As an experienced intellectual property lawyer, your knowledge of copyright law starts to kick in. But you are not very familiar with copyrights on house plans and wonder how you could be an infringer since you did not copy any plans. Then you begin to wonder whether your contractor from the 1990s weathered the real estate storm and is still in business.¹ You even begin to worry about whether there could be a copyright problem with your new house; after all, you did not think to ask the contractor where the floor plan came from or who created it.² Before firing off an angry denial letter to FHC’s attorneys, you decide to do some research.

Architectural Works Copyright Protection Act

The Copyright Act³ was amended in December 1990 to satisfy the United States’ obligations under the Berne Convention to provide copyright protection for the designs of certain types of structures.⁴ Before the Act was amended, it was generally thought not to be an infringement of the copyright on architectural plans for someone to build a three-dimensional structure using the design disclosed in the plans.⁵ This was because copyright does not protect ideas, and using the art or work disclosed by the copyrighted publication is controlled by patent law; therefore, building a structure depicted in architectural plans is not an infringement of the copyright on the drawing.⁶ In other words, buildings were considered to be “useful articles” not protected by copyright law. Thus, another impetus for a change in the law was the complaints of architects and other home plan designers that they had no practical way to protect the value of their creations. The 1990 amendment was supposed to change this by creating a new category of protected subject matter—architectural works.

The sponsor of the bill amending the Act stated, “My bill, in keeping with the Berne Convention, is intended to cover an architect’s artistic expression. It does not encompass methods of construction, or purely functional elements comprised of standard features, such as plain doorways, arches, windows, or roofs, nor to the Levittowns of the country.”⁷ This statement of intent to cover only the artistic expression is echoed in various parts of the legislative history.⁸ “Architecture is a form of artistic expression that performs a significant societal purpose, domestically and internationally.”⁹ “Architecture plays a central role in our daily lives, not only as a form of shelter or as an investment, but also as a work of art. It is an art form that performs a very public, social purpose.”¹⁰ There are

two types of architectural language, “internal” and “poetic.” Internal language is “intrinsic to building in its most basic form—determined by pragmatic, constructional, and technical requirements.” Poetic language is “responsive to issues external to the building, and incorporates the three-dimensional expression of the myths and rituals of society.” The intent of the legislation is to protect only . . . “poetic language.”¹¹

The distinction between art and function in useful articles covered by copyright law is frequently evaluated under a separability test; if a useful article incorporates a design that is nonfunctional, only the nonfunctional portion of the useful article can be copyrighted.¹² Because the purpose of most buildings is to be functional, Congress tried to get around the art/function issue by explaining in the legislative history that it did not intend for “the copyrightability of architectural works [to] be evaluated under the separability test applicable to pictorial, graphic, or sculptural works embodied in useful articles.”¹³ Instead,

[a] two-step analysis is envisioned. First, an architectural work should be examined to determine whether there are original design elements present, including overall shape and interior architecture. If such design elements are present, a second step is reached to examine whether the design elements are functionally required. If the design elements are not functionally required, the work is protectible without regard to physical or conceptual separability.¹⁴

Congress also intended the courts to perform this two-step analysis.

Under such circumstances, the Copyright Office should issue a certificate of registration, letting the courts determine the scope of protection. In each case, the courts must be free to decide the issue upon the facts presented, free of the separability conundrum presented by the useful articles doctrine applicable for pictorial, graphic, and sculptural works.¹⁵

Not every type, category, or aspect of an architectural work or its design is intended to receive copyright protection. For example, “building” is defined to mean only structures that are permanent, stationary, and suitable for occupancy by humans, as opposed to bridges, dams, mobile homes, and boats. Furthermore, standard features and standard configurations of spaces are not protected.¹⁶

By creating a new category of copyrightable art that can be embodied in a drawing, when a drawing is already protected as a pictorial or graphic work, Congress recognized this raised a potential copyright registration question. The legislative history states that the intention is to keep separate a copyright in an architectural work and a copyright in plans and drawings. “An individual creating an architectural work by depicting that work in plans or drawing[s] will have two separate copyrights, one in the architectural work (section 102(a)(8)), the other in the plans or drawings (section 102(a)(5)).”¹⁷

Idea v. Expression

Ideas may not be copyrighted; only the expression of an idea can be protected.¹⁸ For an architectural work, the line between idea and expression is not always easily found. Of course, a completed, three-dimensional building is an expression of the architectural work in its fullest sense. As one moves along the spectrum of other embodiments—from computer-generated 3D models, to fully detailed construction drawings, to marketing plans used on websites, to rough sketches on a napkin—is there a point where the line between idea and expression is crossed?

