The Digital Millennium Copyright Act (DMCA), 17 U.S.C. Chapter 12, was enacted into law in 1998 and has in recent years, been used by architects as an additional claim in copyright infringement actions. If an architect believes their design has been copied, they can file an action in federal court against the parties that potentially infringed on the copyrighted work. The complaint often includes several counts, including straightforward infringement under the Copyright Act, 17 U.S.C., as well as under the Architectural Works Copyright Protection Act, 17 U.S.C. §102. Additional counts might include violations of the Lanham Act, 15 U.S.C. §1051, and various ancillary matters.
One provision of the DMCA that has attracted the attention of architects’ attorneys is Section 1202:
(b) Removal or alteration of copyright management information.—No person shall, without the authority of the copyright owner or the law—
(1) intentionally remove or alter any copyright management information,
(2) distribute or import for distribution copyright management information knowing that the copyright management information has been removed or altered without authority of the copyright owner or the law, or
(3) distribute, import for distribution, or publicly perform works, copies of works, or phonorecords, knowing that copyright management information has been removed or altered without authority of the copyright owner or the law,
When an infringer takes the original architect’s work and uses it on a new project, the original architect’s identifying information will almost certainly not appear. Thus, the DMCA seems to be perfect as an additional count in a federal complaint against an alleged infringer. Since the law is now almost 20 years old, we should be seeing a tidal wave of DMCA actions. However, that is not the case. Instead, the courts seem to be extremely reluctant to enforce this Act against infringers of architectural works, as a recent federal case out of Ohio demonstrates.
In Robert L. Stark Enterprises, Inc. v. Neptune Design Group, LLC, 2017 WL 1345195 (N.D. Ohio, ED, April 12, 2017), the alleged infringers brought a declaratory judgment action against the owner of certain copyrights, asking the court to declare that they did not infringe and did not improperly remove Copyright Management Information (CMI). The facts are somewhat convoluted and messy, but the discussion of the DMCA is particularly interesting.
There was no question that the plaintiff (remember that here the plaintiff was the alleged infringer) sent the copyrighted work to a new architect, who scanned the original work into its system. The scanned version apparently did not include any identifying information about the original architect. The court, however, stated that there was no evidence that any CMI was “removed” during the process. The court did not equate “removal” with “not any longer present.” Common sense might say something was removed if it is no longer there, but this court would require more proof.
To illustrate this dubious conclusion, consider the following scenario (which is similar to an actual case we handled some years ago): A client comes to an architect with very specific ideas for a high-end custom home. Among the items the client brings to the architect are many pictures of windows, doors, facades and other features of homes cut out of magazines, as well as some floor plans. None of these items identify any author. The client had taken a brochure from a custom home builder and removed all identifying information. That builder later sued this architect for copyright infringement. If we assume the client physically cut out the identifying information from the original brochure and gave the same document to the new architect, the court in Robert L. Stark might call that a violation of the DMCA. However, if the client had placed a piece of paper over the identifying information and photocopied the same brochure, giving the architect the photocopy, there would be no violation. The court would require actual “removal” of the CMI, not merely covering it up and making a photocopy.
The court in Robert L. Stark went on to explain that “basing a design on the previous architect’s work is not the same as removing copyright management information from an original copyrighted work.” In other words, if you copy another architect’s work, you might be guilty of copyright infringement, but not necessarily (or even probably) of violating the DMCA. To hammer this home, the court also stated “based on the language and structure of the statute, . . . Section 1202(b)(1) applies only to the removal of copyrighted management information on a plaintiff’s product or original work.”
In recent years, copyright protection for architects has been seriously eroded by numerous court decisions. A potential tool that could help architects, the DMCA, does not appear very useful given the very narrow interpretation of some courts.