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The Architectural Works Copyright Protection Act ("AWCPA") was signed into law in December 1990. Prior to the Act's enactment, copyright laws provided limited protection for an architect's building design. Architects could previously only obtain protection for their drawings and specifications--not for the building design itself. An architect had no protection or remedy if a substantially similar building was constructed based on his or her building as long as the drawings and specifications were not copied.

The AWCPA retained copyright protection for an architect's drawings and specifications and added protection for three-dimensional fixed structures. The AWCPA has defined "architectural work" as being "the design of a building embodied in any tangible medium of expression, including a building, architectural plans, or drawings. An architectural work under the Act 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. § 702.

A design professional now has two separate and distinct copyrights in her work. The first copyright is in the design of the work, the building itself, as an architectural work. The second copyright is in the plans and technical drawings as a "graphic" or "pictorial" work.

Although obtaining a copyright registration is quite simple when compared to obtaining other types of intellectual property protection, a valid and enforceable copyright does require that the work be original. The same applies to the works of design professionals, i.e., the work still needs to be original for a design professional to have valid and enforceable rights under the Copyright Act. A design professional's work must be independently created and not functional to be considered original and protectable.

When deciding whether or not a work is original, courts will conduct a two-part analysis. The first query is whether original design elements exist in the building or structure. The second query is whether the design elements are functionally required. If the design elements are not functionally required, the originality requirement is met.

A design professional must register his copyrights to obtain full protection under the Copyright Act. Indeed, if there is an unauthorized use of a design professional's works, an infringement lawsuit cannot be commenced in most jurisdictions until a certificate of registration is issued by the Copyright Office. Also, because the Copyright Act is a federal statute , federal courts have exclusive jurisdiction over a copyright infringement action and the Act will preempt certain state-law based claims.

Damages in a copyright infringement action can be significant, as can the litigation costs incurred by enforcing or defending against an infringement. A copyright owner may recover all of his lost profits along with all actual profits made by an infringer. A copyright owner may also have the option to forego profits and claim statutory damages of up to $150,000 per copyright infringed; however, these damages may or may not be available depending on when the work was registered with the Copyright Office and when the infringement occurred. Attorneys' fees and costs may also ultimately be part of an award.

In Richmond Homes Management Corp. v. Raintree, Inc., 862 F. Supp. 1517 (W.Va. 1994), a defendant's copying proved to be very costly. In Richmond Homes, a developer sold 14 homes constructed with an infringing design. The Court ordered the developer to pay its entire net profits from those sales to the plaintiff. In addition, in April 2005 a federal jury awarded an architectural firm $5.9 million in damages after its mansion designs were copied.

Architects and other design professionals should register all plans and drawings with the Copyright Office promptly. Both drawings and specifications, as well as the design of the structure, should be registered. Design professionals and contractors need to determine who owns the copyright in the plans that are being used for a construction project. Never make copies of, or use, plans when the owner of the plans is unknown.

The following checklist is a useful tool for design professionals to properly protect their copyrights:

2. Register the architectural work with the Copyright Office within three months of first publication;

3. Submit two copyright applications for each work: one for the "architectural" work and one for the "graphic" or "pictorial" work; and

4. Specifically include a copyright ownership provision in all contracts retaining ownership in the copyrights and limiting any other use of the work.

Design professionals must be vigilant in protecting their own copyrights and ensuring that they do not infringe on the works of others. Careful consideration of copyright issues will not only aid in avoiding costly litigation and liability, but it will also help the design professional inure the full benefit of her original works.

*Mr. Kobus is a shareholder and an engineer in the firm's Philadelphia, PA office. He can be reached at (215) 575-2713 or tjkobus@mdwcg.com. Mr. Shannon is an associate in the firm's Philadelphia, PA office, and he can be reached at (215) 575-2615 or djshannon@mdwcg.com.