Giving Plans to Building Inspector Can Be Copyright Infringement?

Maybe. The Seventh Circuit decided last fall to send a case back to the trial court for an answer. Chicago Building Design v. Mongolian House is mostly about when the statute of limitations begins for copyright infringement, but it has lessons on more than that for the constant battles between owners, architects, and construction contractors. Decision below.

Chicago Building did architectural design and construction of a swanky restaurant for Mongolian House which didn’t pay all their bills. Chicago Design kept ownership of the copyrights in the drawings. Later one of their employees saw what looked like identical plans at a city office, but with another architect’s name on them. The city wouldn’t give Chicago Building a copy of the other plans, and about three years went by before they filed a copyright infringement lawsuit against the owners and their new architect.

The trial court threw the suit out for violating the three year copyright statute of limitations. The appeals court reversed in light of the fresh Supreme Court decision in Petrella v. Metro-Goldwyn-Mayer which says any infringement within three years of suing is viable even if the defendant first infringed over three years earlier and you did nothing about it. Like the big wheel, the copyright statute of limitations keeps on turning.

The employee saw the possibly infringing plans more than three years before suit. But the lawsuit also alleged the plans were given to building inspectors more than once during the three years before suing.

The question sent back to the trial court is whether “distributing an unlawfully copied architectural work to a building inspector qualifies as a violation of the author’s exclusive right to distribute his work ‘to the public by sale or other transfer of ownership, or by rental, lease, or lending.’” The quote within the quote is from the Copyright Act’s list of exclusive rights given the owner of a copyright, the “distribution” right.

Not paying architects or contractors happens all the time. Even though one or the other owns the copyrights in the drawings, they usually sue the owner to enforce mechanics liens, for breach of contract or collection when they don’t get paid. Copyright infringement isn’t alleged because the building has been built, the drawings served their purpose, and there’s no evidence of infringement. But what construction doesn’t have to comply with codes and pass official inspections?

If the final answer is that providing drawings to a building inspector is a “distribution” under copyright law, there will almost always be grounds for alleging copyright infringement against building owners and others working with them.

Most architectural copyrights are works made for hire owned by a firm. Those copyrights endure for either 95 years from first publication or 120 years from creation of the work. Few new constructions or renovations last that long. Depending on the outcome of this or similar litigation, owners who don’t get assignments of architectural copyrights may be facing a whole new world of licensing demands—virtually forever.

Blog Mongolian House decision

About Craig Pinkus

Craig Pinkus is a partner in the Intellectual Property Group. He also is a member of the Litigation and the Sports, Entertainment and Media Groups. He assists clients with a broad range of disputes and transactions involving all areas of intellectual property, entertainment, and other complex business arrangements. He has conducted trials and arbitrations throughout the United States and has argued appeals before the Seventh, Sixth and Federal Circuit Courts of Appeal, the Indiana appellate courts, and United States Supreme Court.
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