Publication

In the United States, architects, engineers, and other construction and design professionals may avail themselves of intellectual property law to protect their original designs and construction of certain building structures. The federal Copyright Act was amended in 1976 by the 1976 Act, and again in 1990 by the Architectural Works Copyright Act (“AWCPA”), to expand copyright protection to architectural drawings and to architectural structures or buildings themselves. U.S. trademark law, as codified in the federal Lanham Act and case law, also potentially provides building owners with protection for architectural works where the design of the building, as captured in an image on a good or in connection with the provision of a service, functions as a source identifier for the goods or services.

These intellectual property protections recognize construction and design professionals’ investment of significant time, energy, and money in creating original architectural works, and the inequity of allowing competitors to “profit from another competitors’ hard work and injure that competitor simultaneously.” Value Group, Inc. v. Mendam Lake Estates, L.P., 800 F.Supp.1228, 1234 (D.N.J. 1992).

Copyright Protection

The Copyright Act, as amended by the 1976 Act and the AWCPA, protects “architectural works,” defined as “the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or architectural, engineering, and technical drawings. The protectable work includes the overall form, as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features.” 17 U.S.C. § 102(a)(8). Implementing regulations to the AWCPA define “buildings” as “structures that are habitable and intended to be both permanent and stationary, such as residential houses and office buildings, and other permanent and stationary structures which are used but not inhabited by human beings, such as churches, gazebos, museums, and garden pavilions.” 37 C.F.R. § 202.11(b)(2).

A copyright in the architectural works defined above is created once the drawing or specification is fixed in a tangible medium—i.e., upon the creation of the document or other tangible thing bearing the design. Once the copyright is created, another party may not copy the architectural design plans or re-create the building design even if the plans are not used. 17 U.S.C. § 501(a). However, standard building design elements, “such as windows, doors, and other staple building components, as well as functional elements whose design or placement is dictated by utilitarian concerns” are exempted from copyright protection.

To prevail on a claim of copyright infringement of an architectural work, the owner of the work must prove:

1. Ownership of a valid copyright, which requires that that architectural plans and specifications must have sufficient “originality” whether in the work’s design elements or the “overall form as well as the arrangement and composition of spaces and elements in the design” excluding “individual standard features.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 348, 361 (1991); CSM Investors, Inc. 840 F.Supp. 1034, 1309 (D.Minn. 1994) (citing 17 U.S.C. §§ 101, 102(a)(5) & (8)). A certificate of copyright registration with the U.S. Copyright Office is prima facie evidence of the validity of a copyright. In fact, a copyright registration is a prerequisite to the ability to sue for copyright infringement.


2. Copying or infringement of protected portions of the copyrighted work. Courts analyze this second element by looking at whether there is a substantial similarity between the copyrighted work and the allegedly infringing work, and whether the alleged infringer had access to the copyrighted work.

In architectural copyright cases, the design professional who owns the design must be able to articulate the differences between protectable design features that are ornamental and original and standard building design features that are functional.

Upon a showing of copyright infringement, the AWCPA provides a design professional with legal remedies for “copycat” buildings and other unauthorized uses of the copyrighted building design. These remedies include injunctions to prevent the continued construction of a building based on infringed architectural plans or construction drawings, and monetary damages for the infringement.

Copyright protection extends to both the physical design drawings, and the actual structure itself. Case law has denied copyright protection to interior structures, such as an individual store within a shopping mall. Registration of a copyright may be done at any time, but is a prerequisite to suit as well as for a better set of legal rights (e.g., right to statutory damages).

Trademark Protection

Architectural works are also eligible for federal registration as trademarks under the Lanham Act. According to the U.S. Patent and Trademark Office, the three-dimensional configuration of a building may registered as a trademark “if it is used in such a way that it is or could be perceived as a mark.” PATENT AND TRADEMARK OFFICE, TRADEMARK MANUAL OF EXAMINING PROCEDURE, § 1301.02(c). Trademark holders have the exclusive right to use a trademark, and may license the use of the mark to other parties in exchange for a licensing fee. An infringer of a valid trademark faces liability for damages, including disgorgement of profits obtained from the infringing activities.

Capitalizing on this protection, many owners of well-known buildings such as the Transamerica Building in San Francisco, the Wrigley Building in Chicago, and the Citicorp Center and Guggenheim Museum in New York, have all obtained trademarks for the appearance of their buildings, claiming that the images of the marks serve as indicators of the source of services and goods bearing the images. For example, the Transamerica Building—with its famous triangular tower silhouette—may serve as the source indicator of the financial services provided by Transamerica. As another example, goods targeting tourists at popular metropolises, such as t-shirts, posters, and other souvenirs and memorabilia bearing images of landmark buildings, may also serve as the source of the goods, if the building owners have expanded the use of the marks onto such goods.

**************************************

The Intellectual Property attorneys at Gordon & Rees LLP offer a full suite of transactional and litigation services for all forms of intellectual property, including architectural copyrights and trademarks. For more information, please contact Richard P. Sybert or Hazel Pangan in the Gordon & Rees IP Group.