LAW
Werner Sabo, FAIA, CSI, and Shawn Goodman
Clients sometimes argue they own the copyright for their project if they contribute ideas, sketches, or other information the architect then incorporates into the drawings. Some clients may urge they at least are ‘joint authors’ with the architect. But what do the courts say about this?
A recent New York case is instructive. Sorenson signed an agreement to purchase three adjacent unfinished condominium units. He then hired an architect to prepare plans for a single apartment in those units. The deal fell through, and Sorenson sued the developer. Among the allegations was the developer infringed on Sorenson’s copyrighted plans by providing them to potential buyers and others.The developer defended by disputing Sorenson is the ‘owner’ of a valid copyright. The court found Sorenson had not translated any idea into a fixed, tangible expression entitled to copyright protection (a requirement under the Copyright Act). It was Sorenson’s architect who prepared the plans using AutoCAD. The plans used to register the copyright were copies of plans created by the architect using the software. Sorenson testified he could not create a set of plans using that software, nor did he understand the building code or simple construction concepts. The court also explained the plans registered with the Copyright Office by Sorenson deleted the architect’s title block and copyright information.
Sorenson countered he furnished “detailed instructions” and “sketches” to the architect and claimed there was no attempt to defraud the Copyright Office. The court did not buy this. It stated providing “instructions” or “sketches” to an architect does not make one an “author” of the plans. The court then went on to cite numerous other court decisions that have held that absent unusual circumstances, if a homeowner who lacks architectural training provides “sketches,” “instructions,” or “input” to a professional architect, then the architect—not the homeowner—is the author of the resulting plans.
Finally, the contract between Sorenson and the architect provided “[a]ll drawings and specifications prepared by our office shall remain our exclusive property at all times for the purpose of reproduction.” The court held Sorenson committed fraud on the Copyright Office and, therefore, does not have a valid copyright. This fraud included deleting the information about the actual author of the drawings from the submittal, as well as failing to list the architect on the form required to be submitted to the Copyright Office.
The form agreements prepared by the AIA include specific language about authorship. For instance, AIA B101-2007, Standard Form of Agreement Between Owner and Architect, states:
7.2 The Architect and the Architect’s consultants shall be deemed the authors and owners of their respective Instruments of Service, including the Drawings and Specifications, and shall retain all common law, statutory and other reserved rights, including copyrights.
This language makes it clear the architect is the author, and not the client. In the Sorenson case, the parties apparently did not use an AIA agreement, and the language of that agreement was not the best, but the facts were so one-sided the owner simply could not be considered the author of the plans.
What can an owner who legitimately wants to own the copyright do? While an owner might not be considered the ‘author,’ there are ways he or she can obtain the copyright. One possibility is to make the architect and owner ‘joint authors’ for purpose of copyright. The registration application would then list both parties. This should be clearly spelled out in the agreement between the owner and architect.
Another possibility is to have the architect assign the copyright to the plans. This could be spelled out in a separate document. Such an assignment should be agreed to by the architect only in exceptional circumstances and only if the architect is properly compensated. The scope of that copyright should also be carefully considered because the owner might thereafter be able to prevent the architect from using any of the details or other information contained in those plans on future projects. One should consult with a knowledgeable attorney if faced with this situation.
Werner Sabo, FAIA, FALA, is an architect, attorney, and partner at the Chicago law firm, Sabo & Zahn. He is the author of Legal Guide to AIA Documents, now in its fifth edition, published by Wolters Kluwer. Sabo can be reached at wsabo@sabozahn.com.
Shawn Goodman is an attorney at Sabo & Zahn. He can be reached at sgoodman@sabozahn.com.
Very good article. And I have never understood why an Architect would want to give up their copyright. All we do is intellectual property and we need to take lessons learned from other author types and retain the copyright & ownership.