Since 1990, many courts have wrestled with claims of copyright on architectural works. Some courts have treated them the same as a copyright on a musical composition or a novel and simply relied on the fact that the Copyright Office had issued a certificate of registration, which gives the copyright a presumption of validity.¹⁹ Other courts have delved deeper and taken into consideration the fact that considerable architectural information and practices were already in the public domain at the time the architectural work was created.²⁰

In Attia v. Society of New York Hospital,²¹ for example, the court dealt with the design of an addition to a hospital where the architect of some schematic drawings claimed that the construction drawings prepared by another architect infringed on his copyright. The court observed:

The problem underlying Plaintiff’s claim of copyright infringement, however, is that not all copying from copyrighted material is necessarily an infringement of copyright. There are elements of a copyrighted work that are not protected even against intentional copying. It is a fundamental principle of our copyright doctrine that ideas, concepts, and processes are not protected from copying. . . .

Although no single “principle can be stated as to when an imitator has gone beyond copying the ‘idea’ and has borrowed its ‘expression,’” the inquiry often turns on the level of abstraction or generalization of the works being compared. . . .

The problem of distinguishing an idea from its expression is particularly acute when the work of “authorship” is of a functional nature, as is a plan for the accomplishment of an architectural or engineering project. As a generalization, to the extent that such plans include generalized notions of where to place functional elements, how to route the flow of traffic, and what methods of construction and principles of engineering to rely on, these are “ideas” that may be taken and utilized by a successor without violating the copyright of the original “author” or designer. On the other hand, to the extent that the copier appropriates not only those ideas but the author’s personal expression of them, infringement may be found.²²

The idea/expression issue was addressed in the context of a house design in Kootenia Homes, Inc. v. Reliable Homes, Inc., where the court observed:

It is more common to choose a design of a future residence by selecting one among derivations of historical precedents, such as Tudor, Cape Cod, Colonial, French Provincial, Shaker Style, or even Farm House. Moreover, the market forces drive a tendency towards similarity and conformity in single-family residences. . . .

An approved builder in an exclusive subdivision arranges the basic rooms and spaces in a single-family residence to accommodate how the family wishes to live. Many features of a designed residence are common in many other homes. Efficiency concerns and the need for functional living in the home inevitably constrain the number of variations in the configuration of the rooms and spaces. Common elements and generic features are shared by all homes. The Copyright Act does not protect the ideas for juxtaposing these living spaces.²³

Another court found there have to be scope limitations on architectural copyrights in house designs because “[t]he variety of ways a two-story rectangle can be divided into three bedrooms, two baths, a kitchen, a great room or living room, closets, porches, etc., is finite.”²⁴ “The features that ‘are treated like ideas and are therefore not protected by copyright’ are those that are, ‘as a practical matter indispensable, or at least standard, in the treatment of a given idea.’”²⁵

Although no actual counting of the cases has been done, it appears that many more cases involve houses than commercial buildings (excluding those cases where the plans for a commercial building were used to construct another building). It could be that this is due to the difference in degree of specificity found in commercial designs versus house plans. In a commercial building that is going to be competitively bid, such as a government office building, the design will be very detailed and specific so the bids can be compared on an “apples-to-apples” basis. House plans, on the other hand, are not nearly so specific; they will typically show room size/configuration, arrangement of rooms, door and window locations, rooflines, and appliance and counter locations. House plans do not usually spell out such things as floor material (e.g., carpet, tile, or hardwood), wall material, light fixtures, hardware, and interior or exterior colors; this gives the builder and/or buyer considerable flexibility to customize the house or put it in a certain price range. When comparing one “house shell” to another “house shell,” it is not surprising that houses competing for the same type/category of purchaser might end up with similar floor plans.

