Werner Sabo, FAIA, CSI, and James K. Zahn, FAIA, CSI
A recent federal case addressed a common question arising among design firms: What use can a departing employee make of designs created while at a prior firm? In Gensler v. Strabala, the large international architectural firm filed suit in federal court against its former design director. Strabala left M. Arthur Gensler & Associates to form 2Define Architecture. On his new firm’s website, he stated he had designed five projects for which Gensler is the architect of record:
- Shanghai Tower;
- Hess Tower;
- Three Eldridge Place;
- Houston Ballet Center for Dance; and
- Tesoro Corporation’s headquarters.
Gensler alleged Strabala had violated the Lanham Act by making a false designation of design services. Specifically, Gensler contended he made a “false or misleading representation of fact” (his role in designing the five buildings) that is “likely to … deceive as to the … connection or association of such person [Strabala] with another person [Gensler]” and to deceive clients about the “origin” of the designs.
The trial court dismissed the suit on the basis the Lanham Act’s applicable provision applied only to “goods,” but not to “services” such as architectural design services. The Seventh Circuit Court of Appeals reversed, holding that services are indeed, covered by that act and a claim for “reverse passing off” does state a cause of action. The case was sent back to the trial court where it will proceed from the point it had been dismissed earlier.
The discussion by the appellate court is interesting. First, it noted this case does not involve copyright because a false claim of authorship, without the making of copies, is outside the scope of copyright law. Next, the court examined whether Gensler has a tenable claim at all. It noted the claim amounts to a charge of fraud. The complaint, however, is short on particulars of what constitutes such fraud. It notes there appear to be three possible ways in which an architect’s assertion he or she designed a building could be false:
1. The architect did not have anything to do with the design, never having worked on the project.
2. The architect worked on the project, but overstated his or her role. For example, the architect may have designed some of a building’s details, but not its basic appearance or attributes.
3. The architect worked on the project and contributed some or even all important features, but the project was so complex no one person bore full responsibility.
The complaint does not allege either of the first two possibilities. Instead, it appears to rely on the third possibility—that buildings are team jobs no single person designs. This argument, however, leaves the question of what statement of Strabala was false. No such false statement is apparent, as would be required by a complaint brought under the Lanham Act. The court came close to ordering the dismissal of the case by affirming the trial court’s dismissal, although on different grounds. However, because the facts were not fully developed in the trial court, the possibility remains Gensler could allege some statement that is false, leaving the door open to further litigation. Thus, the case was reversed on the very narrow ground the Lanham Act does apply to services, contrary to the trial court’s ruling it does only to goods.
What does this mean to the average architect? For a designer leaving to go to a new firm, truth is required. A false statement about what the architect’s role was on the project could result in a lawsuit with a significant judgment. Truthful statements would likely result in a win. Of course, the departing architect does not want to be named in a lawsuit. Keeping the relationship on a professional level would certainly help. The American Institute of Architects (AIA) Guidelines for the Attribution of Credit offer support for situations such as this. This document cites to two “Rules of Conduct:”
Rule 4.201: Members shall not make misleading, deceptive, or false statements or claims about their professional qualifications, experience, or performance, and shall accurately state the scope and nature of their responsibilities in connection with work for which they are claiming credit.
Rule 5.301: Members shall recognize and respect the professional contributions of their employees, employers, professional colleagues, and business associates.
Two “Ethical Standards” are also cited:
Ethical Standard 4.2 Dignity and Integrity: Members should strive, through their actions, to promote the dignity and integrity of the profession, and to ensure that their representatives and employees conform their conduct to this Code.
Ethical Standard 5.3 Professional Recognition: Members should build their professional reputation on the merits of their own service and performance and should recognize and give credit to others for the professional work they have performed.
At the heart of the AIA’s Code of Ethics and Professional Conduct is the admonition architects should be truthful. This includes stating a former employer was the architect for a particular project and a truthful description of the architect’s contribution to that project. An agreement between a departing architect and employer as to what documents (e.g. renderings or photos) the architect can use (and how) would facilitate the transition and lessen the possibility of litigation.
Werner Sabo, FAIA, CSI, and James K. Zahn, FAIA, CSI, are architects, attorneys, and partners in the Chicago law firm of Sabo & Zahn. Both are resource members of the American Institute of Architects’ (AIA’s) National Documents Committee. They can be reached, respectively, at email@example.com and firstname.lastname@example.org.