Legal Briefs

Copy Right

Learn all the facts when resuing development designs.

In a time of high costs, credit uncertainty, and a desire by some developers to either reuse past architectural plans or use other developers’ designs to save money, a question arises about whether builders can utilize plans created by architects who are no longer engaged in a project. This also leads to the question of how developers or architects can protect themselves from theft of their designs. Copyright law suggests that the answers to these questions may depend on how detailed the plans are.

A number of U.S. cases have focused on whether architectural plans are individual expressions of ideas entitled to copyright protection or simply the embodiments of more-generalized concepts that can be used by any builder or developer. These cases follow the 1990 amendment to the Copyright Act, which added protection for architectural works and “the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The 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.”

In the case of Attia v. Society of the New York Hospital, in which a New York court ruled that some designs may be copied depending on what stage the drawings are in, gives commercial real estate professionals some insight on how to prepare should this issue arise. It also enables them to recognize the contours of copyright infringement by assessing and minimizing the risk in using another’s plans.

Case Overview

In Attia, architect Eli Attia alleged that New York Hospital and its architects copied his drawings for the hospital’s renovation and modernization project. Originally, the hospital/developer engaged Attia to create a concept for the renovations, and he worked for several months on drawings and sketches that met the hospital’s needs. After viewing his concepts, the hospital hired him to work with another architect to develop the ideas further and create more detailed plans. Unfortunately, the relationship between the two architects soured, leading the hospital to terminate its arrangement with Attia.

Soon after, the hospital held a design competition for the renovations, and Attia again bid for the work, but the hospital awarded the project to another architectural group. Based on the new group’s designs, Attia believed that the new architects used his original designs. He sued the architects and the hospital/developer, seeking $40 million and proper credit for the designs.

The Outcome

Attia contended that the hospital’s new drawings misappropriated unique components of his design, including at least 20 individual design elements. However the court noted that not all use of copyrighted material is infringement and that ideas, concepts, and processes are not protected from copying. Therefore, the more general or abstract the work, the less likely that it contains original expression that is protected.

The court also found that the problem of distinguishing an idea from its expression is particularly acute when the authorship is of a functional nature, such as an architectural or engineering project. If plans include generalized notions of where to place functional elements, how to route the flow of traffic, and what methods of construction and principles of engineering to rely on, these ideas may be used without violating the original author or designer’s copyright. However, if the copier appropriates not only those ideas but the author’s personal expression of them, infringement may be found.

The court ultimately found that Attia’s booklets and drawings contained creative ideas, but they were highly preliminary and general. The hospital/developer’s schematic design drawings constituted a detailed expression and any similarities did not go beyond the concepts and ideas contained in Attia’s drawings. Since his original drawings did not show how his ideas would be expressed or realized in a finished plan, the court held that the hospital/ developer had not copied his plans without permission. However, after reviewing whether the drawings were sufficiently detailed to enable construction, the court explained that it didn’t necessarily mean that only final construction drawings can contain protected expression.

A similar situation can arise when a new developer takes over and improves plans drawn by a departing developer. In the case Danielson v. Winchester–Conant Properties, the court recognized that some aspects infringed on the original developer’s plans but the improved and modified portions didn’t. The court permitted an apportionment of damages saying the first developer was entitled to a portion of the profits based on specific evidence such as five volumes of subsequent and more-detailed architectural drawings necessary to complete the project and efforts by the developer to coordinate logistics, supervise subcontractors, choose and install various amenities, market the development, and sell the condominium units. Evidence also showed that several aspects of the architect’s site plans may have detracted from the development’s appeal.

Lessons Learned

The lesson learned from Attia illustrates that plans or drawings that merely propose use of conceptual elements are not protected by copyright law because at a general level the plans represent ideas. Plans only will be protected if they entail placement of elements and express in detail the manner in which to capitalize on the ideas. For developers to protect themselves, they should have the architect develop the plans to a more-concrete state and make certain ownership of the plans’ copyright is transferred from the architect.

To protect themselves, commercial real estate professionals who are involved in a project’s development phase should ensure there is written consent showing that the architect has assigned ownership of or otherwise expressly licensed plans to the developer. They also should clarify what they can and can’t do with the plans. If there is no written permission, commercial real estate professionals should be prepared to ask the developer or architect questions regarding the original intentions of the designs and if copyright notices were included.

Once the first two steps are accomplished, commercial real estate experts can determine the nature and scope of the plans to see if they were ideas or concepts and what was originally provided. If developers want to use another party’s plans, they should focus the new designs on individual elements and ideas of the originals rather than the overall original design. If these guidelines are properly followed, commercial real estate professionals will be able to minimize the risk of a copyright infringement.

Rory J. Radding

Rory J. Radding is a partner with Morrison & Foerster LLP in New York. Contact him at (212) 468-8146 or [email protected]

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