Carter Child & Caraway
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Robert P. Wise
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February 28, 2001

ARCHITECT-ENGINEERS' COPYRIGHT AND LANHAM ACT PROTECTIONS

By:
Robert P. Wise
© 2001

I. The Architect's and Engineer's Copyright Protections

A. The AIA Contractual Copyright Protections

The AIA rewrote the copyright portions of the Owner-Architect and Architect-Consultant agreements in 1997 to clarify and strengthen the copyrights of Architects and their consultants. The new copyright provisions of the two agreements (Article 1.3.2, B141-1997; Article 8, C-141-1997) are written in parallel terms. The Architect-Owner agreement provisions on copyright, stated as bullet points, provide the following protections:

The Architect's and consultant's drawings, specifications and other documents, including those in electronic form, are now termed Instruments of Service. The architects and consultants who create the Instruments of Service are the legal authors and the owners of the documents. Sec.1.3.2.1.
The Architect's and consultant's Instruments of Service are for use solely for the named Project, and no other. Sec.1.3.2.1.
The Architect and consultants as the authors/owners of their documents retain all common law and statutory copyright protections in their Instruments of Service. Sec.1.3.2.1.
The Owner, upon execution of the agreement with the Architect, obtains a nonexclusive license (i.e., a restricted right) to reproduce the Architect's and consultant's Instruments of Service solely for construction, use and maintenance of the Project. Sec.1.3.2.2.
The Owner retains the nonexclusive license only if the Owner complies with all obligations of his agreement with the Architect, including prompt payment of all sums due. Sec.1.3.2.2.
Any termination by the Owner of the Owner-Architect Agreement prior to completion of the Project automatically terminates the Owner's license. The Owner must then stop making reproductions and to return the Instruments of Service to the Architect within seven (7) days. Sec.1.3.2.2.
Only if the Architect is later adjudged in default of the Owner-Architect Agreement will the Owner be provided a new, second non-exclusive license to complete, use and maintain the Project. Sec.1.3.2.2.
The Owner can not assign his license, except that he may authorize Contractors, subs, sub-subs and materialmen and equipment suppliers to copy the Instruments of Service for their use on the Project. Sec.1.3.2.3.
The Architect's and consultant's Instruments of Service are considered unpublished documents (thus not requiring copyright registration), and the filing of the documents with regulatory officials is not considered a publication of the documents. Sec.1.3.2.3.
The Owner may not use the Instruments of Service for future additions or alterations of the Project, or for new or different projects, without the written agreement of (and presumably compensation to) the Architect and consultants. Sec.1.3.2.3.
In the event the Owner makes an unauthorized use of the Instruments of Service, the Owner agrees the Architect and consultants have no liability for the unauthorized use. Sec.1.3.2.3.

B. The Federal Copyright Act Protections

The contractual copyright protections for Architects and their consultants that the 1997 AIA contracts provide work in tandem with the remedies provided by the Federal Copyright Act. Although the AIA contracts extend direct contractual copyright protections to the architect and consulting engineers, one may need to cite the Federal Copyright Act in order to invoke the copyright protections against third parties who have not signed the AIA agreements. As we will see, an architect or engineer does not need to register plans and specifications with the Copyright Office in order to receive the primary protections of the Act as long as the documents remain "unpublished"to the public at large, although the author of the work will forego some statutory remedies by not doing so. The U.S. Code sets forth the Federal Copyright Act at 17 U.S.C. § 101 et seq.

1. Protection for Architectural Works and Documents

The Federal Copyright Act provides protection, "in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced or otherwise communicated...." 17 U.S.C. § 102 (a). The Congress in 1990 amended the Act to make it clear that it protects "architectural works" as well as the more generic term used earlier of "pictorial, graphic, and sculptural works." 17 U.S.C. § 102 (a) (5), (8).

