The United States Court of Appeals for the District of Columbia Circuit recently decided a case with a number of issues of interest to architects. This article will address the copyright issues resulting from Sturdza v United Arab Emirates.1 (The other issues, including the effect of the architect's violation of a licensing law on her contract and quantum meruit claims, as well as others, will be addressed in a future column.)
In 1993, the United Arab Emirates (UAE) held a design competition for a new embassy and chancery building to be constructed in Washington, D.C. The plaintiff, Elena Sturdza, submitted a design, as did the defendant, Angelos C. Demetriou of Demetriou and Associates. Sturdza was informed she had won the competition, and over the next two years, she and UAE conducted contract negotiations. A year later, the owner asked Sturdza to perform geotechnical engineering services and defer billing for those services because they were "about to sign the contract."
In 1996, UAE made several changes to the draft contract and sent the document to Sturdza, who informed them she agreed to their changes. Thereafter, UAE ceased all contact with Sturdza, neither signing the contract nor responding to her repeated efforts to make contact.
In late 1997, Sturdza learned UAE had presented an embassy design to the National Capital Planning Commission. Upon obtaining a copy of the design, she not only learned it was prepared by Demetriou, but that it differed from his competition entry. She alleged his new plan copied and appropriated many of the design features that were hallmarks of her design.
Sturdza filed suit in federal court, claiming copyright infringement along with several other claims. The trial court granted summary judgment in favor of the defendants on many of her claims and dismissed the remainder. On appeal, the court reversed the summary judgment and sent the case back to the lower court for trial on the copyright issue.
To prevail in a copyright action, the plaintiff must prove both ownership of a valid copyright and that the defendant copied original or 'protectible' aspects of that copyright. Here, there was no question the plaintiff had obtained a copyright certificate for her work. As to the second element, the plaintiff must not only show the defendant actually copied her work, but that their work is "substantially similar" to the protectible elements of her own work. In this case, the defendants did not dispute Demetriou actually copied Sturdza's design, arguing instead that she could not prove substantial similarity.
Once again, a two-part test is required to determine whether substantial similarity exists. The first step is identifying what aspects of the architect's work, if any, are protectible by copyright. Here, the law states "no author may copyright facts or ideas." What can be copyrighted, however, is the expression of the author's originality. Anything on a drawing that is factual in nature, or is merely an idea, cannot be copyrighted.
The second step involves the concept of scenes a faire, which is defined as "incidents, characters, or setting, which are as a practical matter indispensable, or at least standard, in the treatment of a given topic." For example, one cannot claim a copyright for the inclusion of windows, bathrooms, and bedrooms in a house where they are expected, but one could copyright the expression of those elements - i.e. their precise placement and size in relation to one another.
Once these unprotected elements, ideas, and scenes a faire are removed from consideration, the next step involves determining whether the allegedly infringing work is substantially similar to the protectible elements of the architect's work. Such similarity exists when the infringing work is so similar to the plaintiff's, a reasonable person would conclude the defendant unlawfully appropriated the plaintiff's protectible expression. This determination requires comparison of the two works' overall look and feel. It is not minute differences that count, but the overall similarities between the two.
In applying these concepts, the appellate court held there were sufficient similarities between the two designs to require a jury trial. When comparing protectible elements such as wind-towers, parapets, pointed domes, arches, and columns, Judge Tatel said:
Thus, the summary judgment was reversed. The court also stated it does not really matter how the defendant arrived at the final plans, only whether they were substantially similar. (Interim designs can often show independent creation by a second architect which can be a defense to a copyright action, but this was not applicable in the Sturdza case.)
Finally, the court also questioned the use of expert witnesses to prove substantial similarity among architectural drawings, suggesting lay observers should be the ones to determine substantial similarity. This leaves open the question as to whether any expert testimony will be allowed in similar cases.
1 Sturdza v United Arab Emirates, 281 F.3d 1287,62 U.S.RQ. 1071 (DCC, 2002).
Werner Sabo, Esq., CSI, FAIA is an architect, attorney, and partner with the Chicago law firm of Sabo & Zahn.
James K. Zahn, Esq., CSI, FAIA is also an architect, attorney and partner with Sabo & Zahn, as well as a member of the AIA National Documents Committee.
Reprinted with permission of The Construction Specifications Institute, 99 Canal Center Plaza, Suite 300, Alexandria, VA 22314, from the Construction Specifier.