One commentator summed up the idea/expression issue with house designs as follows:

The courts should be particularly wary of granting protection in the area of noncustom residential housing where there is a vast, existing body of public domain material, the originality (if any) is frequently de minimis, and the adverse consequences of overprotection are potentially quite serious. A barely copyrightable architectural work will, like all “thinly” original works, rarely be infringed.²⁶

The courts in your jurisdiction, unfortunately, have not given much attention to the idea/expression issue, so an argument along those lines may not be all that helpful in disputing FHC’s claim. Therefore, you start taking a closer look at the marketing plan for FHC’s design enclosed with the letter. While you can see some general similarities in the front elevations and the arrangement of rooms in the FHC plan and the design your realtor put on her website, you can create a long list of differences between your former home and FHC’s plan, not to mention all the details and decor that you added to make that house your home.

What is it, though, that is supposed to be compared to determine whether copying occurred—FHC’s floor plan and your house, or FHC’s floor plan and what the realtor used? It seems to make sense that it would be the former. Your “architectural work” is your house, not a sketch of its floor plan. So, why would anyone, instead, compare two drawings? One argument made by home plan designers is that all houses are built from plans, so the house is actually a derivative of the plan,²⁷ rather than the plan being a limited representation of the architectural work; accordingly, it should be the plans that are compared for similarity, which is also a lot easier to do.

Standard of Comparison

One thing that is clear is that neither your former home nor any drawing of it is an exact match to FHC’s design. But you know that exact copying is not required to prove copyright infringement. The test is whether the designs are “substantially similar.” Two works are substantially similar when the ordinary reasonable person would recognize that one work was taken from another.²⁸ Sometimes that mythical reasonable person (who you hope will be sitting on the jury) is asked to compare the “look and feel” of the two works to determine substantial similarity. However, can you expect a reasonable person to compare the look and feel of a house with lines drawn on a sheet of paper? For that matter, because an architectural works copyright is supposed to be on the design of a building, not on the drawing of it, can you expect a reasonable person with no architectural training to interpret two sheets of paper to imagine what two houses would look like if one were built according to each plan?

The substantial similarity comparison/analysis would be easier if FHC’s design had something unusual about it, say an odd type of room or an odd arrangement of rooms. But it does not. All of the kitchen appliances are in the kitchen; the master bath is off the master bedroom; the stairway goes to the second floor hallway, rather than to the second floor bathroom. Is the similarity in the plans due to copying or to something else, like some arrangements of spaces have been used in many houses for many years because that is what home buyers want? It sure would be nice to know the origin of the plan you worked from so many years ago. Even if you could find the contractor, why do you think he or she would still have any records after all these years?

There is a light at the end of this tunnel, though. A line of cases has developed where the courts have treated home plan designs that have no unusual features as compilations (i.e., the collection and assembling of preexisting materials arranged in such a way that the resulting work as a whole constitutes an original work). The best example is Intervest Construction, Inc. v. Canterbury Estate Homes, Inc.²⁹ There the court stated that “while a creative work is entitled to the most protection, a compilation is entitled to the least, narrowest or ‘thinnest’ protection.”³⁰ The court exhibited the two plans at issue for everyone to see (unlike most reported cases) and determined that one did not infringe the other because they were not “super-substantially similar” (i.e., virtually identical). It will be pretty easy to argue that modest dissimilarities between your home and FHC’s plan are more significant than they are in other types of copyrightable art works.

Statute of Limitations

Another thing that bothers you about FHC’s claim is that you lived in your former home a lot longer than the Copyright Act’s statute of limitations. If there were a copyright problem, should not FHC have notified you long ago (and certainly before you spent the money on a bigger house)? How are you supposed to find relevant documents, witnesses, and information after all these years? There must be a statute of limitations defense!