As long as the author has independently created the work and it reflects some creativity, it is subject to protection under the Act, "regardless of how simple the design." Richmond Homes Management, Inc. v. Raintree, Inc., 862 F. Supp. 1517, 1523 (W.D. Va. 1994). Further, "[t]he level of originality required for copyright protection is not high." Id. Indeed, the work need only show a "minimal degree of creativity". Id. The author need only have provided:

'...something more than a merely trivial variation, something recognizably his own. Originality in this context means little more than a prohibition of actual copying.'

Raintree, supra, 862 F. Supp. at 1523. Nor is there any "requirement in copyright law that the plans be particularly unusual; they simply must be original."
Id. at 1526.

Thus, for example, in Raintree the court found that a simple house design should be afforded the protection of the Copyright Act. Raintree, supra, 862 F. Supp. at 1526. Indeed, "[m]ass-produced house floor plans are commonly protected." Id.

The Act provides full protection to the exterior of the building as well as to the floor plans since the Act protects "structures", not just design documents. Raintree, supra, 862 F. Supp. at 1525. The author's choices of "overall form" and "arrangement and composition of spaces" are protected if they are independently made, even if the underlying component parts taken alone would not be considered original. Id. at 1524; See definition of "architectural work" at 17 U.S.C. § 101. Thus, one can prove a copyright violation by proving that the infringer copied either the plans or structure of the interior or exterior. Raintree, supra, 862 F. Supp. at 1526. Also, it is not necessary to show that the plans ever resulted in a constructed building to sue for their infringement. Hunt v. Pasternack, 192 F. 3d 877, 878 (C.A. 9 (Ariz.) 1999).

Further, "original creations that are derived from preexisting works are also subject to copyright protection as 'derivative works.'" Raintree, supra, 862 F. Supp. at 1526, citing 17 U.S.C. § 101. A derivative work is original enough for protection if it has "a 'faint trace of originality' and if it provides a 'distinguishable variation' from the original material." Id. at 1524. For example, a mass-produced home design was protected since even though it was, "comprised of standard features, the way these features are arranged is 'what distinguishes houses one from another....'". Id. at 1524

2. Copyright Registration Not Required But Advantageous

The good news is that an architect-engineer need not register his Instruments of Service with the Copyright Office in order to obtain relief under the Act against third party infringers. The Copyright Act, amended in 1990, carries over the long standing common law copyright remedies available to the owners of unpublished works. Therefore, the architect-engineer whose plans are copied or used without permission, but whose documents are not registered, may still seek under the Copyright Act injunctive relief, actual damages, and, to the extent they do not overlap with actual damages, any profits of the infringer gained by his wrongful acts. 17 U.S.C. § 503, §504. In showing the infringer's profits, the owner need only provide proof of the gross profits the infringer would have received; the burden then shifts to the infringer to show offsetting expenses and any portion of profits attributable to factors other than the copyrighted work. 17 U.S.C. § 504 (b).

However, the Copyright Act provides incentives for registration. Registration creates a presumption that the owner has a valid copyright, thus diminishing the probability that there will be a dispute that the plans are sufficiently detailed or original to receive copyright protection. Raintree, supra, 862 F. Supp. at 1524. Further, registration provides the owner an alternative remedy to infringement of Federal statutory damages. "'Statutory damages are designed not solely to compensate the copyright owner, but also to deter future infringement." Johnson v. Jones, 149 F. 3d 494, 504 (C.A. 6 (Mich.) 1998), quoting F.W. Woolworth Co. v. Contemporary Arts, Inc., 344 U.S. 228, 233, 73 S. Ct. 222, 97 L. Ed. 276 (1952).

If the owner registers the copyright with the Copyright Office, the owner can elect to request the court to impose statutory damages instead of actual damages, in an amount up to $30,000. Further, if the owner can prove that the infringement was willful, the court can increase the statutory damages up to $150,000. 17 U.S.C. §§ 412, 504. The alternative of statutory over actual damages could be important because the owner may find it difficult to prove beyond speculation that he lost potential work or income, or that the infringer enjoyed ill gotten profits, as a result of the infringement.

