The Sharks are Circling: How a Design Professional Can Protect Its Work in the Digital Age

The technological revolution of the last quarter century has connected the world in ways unimaginable by facilitating the free-and-easy dissemination of information.  This evolution and its attendant ready manipulation and transmission of data has rendered design professionals acutely vulnerable to the theft of their intellectual property.  However, design professionals are not without recourse.  A recent case of ours illustrates the importance of registering the work, and the substantial benefits that emanate from federal copyright protections.

Recently, while prosecuting a fee claim against a developer on behalf of our architect client, it became evident that the developer was utilizing our client’s architectural design plans without authorization.  Thus, the developer had not only failed to pay for the architectural services, but had also stolen the design and was attempting to utilize it to advance the project.  In fact, we soon learned that the developer had retained two successor architects and instructed them to scrub the title block from our client’s plans and proceed as if they were their own.  However, due to the foresight of our client and our firm’s expertise with intellectual property claims, our client was awarded $225,000 for the violations of its copyright protected work.  This award was entered despite the fact that the architect did not suffer any actual damages from the unauthorized use of its Instruments of Service.  Rather, the $225,000 in damages was awarded as a statutory penalty exclusively for the developer’s willful violations of the federal copyright statutes.          

From a legal perspective, this case offers valuable guidance for design professionals seeking to protect their work from unlawful reproduction and use.  Under the law in order to prevail on a copyright infringement claim, the design professional must prove two independent elements:  (1) ownership of a valid copyright, and (2) the unauthorized copying of original elements of a copyright protected work.  As to the first element, it is important to note that copyright protections are not automatic.  On the contrary, it is incumbent upon the design professional to register the work with the Register of Copyrights.  Timing is key here, as statutory damages are only available if the work was registered prior to the infringement or within three months of the first publication of the work.  This is particularly important because actual damages are difficult to prove in copyright cases, and statutory damages permit a court to award the prevailing party attorney’s fees and costs.  In our case, the prudent architect registered the architectural design, which enabled the recovery of damages well-beyond any that could be proven, and also provided compensation for all attorney’s fees and costs incurred in the litigation.    

In regards to proving unauthorized copying, it is imperative that the design professional act to protect itself and its work in its contract for professional services by carefully articulating its ownership of the Instruments of Service and the prerequisites for their use by other entities.  Furthermore, maintaining clear ownership of the Instruments of Service adds leverage when a design professional is looking to recover unpaid fees for its services on the project.  In our case, we utilized strong contractual language to unequivocally demonstrate our client’s ownership, and the failures of the developer to satisfy the contractual requirements to attain a license to use the Instruments of Service.

The protections afforded copyrighted works under federal law is one of the strongest weapons in the design professionals arsenal against those inclined to unlawfully utilize their work without authorization.  Design professionals work too hard and bear too much responsibility to permit their creations to become somebody else’s payday.  Don’t be left emptyhanded on the sidelines as your work comes to fruition.  Hoagland, Longo, Moran, Dunst & Doukas, LLP can help protect your work and aggressively prosecute those that infringe upon it.  We offer legal guidance and representation from registration through litigation.