Practicing ArchitecturePracticing Architecture
What are the International Copyright Risks of Working Aboard?
A case study in intellectual property
By Terrence F. Canela, Esq., CAE
The word “plagiarism” derives from the Latin word plagiaries, which means “kidnapper.” Clearly, laws against kidnapping are rather consistent and uniform across the globe: It’s illegal. However, the legal restrictions and enforcements against plagiarism, or its business and commerce cousin copyright and intellectual property, vary from nation to nation and are subject to a considerable amount of legal gray area within the U.S. They’re also critical issues to understand for any architecture firm looking to work abroad.
Domestically, U.S. copyright law as well as the Architectural Works Copyright Protection Act of 1990 (and related case law) let you know what you can, cannot, should, and should not do. But architects and their firms are increasingly multinational organizations. This provides a new set of opportunities—and dangers.
The Carpathia project
Let’s say your firm has a growing international practice. You work on projects all over the world, and are savvy and experienced at it. Your firm is approached to consider a large, urban municipal housing project in, say, Carpathia, a fictitious small country in Western Europe with a burgeoning economy. Upon review, you find that the project has already started, and you will be coming into this midstream. It turns out the owner had previously hired an architect in Carpathia to develop the concept and proceed with the design work. Unfortunately, a dispute between the owner and the local architect developed over the design and cost of the project. They amicably decided to part ways. The owner has approached you and wants to retain your firm, and has shown you the specifications developed to date. They would like you to continue the work.
Certainly, your firm is highly ethical, experienced, and cautious, and as such, sees the pitfalls of this approach. You tell the owner, “Sure, we can do the work, but we don’t work from another architect’s work product.” If the owner wants your firm, she’ll have to start over from scratch. The owner agrees, and you strike a deal. You even contact the prior architect to confirm that, in fact, any dispute between him and the owner has been settled. You let the other architect know your firm will be continuing the work, albeit starting from scratch, and the architect is fine with that. All seems well. You consider opening an office in Carpathia.
Your firm starts the design work, but you do have design and site parameters to work with that have been present with the project from the very beginning. The owner had to get zoning approval for the building envelope and master plan, which they successfully obtained. Of course, the zoning approval was based on the prior architect’s work. You proceed with the work, get paid, and start sorting through Carpathian office space real estate listings.
Until you get served with a lawsuit.
The former architect (who has gone bankrupt) has sued you in federal district court in Chicago under U.S. copyright law. Despite the fact that the project is being built outside the U.S., despite the fact that your project’s agreement is governed under foreign law, and despite the fact that neither the owner nor the former architect have any connection with the U.S., this case will be litigated in the Windy City.
At first you think this is just another frivolous lawsuit: The other architect is just trying to extort money and is threatening to drag the firm’s and reputation through the mud. The question is whether your design infringed on the copyright of the first architect’s original plan. And unless you reach a settlement, the trier of fact (i.e., the jury) will determine whether your work is substantially similar to the first architect’s work.
The key phrase here is “substantially similar.” You ask your attorney what it means. Your attorney’s response is that there is very little case law which defines the term, and you will be relying on a lay jury to decide whether your design was substantially similar to the previous architect’s design. It’s not about copying the prior design, but about this nebulous term “substantially similar.”
Under the Berne Convention for the Protection of Literary and Artistic Works, an international treaty of which the U.S. is member signatory nation, U.S. copyright law may be enforced against U.S.-based architects by a foreign national or entity for a project in another Berne Convention member country. In this case, Carpathia is also a member of the Berne Convention, your firm has an office in Chicago, and the prior architect who is suing you has retained a prominent attorney there.
And you end up settling, as you decide the risks of a trial are too great to your reputation. But this happens after you’ve spent many, many hours and financial resources defending your case and negotiating a settlement. What went wrong? You operated in good faith. You communicated with the previous architect. You started from scratch. How could you have avoided this situation?
Smart bosses are fond of saying, “You don’t get hit by the bus you see coming.” No matter how careful you are, no matter how much due diligence you perform, there is no absolute insulation. That said, here are some pointers to make the risks of working abroad more manageable:
• While you should always be careful about taking over a project that’s already been designed, even when starting over be even more careful when working internationally. Cultural differences impact discussions and negotiations, as well as expectations. Use counsel from the country in which the owner, project, and prior architect is located. This is particularly critical during difficult economic times, when clients may be restarting projects that have been abandoned for several years.
• Understand that even if you are starting from scratch, if your work follows that of another architect no longer attached to the project, you may have certain pre-existing parameters that are based on a prior design.
• Make sure you see in writing that your client has the right to use the prior architect’s work and copyright. The client’s representations about the use of the prior architect’s copyright needs to be clearly spelled out in your agreement. Remember, it will not be your peers who determine if your work is “substantially similar”-- it will more than likely be a lay jury with no greater knowledge of architecture and design than the average person.
• If another architect was involved, you should sit down face to face with him or her. Confirm in writing any discussions you have had with the prior architect, making sure to document any discussions you had regarding the project.
• Do not overlook the circumstances of the disengagement between your client and the former architect. You might find out that your potential client is not ethical, and you should not be involved with them.
• Insist that the owner obtain a formal written release from the prior architect confirming that there are no outstanding contractual or legal issues between them, and get a copy.
It’s perhaps just as likely that you’re the “other” architect: Your client did not pay you, and is still using your design. The Berne Convention is a powerful tool that you can use to bring the client back to the negotiation table to resolve your fee dispute. This document, as well as the additional documentation steps detailed above, may help you avoid legal troubles when practicing architecture abroad from either side of the table.