Another incentive for registration is that it permits the court in its discretion to award attorneys fees and costs under the Act. 17 U.S.C. §§ 412, 505. The threat of attorneys fees can provide a huge incentive for the infringer to settle up early with the copyright owner.

At the first hint of possible future copyright problems, such as the threat by the owner to terminate the design contract, the architect-engineer might wish to register the copyright for his work immediately, provided he can do it before the actual infringement begins. Section 412 (1) of the Copyright Act provides that, "no award of statutory damages or of attorney's fees...shall be made...[if] infringement of copyright in an unpublished work commenced before the effective date of its registration." Thus, the registration needs to take place before the commencement of the infringement for statutory damages and attorney's fees to become available under the Act.

In the event someone other than the true owner of the copyright registers a copyright in a work in their name, the imposter will find he has no standing to sue under the Act, and his copyright will be declared invalid. For instance, in Richard J. Zitz, Inc. v. Pereira, 225 F. 3d 646 (C.A. 2 (N.Y.) 2000), a developer drew up a floor plan and asked that his father create a model for a house. Since the developer was not a licensed engineer, but needed stamped documents to file for a building permit, he asked a design firm to prepare and stamp plans for submission. The developer then submitted the plans and model to the Copyright office which issued the copyright after receiving assurance the developer was the co-author of the plans and that it had received a transfer of the design firm's rights. Id.

The developer sued an infringer of the plans, but the lower court, which the appeals court affirmed, found that the developer was not the author of the plans and had misrepresented the facts to the Copyright Office. The court declared the issued copyright invalid since the developer's father, not the developer, created the model, and the design firm prepared the submitted plans. "'The author is the party who actually creates the work, that is the person who translates an idea into fixed, tangible expression entitled to copyright protection.'" Pereira, 225 F. 3d at 646. It was no help to the developer that the plans and model contained his ideas. Id.

3. Infringement of Architectural Works and Documents

A designer may make out a prima facie case of infringement by proving that he is the owner of a valid copyright and that the defendant copied his architectural work or documents. Since the courts recognize that proof of direct copying may be difficult to come by, it is sufficient to create a presumption of copying that the designer prove the defendant had access to the copyrighted work or plans and that there is substantial similarity between the protected work and the alleged copy. Ale House Management, Inc. v. Raleigh Ale House, Inc., 205 F. 3d 137, 143 (C.A. 4 (N.C.) 2000); Raintree, supra at 1526. For example, in Raintree, supra, the owner proved access by circumstantial evidence that the infringer put a copy of the protected design in his computer, and that the infringer's plans were a "second generation" rendering "likely created by copying, erasing, and slightly altering" the original plans. Raintree, supra, 862 F. Supp. at 1526. Also, the defendant admitted to having one of the plaintiff's brochures showing his house design. Id. It is therefore only necessary to show that the infringer had a reasonable opportunity to view or copy the infringed work. Ale House Management, supra at 143.

In Raintree the plaintiff proved substantial similarity by the testimony of an expert witness that she considered the protected and infringed upon plans to be by the hand of the same author. Raintree, supra, 862 F. Supp. at 1527. The court also quoted Judge Learned Hand's formulation that the test of substantial similarity is whether a person comparing the two works, "'unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same.'" Id, quoting Peter Pan Fabrics v. Martin Weiner Corp., 274 F. 2d 487, 489 (2d Cir. 1960). Also, the test should be based on an "'overall impression of the two works, not on a detailed comparison of the two works, focusing on individual differences'". Id., quoting Ganz Bros. Toys v. Midwest Importers, 834 F. Supp. 896, 901 (E.D. Va. 1993). Thus, it is not necessary to show that all elements of a plan or structure were copied, but only that a substantial part was copied. Id. at 1527.

Once the plaintiff has put on a prima facie case of infringement by showing access and substantial similarity, the burden then shifts to the defendant rebut the presumption by showing that the work in question is the product of his own independent creation so that any similarities are coincidental. Raintree, supra at 1527. In Raintree the defendant tried to rebut the presumption by coming forward with an original sketch, but the plaintiff showed in the trial that it was nothing more than a tracing of the plaintiff's floor plan. Id.