A civil action under the Copyright Act must be “commenced within three years after the claim accrued.”³¹ However, the Act does not provide clear guidance as to when a claim “accrues.”

Two alternative theories have been used, in general, to determine when legal claims based on federal law begin. One says that a claim accrues on the date when everything has occurred that would allow the claimant to file suit (i.e., the “injury rule”). The other says that a claim accrues when the plaintiff knows or has reason to know of the injury upon which the claim is based (i.e., the “discovery rule”). Both rules have been around a long time.

Since at least the 1800s it has been the rule that, unless the statute provides otherwise, “[a]ll statutes of limitation begin to run when the right of action is complete.”³² “A cause of action is created when there is a breach of duty owed the plaintiff. It is that breach of duty, not its discovery, that normally is controlling.”³³ An exception to this rule arises from equity; all statutes are tolled by fraudulent concealment.³⁴

The “discovery rule” appears to originate from the Supreme Court’s decision in Urie v. Thompson,³⁵ where the Court found that a cause of action for exposure to silicon dust “accrued” when the injured worker discovered he had silicosis, not when he was first exposed to the dust, even though there had been no fraudulent concealment of the injury or its cause by the defendant. Over time, the discovery rule morphed into being used by all the federal circuit courts in most situations where the statute of limitations did not prohibit its use. However, the Supreme Court in TRW Inc. v. Andrews³⁶ raised some questions about how statutes of limitation are to be interpreted and used.

TRW was a Fair Credit Reporting Act case where the Ninth Circuit had held that there is a general federal rule that a statute of limitations does not begin to run until a party knows or has reason to know that it has been injured, unless Congress has expressly legislated otherwise. The Supreme Court reversed, stating that it had only recognized equitable tolling of statutes of limitation in cases of fraud or concealment and had only recognized a prevailing discovery rule in cases of latent disease and medical malpractice. While acknowledging that the lower federal courts generally apply the discovery rule when a statute is silent on the issue, the Supreme Court stated, “But we have not adopted that position as our own. And, beyond doubt, we have never endorsed the Ninth Circuit’s view that Congress can convey its refusal to adopt a discovery rule only by explicit command, rather than by implication from the structure or text of the particular statute.”³⁷ In his concurrence, Justice Scalia, citing several Supreme Court decisions, stated that the Court should have taken the opportunity to restate the traditional rule that a statute of limitations begins to run at the time the plaintiff has a “complete and present cause of action.”³⁸ He went on to say that the idea of a general injury-discovery rule applied by the courts of appeal is “bad wine of recent vintage.”³⁹

So, how does this affect the copyright statute of limitations?

After TRW was decided, the District Court for the Southern District of New York examined the copyright statute of limitations in Auscape International v. National Geographic Society.⁴⁰ The court noted that “[o]ther circuits have applied a discovery rule in infringement cases, albeit without any analysis.”⁴¹ The court also noted that the Supreme Court has not ruled on the issue of whether the injury rule or the discovery rule should govern in determining the accrual of copyright infringement claims.⁴² The court then followed the reasoning set out in TRW, i.e., that federal courts should look “beyond the specific language of a statute to its text and structure in determining what rule should apply when the statute is silent.”⁴³ The court began by looking at the text of the statute and found nothing to indicate “Congress’ intent with regard to when an infringement claim accrues. . . . Where the text and structure of the statute lend no guidance, the Court must turn to the legislative history.”⁴⁴ Examining the hearings and the reports of both houses of Congress on § 507(b), the court found that two things become apparent. First, the goal was to provide the Copyright Act with a fixed statute of limitations to alleviate the confusion caused by the use of a different state’s statute of limitations.⁴⁵ Second, Congress intended the statute of limitations period to begin at the date of infringement.⁴⁶ Thus, the “injury rule” should be used in copyright cases.

