Protection of Architectural Plans: Finding and Catching the Infringer
September 2007
Your design for your client's dream project
is completed, but then you discover the same structure is being built 30 miles
away using your very own design! Are there any remedies?
by Kenneth
A. Slavens
Blackwell
Sanders LLP
The Federal Court of Appeals for the Fourth Circuit recently looked at the
protection of the design professional's intellectual property in the case
Christopher Phelps & Associate, LLC, v. R. Wayne Galloway,
No. 05-2266, decided on July 5, 2007. This case is a good illustration of the
legal system's mechanism to protect intellectual property rights and how the
system attempts to put the designer where it would have been absent the violation
of those rights.
Background
Mr. Galloway wanted to build his dream retirement home on a lake in North
Carolina. The problem was he did not like what his architect had designed. As
a result, Mr. Galloway and his son-in-law went on a reconnaissance trip to an
expensive residential area on another lake about 30 miles away to find home
with a style suitable for his retirement home. On his road trip, Mr. Galloway
found the look he wanted. The house was being constructed for a Mrs. Gina Bridgeford.
Mr. Galloway's son-in-law asked the superintendent overseeing the construction
of Mrs. Bridgeford's home for a "copy of the plans." The superintendent told
the son-in-law he had to talk to Mrs. Bridgeford. Mrs. Bridgeford consented
to providing a copy of the plans to Mr. Galloway on the condition that Mr. Galloway
not build in the same area as Mrs. Bridgeford's home. Mrs. Bridgeford later
testified that she felt that she had paid for the plans, and therefore, she
owned the plans and could give them to Mr. Galloway.
The problem with Mrs. Bridgeford's belief that she owned the plans is that
each page contained a copyright notice reciting that the plans were protected
under the copyright laws, and that the "original purchaser" of the plans was
allowed to construct "one and only one home" using the plans.
In any event, Mr. Galloway was given a copy of the plans for the Bridgeford
home. Mr. Galloway's alteration of the plans consisted of covering the title
block indicating that the plans were for the Bridgeford residence along with
its address. He replaced that information with the name and address of "the
Galloway Residence," copied the plans, distributed them, and began construction.
The architect that designed the Bridgeford home was from Charlotte, North
Carolina. The design of the Bridgeford home was a derivation of an earlier design
by the same firm with some changes made. The Bridgefords had paid the architectural
firm $20,000 for the design of their home that was subsequently copied and given
to Mr. Galloway.
Acting as his only general contractor, Mr. Galloway began constructing his
new retirement home using the altered Bridgeford house design. During construction,
some of the Galloway subcontractors began checking with the architect, who was
unaware of Mr. Galloway's use of the Bridgeford design for his home, on details
and questions.
One subcontractor concluded that Mr. Galloway was using the plans without
permission and warned Mr. Galloway. Mr. Galloway was warned that he could "get
in trouble constructing a copyright plan." Mr. Galloway responded with a shrug
of his shoulders and something to the effect that "They've got to find me and
catch me first."
The Trial
Once Mr. Galloway was "found and caught," the architect filed suit against
Mr. Galloway for compensatory damages and disgorgement of profits.
At the end of the trial, the jury found that Mr. Galloway had infringed on
the architect's rights and awarded the architect $20,000, which was the amount
the architect's principal testified his firm would have charged Mr. Galloway
if Mr. Galloway would have come to him and asked the firm to design the house.
The jury also found that Mr. Galloway had no profits to disgorge, so, as a result,
there was no award on that element. Thereafter, the architect requested that
the court order Mr. Galloway to return the plans, that the court enjoin the
completion of the Galloway house, and that the court enjoin the lease or sale
of the Galloway house.
The Court of Appeals' Analysis
One of the legal issues on appeal related to the fact that the design that
Mr. Galloway was using that he was given by Mrs. Bridgeport was a derivation
of a design for a project prior to Mrs. Bridgeport's home. The question became
whether the architect was entitled to protection of the entire design or only
the part that was unique to Mrs. Bridgeport's home.
The Federal Court of Appeals for the Fourth Circuit recognized that the architect's
design of the Bridgeford home, the design that Mr. Galloway infringed, was based
on a design prior to the Bridgeford design, and considered how that impacted
the damage assessment by the jury. The court noted that the law is that the
copyright in a derivative work extends only to the new elements contributed
by the author and does not extend to the underlying work. However, when, as
in this case, the author of the derivative work also has a copyright on the
underlying work, there is no need to protect the public domain or the author
of the underlying work, as the entire work is that of a single author.
The court went on that the undisputed facts are that the architect of Bridgeford
home was the author of the design for the home on which the Bridgeford home
was derived. Therefore, the architect owned the copyright in that work, even
though it never registered that copyright.
As a result, the architect was entitled to sue for remedies based on the
infringement of the entire Bridgeford house design, even though that design
contained components of an earlier work created by the architect. The architect
was the owner of all copyrightable elements of the design, the court concluded.
Equitable Remedies Considered
The architect had asked the trial court to enjoin Mr. Galloway permanently
(1) from completing the house based on its design, and (2) from leasing or selling
the house. The architect argued that as the owner of the copyright, only it
could distribute its design, and allowing Mr. Galloway to sell or lease the
house would amount to allowing Mr. Galloway to sell its design. The court of
appeals agreed that it was likely that Mr. Galloway would sell the house at
issue at some point during the time the architect holds the copyright: 95 years.
However, the court refused to enjoin completion of the house, because the house
was already completed.
Second, the court refused to enjoin the sale. The rationale was that the
architect was fully and adequately compensated for the copying of its design.
The architect was awarded an amount that equated to the fee it would have charged
for the design had it been retained by Mr. Galloway, according to the architect's
own testimony. The sale of the house, the court reasoned, would not constitute
a second copy of the design, but merely a transfer of the structure in which
the design was first copied. An injunction against the sale would neither undo
prior infringement nor diminish future copying.
The court also concluded that an injunction against the sale of the house
would be an overly broad remedy. The remedy requested, if granted, would encumber
a great deal of property unrelated to the infringement, including the materials
and labor used, the swimming pool, the fence, and the land beneath the house.
The court refused to issue the equitable relief sought.
Lessons Learned
If only one lesson is to be learned from this, it must be that you need to
be proactive in the protection of your intellectual property rights.
This case demonstrates that though many outside the design professions believe
that they "bought and paid" for the design, those intellectual property rights
remain the property of the designer absent some transfer to another party. However,
as the owner of those rights, you have to act to protect your rights by placing
the copyright notice, registration, and pursuit of those who violate your rights.
Be active in the protection of those rights. You have to wonder where the
architect in this case would have been if it had known of Mr. Galloway's use
and not acted to protect itself. The architect may have wanted more from the
court, but it was placed where it would have been had Mr. Galloway retained
the firm in the first place. The architectural firm actively took steps to protect
its intellectual property and to remain the owner of the protected property.
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