Werner Sabo, FAIA, CSI, and Shawn Goodman
In effect for more than 15 years, Digital Millennium Copyright Act (DMCA) has been rarely invoked by architects. However, the handful of cases discussing the act suggests architects could, in certain circumstances, apply it in conjunction with a copyright claim. Architects should also be aware of the elements of this cause of action to avoid being on the receiving end of such a lawsuit.
DMCA contains prohibitions against:
- circumvention of technological measures used by copyright owners to protect their works; and
- tampering with copyright management information.
The act’s purpose is to provide greater protection for the intellectual property rights of record companies and others so CDs, DVDs, and similar works are more difficult to pirate, or at least to discourage such conduct. For parties involved in construction, the second prohibition—found at 17 U.S.C. §1202(b)(1)—is important:
No person shall, without the authority of the copyright owner or the law—
(1) Intentionally remove or alter any copyright management information… knowing, or, with respect to civil remedies under section 1203, having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title.
What is “copyright management information?” DMCA lists eight categories of information, including:
- title and other information identifying the work, including the information set forth on a notice of copyright;
- name of, and other identifying information about, the author of a work; and
- terms and conditions for use of the work.
Examples of DMCA violations would include:
- removing an architect’s copyright notice from the drawings or specifications;
- removing the architect’s name and other identifying information; and
- removing other “terms and conditions for use of the work;” or possibly including notations on drawings that state “not for construction.”
In each case, the person who removes this information would also need to know, or have reasonable grounds to believe, the removal will induce, enable, facilitate, or conceal an infringement of the federal copyright laws.
How does this work in practice? A client comes into an architect’s office and asks the architect to take over a project. The client has the CAD files from the original designer. If the second architect takes those CAD files and removes things such as the prior architect’s copyright notice or name, or changes the title of the work, then there is the potential for a DMCA violation. Before doing any of this, the second architect must ascertain whether the prior architect has either transferred his or her copyright to the client or otherwise agreed to allow the client to do this, usually by means of a license.
Interestingly, courts have held mere copying of an architect’s drawing and omitting references to the initial architect is not the same as “removing” copyright management information. In other words, if one takes a CAD or physical drawing and removes a copyright notice, then DMCA has been violated. However, if one were to base a new drawing on the existing work and omit the same information, then that person is safe. This is not to suggest the Copyright Act has not been violated, only that there has been no transgression against DMCA. One must actually remove or alter the copyright management information from a plaintiff’s product or original work to run afoul of the Digital Millennium Copyright Act.
A builder could violate this law by removing the title block from a set of plans and submitting them to a building department for permits for a site other than the original. An owner could violate this law by obtaining a brochure from a builder, removing the identifying information, and giving the plan and elevation to a different builder or architect for purposes of designing a new home or building.
Architects need to be extremely cautious when a client brings in drawings created by someone else, even when there is nothing indicating the identity of this other author. Merely changing the title of the project could constitute a violation.
The best defense is to always create original work. The next best is to obtain permission from the author to use and modify his or her work. The least desirable alternative (though it is still better than nothing) is to obtain an indemnification agreement from the client. However, this last option does not prevent one from having to defend a lawsuit, and it might be difficult to obtain payment for this cost from a client who is insolvent.
Werner Sabo, FAIA, FALA, is an architect, attorney, and partner at the Chicago law firm, Sabo & Zahn. He is the author of Legal Guide to AIA Documents, now in its fifth edition, published by Wolters Kluwer. Sabo can be reached at firstname.lastname@example.org.
Shawn Goodman is an attorney at Sabo & Zahn. He can be reached at email@example.com.