Nimmer on Copyright⁴⁷ agrees with the Auscape analysis, but no courts outside of New York have adopted this reasoning. The only circuit court to consider the issue since TRW is the Third Circuit in William A. Graham Co. v. Haughey.⁴⁸ That case was appealed twice to the Third Circuit, and the two panels appear to have struggled to come up with consistent rulings. The first panel had little trouble dismissing the “injury rule” argument, finding that the differences in the wording between § 507(a) and (b) (i.e., “arose” v. “accrued”) clearly meant that Congress, when it used “accrued,” intended the “discovery rule” to apply in civil copyright cases.⁴⁹ However, the second panel had to backtrack on the significance of the use of “accrued.” The issues on appeal in Graham II forced the court to acknowledge that

accrual is the event whereby a cause of action becomes complete so that the aggrieved party can begin and maintain his cause of action. . . . [T]he question is whether all of its elements have come into existence such that an omniscient plaintiff could prove them in court. At that point the cause of action is “complete,” and has therefore accrued.⁵⁰

The second panel affirmed the decision of the first by saying that various statutory and judge-made rules operate to toll the running of the limitations period; the federal discovery rule is one of them, and it applies to copyright.⁵¹

This leaves you with the question: What did Congress intend when it added a statute of limitations for civil copyright infringement claims in 1957? As the Third Circuit acknowledged in Graham II, “accrued” had (and still has) a well-recognized meaning that did not include a requirement of actual knowledge of a cause of action by the claimant. Although the Supreme Court had created the “discovery without fraud” concept eight years earlier in Urie, it is very doubtful that this decision, which was based on equitable principles, was thought by Congress to have changed the definition of “accrued.” Furthermore, Congress had expressly made a distinction between actual knowledge and accrual in several statutes of limitation enacted prior to 1949.⁵² When Congress wanted the claimant’s actual knowledge to be a factor in determining whether the statute of limitations had expired, it knew how to do it when the Copyright Act was amended in 1957.

There is another legal concept that should be noted in your analysis. When courts interpret federal statutes, they “normally assume that, when Congress enacts statutes, it is aware of relevant judicial precedent.”⁵³ So, if the Third Circuit is correct that, in the absence of an explicit directive, all statutes of limitation are to be read with a judicially created “discovery rule” gloss, there would be no point in Congress enacting a statute of limitations that incorporated any form of an actual knowledge factor. In other words, if Congress agreed that all statutes of limitation incorporate the “discovery rule” unless it provides otherwise, it would not need to include any form of a “discovery rule” in any statute of limitations. Yet, Congress has done just that many times in the years since 1957.⁵⁴ Does this mean that Congress does not intend for all statutes of limitation to incorporate a universal “discovery rule?”

Conclusion

Once your head stops spinning, you realize that the cards are stacked against you in fending off the claim of FHC. Because you are not in the Southern District of New York, your statute of limitations defense probably is not going to get much traction. Only a few courts have been willing to tackle the idea/expression argument, and most are content to rely on the presumption of validity that arises when the Copyright Office issues a registration certificate. Because there is no innocent infringer defense to a claim for recovery of your profits, you have nothing to work with on damages. So, about the only thing you are left with is the “substantial similarity” issue.

Then it hits you! If Congress had just adopted a definition of “architectural work” that said an embodiment consisting of drawings had to be complete—i.e., sufficiently detailed that it left no room for the builder to exercise discretion on how to construct and finish it out—you would not be facing this distressing situation. The Copyright Office would not have accepted FHC’s half-finished design in the first place. Maybe it is time to write your Senator and Congressman about the problems that were created when Congress passed the Architectural Works Copyright Protection Act.

As you ponder how to respond to FHC, you hope the judge in your district has already rendered a decision in an architectural works case that follows the “super-substantial similarity” standard used in the Eleventh Circuit. And you wish you had gone ahead and moved to Florida instead of staying close to the in-laws, however much they will be helping with the triplets.

Endnotes

1. You begin to wonder all sorts of things at this point. Did FHC send a letter to your purchaser saying it would be a copyright violation to resell the house? (Something similar was attempted in Christopher Phelps & Assocs., LLC v. Galloway, 492 F.3d 532 (4th Cir. 2007).) Can your purchaser claim that the warranty of clear title you gave her is now clouded due to the copyright issue? Is this something that is covered by title insurance?