In Raintree the plaintiff was able to hold liable not only the primary infringer, the Raintree corporation, a home builder, but also under state law principles the corporate developer and the individual sole shareholder of the building and development corporations. Raintree, supra at 1528. Therefore, the reach of copyright remedies can be wide indeed.

4. Not All Copying is Infringement

Not all copying is prohibited infringement since the Copyright Act specifically excludes protection of an "idea" or "concept". 17 U.S.C. § 102 (b). The policy reason for the limitation is clear: "'To grant property status to a mere idea would permit withdrawing the idea from the stock of materials that would otherwise be open to other authors, thereby narrowing the field of thought open for development and exploitation.'" Attia v. Society of New York Hospital, 201 F. 3d 50, 54 (C.A. 2 (N.Y.) 1999), quoting 4 Melville B. Nimmer and David Nimmer, Nimmer on Copyright § 13.03[B] [2][a]. Ideas, therefore, remain in the public domain. Id.

For example, in Ale House Mangement, Inc., supra, the Ale House Management sued the competing Raleigh Ale House for copying the plans of its establishment. However, the court found that a "casual comparison" of the floor plans of the two ale houses showed "at most, the imitation of an idea or a concept, but not a copying of the plans themselves." Ale House Mangement, Inc., supra, 205 F. 3d at 143. The court noted that the challenged plans did not display the same dimensions or proportions as the protected plans. Id. Further, it was not sufficient to make out an infringement action that the challenged plan, "copied the concept of using an island or peninsula-shaped bar to bisect a seating area which has booths on one side and stool seating on the other." Id. Since the complaint concerned a general concept rather than an original form of expression, it was not subject to protection under the Copyright Act. Id.

Similar problems for the plaintiff's claim appeared in Attia v. Society of New York Hospital, supra, 201 F. 3d 50. There the plaintiff architect, under a consulting contract, prepared a conceptual plan for the renovation of the New York Hospital on the upper east side of Manhattan. The plaintiff prepared drawings and sketches showing an extension of the hospital on a platform over F.D.R. Drive by the East River. The hospital terminated the consulting contract with the plaintiff and created a competition for modernization of the hospital. The plaintiff's firm entered the competition but was not selected. The plaintiff later decided to sue when he saw an illustration of the winning submission in the New York Times that included a plan to erect a new building over F.D.R. drive. Attia, supra, 201 F. 3d at 51-52.

The court in Attia found that the plaintiff's schematic drawings, while containing creative ideas as to how the hospital could extend a new addition over F.D.R. drive, were "highly preliminary and generalized", showing the design at, "a very general level of abstraction." The defendant's schematics, by contrast, prepared over several years, were "a detailed expression" of a plan. Attia, supra, 201 F. 3d at 55.

Specifically, the court in Attia found that the following similarities in the defendant's drawings, among others, were not an infringement because they did not go beyond the concepts and ideas of the plaintiff's drawings:

Placement of a new structure over F.D.R. Drive in the same location.
Use of a 3-story high truss to transfer the weight of the new building over F.D.R. Drive to columns on either side of the Drive.
Alignment of the new floor heights to mesh with the old.
Alignment of corridors in the new and old buildings.
Placement of a new main pedestrian area in the same location in the new building.
Placement of a mechanical floor in the same location in the new building.

Attia, supra, 201 F. 3d at 55.

Further, the court in Attia noted that the plaintiff's drawings were only conceptual, "no more than rough ideas of general nature", not detailed plans that would enable construction. Attia, supra, 201 F. 3d at 55-56. The court stated that while some in some schematic sketches might be worthy of protection (e.g., Frank Lloyd Wright's preliminary sketches of the facade of the Guggenheim Museum), the drawings in this case "consisted only of generalized ideas and concepts", and that what was copied if at all was not protected. Id. at 56. The court then went on to note that a comparison of the plans revealed major differences in execution of the otherwise similar concepts. Id. at 57.

