Expert Commentary

Protection of Architectural Plans: Finding and Catching the Infringer

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?


Design Liability
September 2007

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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