2. Given the millions of floor plans that can be found on the Internet and the difficulty in searching for any particular plan in the Copyright Office’s records, it is impossible to determine whether the plan you used looks like a plan that has been copyrighted.

3. 17 U.S.C. §§ 101 et seq.

4. T-Peg, Inc. v. Vermont Timber Works, Inc., 459 F.3d 97, 109 (1st Cir. 2006).

5. Id.; Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218, 1228 (11th Cir. 2008).

6. Robert R. Jones Assocs., Inc. v. Nino Homes, 858 F.2d 274, 277–80 (6th Cir. 1988).

7. 136 Cong. Rec. E259 (daily ed. Feb. 7, 1990) (statement of Rep. Kastenmeier).

8. H.R. Rep. No. 101-735 (1990), reprinted in 1990 U.S.C.C.A.N. 6935.

9. Id. at 5.

10. Id. at 12.

11. Id. at 18 (footnote omitted).

12. Leicester v. Warner Bros., 232 F.3d 1212, 1219 n.3 (9th Cir. 2000).

13. H.R. Rep. No. 101-735, at 20.

14. Id. at 20–21.

15. Id.

16. 37 C.F.R. § 202.11.

17. H.R. Rep. No. 101-735, at 19.

18. 17 U.S.C. § 102(b).

19. Id. § 410(c).

20. Charles W. Ross Builder, Inc. v. Olsen Fine Home Bldg., LLC, 827 F. Supp. 2d 607 (E.D. Va. 2011), rev’d, 496 F. App’x 314 (4th Cir. 2012).

21. 201 F.3d 50 (2d Cir. 1999).

22. Id. at 53–55 (citations omitted).

23. No. Civ. 00-1117, 2002 WL 15594, at *4 (D. Minn. Jan. 3, 2002) (citations omitted).

24. Howard v. Sterchi, 974 F.2d 1272, 1276 (11th Cir. 1992).

25. Trek Leasing, Inc. v. United States, 66 Fed. Cl. 8, 13 (2005).

26. William F. Patry, Patry on Copyright § 3:108 (2008).

27. An example of this argument is found in Dream Custom Homes, Inc. v. Modern Day Construction, Inc., 773 F. Supp. 2d 1288, 1309–10 (M.D. Fla. 2011).

28. Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 829 (11th Cir. 1982).

29. 554 F.3d 914 (11th Cir. 2008).

30. Id. at 921.

31. 17 U.S.C. § 507(b).

32. Clark v. Iowa City, 87 U.S. (20 Wall.) 583, 589 (1874).

33. Unexcelled Chem. Corp. v. United States, 345 U.S. 59, 65 (1953).

34. Holmberg v. Armbrecht, 327 U.S. 392 (1946).

35. 337 U.S. 163 (1949).

36. 534 U.S. 19 (2001).

37. Id. at 27–28.

38. Id. at 36 (Scalia, J., concurring).

39. Id. at 37.

40. 409 F. Supp. 2d 235 (S.D.N.Y. 2004).

41. Id. at 243 n.34.

42. Id. at 242.

43. Id. at 244.

44. Id.

45. Id. at 245.

46. Id. at 245–46.

47. 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 12.05 (2011).

48. (Graham I), 568 F.3d 425 (3d Cir. 2009); (Graham II), 646 F.3d 138 (3d Cir. 2011).

49. Graham I, 568 F.3d at 434.

50. Graham II, 646 F.3d at 146 (internal quotation marks omitted).

51. The Supreme Court denied certiorari. USI MidAtlantic, Inc. v. William A. Graham Co., 130 S. Ct. 503 (2009); USI MidAtlantic, Inc. v. William A. Graham Co., 132 S. Ct. 456 (2011).

52. 15 U.S.C. §§ 77www, 78r.

53. Merck & Co. v. Reynolds, 130 S. Ct. 1784, 1795 (2010).

54. 12 U.S.C. §§ 2277a-6(b)(2), 5010(a)(2); 28 U.S.C. §§ 2409a(g), 2712(b)(2); 50 U.S.C. § 2811(c)(2).