Similarly, a court also refused to protect the claim of an architect with a "New York Theme" for a proposed shopping center in Las Vegas in Domingo Cambeiro Professional Corporation v. Advent, 211 F. 3d 1273 (C.A. 9 (Nev.) 2000). The plaintiff architect presented a rendering and scroll of his concept, but the defendants brought in other architects who then proceeded to design a New York theme hotel-casino for them, resulting in construction of the "New York-New York Hotel" in Las Vegas. The court found, though, that the the plaintiff's and defendant's works shared only the idea of a New York skyline on a building facade. The court noted that the long established New York City building icons themselves were in the public domain. 211 F. 3d at 1272. The court further stated:

Extrinsic analysis revealed that [plaintiff] Cambeiro's works were entitled to thin copyright protection at best. Cambeiro was entitled to protection only for its particular selection, arrangement and coordination of New York City icons. Thus, even on an intrinsic level, Cambeiro would have been obliged to prove 'virtual identical copying.'

*******

...Cambeiro essentially sought a monopoly on the idea of a building whose structure incorporates New York City icons. This far exceeds the purpose and scope of the copyright laws.

Advent, supra., 211 F. 3d 1273.

Finally, it is not a copyright infringement to view or photograph a building if it is located at a public site or is visible from a public space. R.M.S. Titanic, Inc. v. Haver, 171 F. 3d 943, 971 ft.n. 5 (C.A. 4 (Va.) 1999).

II. Lanham Act Protection For Design Works

The Federal Lanham Act may provide an additional means for recovery against an infringer who attempts to palm off another's architectural works as his own. The Lanham Act provides sanctions against deceptive acts of unfair competition. 15 U.S.C. § 1125 (a). The act creates liability for "[a]ny person who, on or in connection with any goods or services...uses in commerce...any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which...is likely to cause confusion, or to cause mistake, or to deceive...as to origin...of his or her goods, services, or commercial activities." 15 U.S.C. § 1125(a)(1)(A). A plaintiff can receive an award of attorney's fees under the Lanham Act in "exceptional cases." 15 U.S.C. § 1117.

For example, in Johnson v. Jones, 149 F. 3d 494 (C.A. 6 (Mich.) 1998), a client fired her architect, Mr. Johnson, who had prepared house plans and refused to pay him because they had been unable to reach final agreement on the terms of an owner-architect contract. The client's attorney erroneously assured the client's new architect, Mr. Tosch, that he could use the plans of the first architect for the project since he considered the client a co-owner with the first architect of the drawings. Mr. Tosch, thus reassured by the client's attorney, proceeded to remove Mr. Johnson's name and seal from the house plans, substituted his own name and seal on the documents, had them approved by the city inspectors, and used them for completion of the project. Jones, 149 F. 3d at 499.

Mr. Johnson sued both the client and the substitute architect, Mr. Tosch, for the use of his plans. Although Mr. Johnson was entitled to actual damages and the infringer's profits under the Copyright Act, he was unable to obtain statutory damages or attorney's fees under the Act since he had not copyrighted the plans before the infringement commenced. Jones, 149 F. 3d at 504-506. However, Johnson was entitled to attorney's fees under the Lanham Act since the court found that his was an "exceptional case". 149 F. 3d at 504. An exceptional case exists when the infringement is "malicious, fraudulent, willful, or deliberate". Id. at 503. The court found the case was exceptional because Tosch "literally stole Johnson's plans", deliberately disguising the true origin of the plans in violation of the Lanham Act. It was not lost on the court that Tosch, who had expended no time on a good design, "received the benefit of countless subcontractors' seeing Johnson's excellent work and thinking that it was actually the work of Tosch", and that potential home buyers would have been similarly misled. 149 F. 3d at 504. The court also found it of no help to Tosch that he had relied on the erroneous advise of his client's attorney rather than seeking competent counsel of his own. Id. The Lanham Act may therefore provide a second, at times much needed, means of relief against an infringer.

