(written by David Francis for ACEC/PA's newsletter Design of the Time - March 2008)

Most design professionals understand that their designs are protected by United States copyright laws. However, many do not fully understand how the copyright law works or what design professionals can do to fully protect their work. Similarly, many design professionals do not appreciate the potential harm that can be caused by using another’s design without permission. This article is intended to give a brief roadmap to the copyright law.

What work is protected?
The copyright law protects “original works of authorship.” A key word in this phrase is “original.” The standard for determining what is “original” is very low. Any element of “originality” is typically sufficient to afford copyright protection, no matter how small. The specific layout of common items—if original—can be sufficient to trigger copyright protection. Only the original items are copyrighted.

Copyright protection does not extend to purely utilitarian items with no original content. Further, it only extends to elements of originality as expressed in a medium (e.g. drawings)—not to ideas, procedures, processes, systems, methods of operation, concepts, principles and discoveries. For design professionals, copyright protection typically extends to the drawings and, for architects, the architectural work itself.

When Does Protection Commence?
Copyright protection springs into existence the moment the work is created. There is no requirement that a design professional register the work with the copyright office in order for it to be copyrighted. However, as explained below, there are material benefits to registering documents with the copyright office.

Is a Copyright Notice © Required for Protection?
No. This is no longer required; however, it can be helpful. It puts others on notice that the work is copyrighted.

Who Owns the Copyright?
The author of the original work is the owner of the copyright by default. For design professionals, the “author” is the company that produces the work, not the actual employee who does so. Designs prepared by employees of an engineering company are “Works Made For Hire,” because the engineering company owns the copyright in the item. The design is not a “Work Made for Hire” just because the engineer had a contract with an architect or owner for engineering services.

Copyright ownership can be modified by an enforceable agreement that identifies the specific entity/individual that shares and/or owns the copyright. Project owners sometimes want to own the copyright for the design. If confronted with this request, you may want to suggest the issuance of a license to use your work. This can alleviate your concerns about infringements on your design as well as address the owner’s desire to use the design in the future.

Copyright ownership can also be transferred or sold. It is typically best to ensure that any such transfer or sale is set forth in writing to avoid misunderstandings and disputes.

Copyright Registration
Copyrighted documents are registered with the United States Copyright Office. Registration requires preparation and submission of a Form VA (Visual Arts) along with copies of the documents to be registered. The forms, and helpful publications, can be downloaded at www.copyright.gov. Although the process is somewhat simple, mistakes on the Form VA can have adverse consequences. Accordingly, you should consider getting legal advice on how the forms should be prepared before submission, at least with respect to the initial registrations.

Works are considered as registered when they are received by the Copyright office, not when the certificate is actually provided. You should expect that a submitted copyright certificate will not be returned for some time after submission of an application for registration.

Why is Registration Important?
Registration is important when enforcing your copyright against an infringer. Having a registered copyright is a prerequisite to bringing an action against an infringer for copyright violations. Moreover, and more importantly, having a registration before the infringement occurs greatly increases the damages available following an infringement.

Copyright Licensing
Others can use a copyrighted document when they have a license to do so. There are two types of licenses. First, there are express licenses to use the copyrighted work. This type of license is set forth in writing, via a contract or licensing agreement. Second, there are implied licenses. These arise from the circumstances and are implied by the court during a dispute.

There has been a great deal of litigation over whether a party has an implied license to use copyrighted information. This will be addressed in an upcoming article.

Licenses can be issued by the owner of a copyright to others. When an owner expresses its desire to own the copyright on the design, you can suggest the issuance of a license which allows the owner to use it in certain ways. You can even issue an exclusive license to an owner.

Licenses can also be issued to other design professionals to use your design in specified ways with specified limitations. Licensing agreements can protect your interest in the copyrighted material (and put money in your pocket) and give the user peace of mind that it is authorized to use the copyrighted items.

Infringement
A party infringes upon your copyright when they copy or use it without authorization. Infringement can be proven with direct evidence or by demonstrating (a) access to the original copyrighted design, and (b) substantial similarity. There has been a great deal of litigation about what is substantially similar as well.

A copyright owner can seek injunctive relief to preclude the infringer’s use of the copyrighted work and damages caused by such use. The copyright law allows for—but does not require—the award of legal fees to a prevailing party. This prevailing party can, in some circumstances, be the defendant. So you should be very careful before filing a copyright infringement lawsuit.

Conclusion
If protection of your design documents from others’ use is important to you, or if you want to use others’ designs, then you should understand the copyright laws.

Read Part 2