III. Fee Collection Issues

1. Contract Actions for Fees

The usual action for unpaid fees would be for breach of contract. The AIA contract requires the Owner to pay services and expenses monthly upon presentation of an invoice. Section 1.3.9.1, B141-1997. The AIA contract is careful to state that the Owner may not deduct from the Architect's compensation because of the effect of penalties or liquidated damages the Owner may be withholding from the contractor, or on account of changes in the Work not caused by the Architect. Id. The AIA contract is further careful to address the important changes to the architect's work or to the Project that justify the architect in charging additional fees for extra work. Section 1.3.3.2, B141-1997. The listed changes that can result in additional fees to the designer include: changes in the Owner's instructions requiring changes to the Instruments of Service, changes in the codes requiring changes to the plan documents, delays in the Owner's decisions, changes in the size, quality, complexity, scheduling or budget of the Project, the failure to perform of the Owner, his consultants or contractors, or the requirement for attendance at public meetings or legal proceedings to which the Architect is not a party. Section 1.3.3.2, B141-1997.

2. Fee Actions in the Absence of a Contract

The original architect in the Johnson v. Jones case, supra, Mr. Johnson, found himself unpaid and without a contract with the owner he had worked for. The owner requested that Mr. Johnson work while they attempted to come to terms on a contract, but in the end the Owner terminated the architect's work because they were unable to agree upon a contract after discussing several versions. Jones, 149 F. 3d at 499. Nonetheless the court was able to award Johnson for the value of his unpaid invoice, almost $20,000, under the equitable doctrine of quantum meruit. Jones, 149 F. 3d at 497.

The term quantum meruit "means literally 'as much as he deserves'". Redd v. L & A Contracting Co., 246 Miss. 548, 151 So. 2d 205, (Miss. 1963). The purpose of quantum meruit is to avoid the unjust enrichment of the party receiving the value of work performed. As the Court stated further in Redd:

'When a person employs another to do work for him, without any agreement as to his compensation, the law implies a promise from the employer to the workman that he will pay him for his services as much as he may deserve or merit.'

Redd, 151 So. 2d at 207, quoting Bouv. Law Dict. 2d Ed., p. 800.

In Mississippi quantum meruit relief is only available if the parties themselves have not entered into an express contract. Further, "the claimant must have a reasonable expectation of payment for services. The claimant's measure of recovery is the reasonable value of the services." Ellis v. Anderson Tully Co., 727 So. 2d 716, 719 (Miss. 1998). Therefore, the equitable doctrine of quantum meruit may provide a design professional a means to recover payment for his work even if an action of breach for contract is unavailable to him.

The design professional who has performed work without a contract, but pursuant to invoices for work performed, may wish to use the Mississippi Open Account Statute. The Open Account Statute permits a court to add attorneys fees to the claim of the prevailing party on an open account claim. § 11-53-81 Miss. Code Ann. The statute requires that the open account claimant send a demand letter itemizing the claim by certified mail to the party who has failed to pay. If the party does not pay within thirty (30) days of his receipt of the letter, requiring the claimant to file suit, the claimant can request that the court add attorneys fees to the award. Id.

3. Architect's and Engineer's Lien Rights

Architects and engineers do have lien rights against private projects provided that they have direct contracts with the Owner. Section 85-7-131 Miss. Code Ann. provides that, "[e]very house, building, water well or structure of any kind" is subject to the lien of the statute "for labor done or materials furnished, or architectural engineers' and surveyors' or contractors' service rendered" in construction or repairs. The Chancery Clerk in each county of Mississippi maintains a book entitled "Notice of Construction Liens" as a part of the land records where lien holders may file and record their liens. § 85-7-133. The statute states the lien, "shall not take effect unless and until some notation thereof shall be filed and recorded" in the Notice of Construction Liens book. Id. The lien statutes provide a relatively short statute of limitations for suit. A claimant must initiate suit on the lien within twelve (12) months after the date the money claimed, "became due and payable, and not after". (Emphasis added). § 85-7-141. Further, note that the state, as sovereign, is not subject to private liens. Key Constructors, Inc. v. H&M Gas Company, 537 So. 2d 1318, 1321 (Miss. 1989).

4. Stopping Work

If the design professional finds himself in a fee dispute with the Owner it is probably preferable for him in most instances to continue work on the Project while resolving the matter through the relatively expeditious means of arbitration as permitted by the AIA contract. See Section 1.3.5, B141-1997. Termination of the agreement or the threat of termination should be considered only as a last resort, as where it becomes clear that the Owner is insolvent and can not perform further. Otherwise the Owner is likely to claim that the Architect terminated his agreement without cause, or while in breach of the Architect's own obligations, and countersue the Architect for any delay, disruption or additional expense to the Project caused by the Architect's early termination of his services. Stopping work or threatening to stop work, even temporarily, are always remedies that carry the greatest risk, although it may become appropriate where it is clear the Owner is no longer capable of carrying out his obligations.

5. Owner's Offsets For Claims

The Owner will be able to offset the fee claims of the design professional to the extent he can show the Architect was in breach of his obligations and delayed or damaged the Project. For example, a design professional will be unable to enforce payment of his fee if he fails to design in accordance with the applicable building or zoning codes, unless the designer can show he was provided with erroneous designs by the owner or relied on a misinterpretation of the codes by the Owner's attorney. See 1 Steven Stein, Construction Law ¶ 5.04 [4] at 5-177-178.

IV. Coordination of CAD Drawings with Manufacturer's Details

The design professional should be careful to see that use of CAD provided detail selections does not lull him into failing to think through connections with manufacturer or contractor provided details in shop drawings. Otherwise easily made choices of CAD details can create conflicts or ambiguities in the Project documents that the contractor or Owner may claim is the fault of the design professional.

V. Conclusion

The Federal Copyright Act and the AIA contracts work together to permit the designer to recover his actual damages and any wrongful profits of an infringer of copyrights even if the designer has not registered the work with the Copyright Office. However, timely registration will permit the designer to recover statutory damages spelled out in the Act and, in an appropriate case, attorney's fees. 17 U.S.C. §§ 412, 504, 505. Registration under the Act also provides a presumption of valid copyright. Copyright registration is therefore not required but advantageous. Further, it is advisable for the designer to register the copyright at the first hint he could have a dispute with the Owner that could result in the Owner's attempting at some point to change designers.

It is sufficient to create a presumption of copying that the designer prove the defendant had access to the copyrighted work or plans and that there is substantial similarity between the protected work and the alleged copy. However, not all copying is actionable infringement. The Copyright Act specifically permits the copying of a mere "idea" or "concept". As a general rule, therefore, rough schematic drawings will be more difficult to protect than more detailed design development or construction drawings unless it is shown there was direct tracing. Generic concepts and ideas alone, such as placement of standard elements, may be difficult to protect unless direct copying is shown.

The Lanham Act prohibiting unfair competition in interstate commerce provides additional remedies since it prohibits false or misleading concealment of the true origin of design services. 15 U.S.C. § 1125(a)(1)(A). Resort to the Lanham Act may be necessary where statutory damages and attorney's fees are unavailable under the Copyright Act because of lack of registration before commencement of the infringement.

The AIA contracts endeavor to protect design professionals from incurring items of extra work without payment by the Owner. In the absence of a contract, the design professional may have a cause of action for his fees in quantum meruit, and may wish also to examine the possibility of an award of attorney's fees in addition to recovery of unpaid invoices for fees under the Mississippi Open Account Statute. § 11-53-81 Miss. Code Ann.

In general, the designer should avoid stopping work because of a fee dispute with the Owner, and resort to arbitration of the dispute instead while work proceeds on the Project. Contract termination or the threat of termination carries risks that should be avoided unless it becomes clear the Owner through insolvency or otherwise will no longer be able to carry out his obligations.

The design professional should avoid being lulled into creating ambiguities in the design documents by choice of CAD details that could conflict with manufacturer or contractor provided shop drawings.