MODULE 11

MODULE 11
COPYRIGHT AND ARCHITECTURAL
EXPRESSION

5.1 INTRODUCTION

H ave we ever thought of why there is just one Taj Mahal or one Statue of Liberty or Eiffel
Tower? Why not each country have one of its own? What are the reasons behind this
exclusivity and protection of architectural expression? As we go further, we shall
discuss how an artist’s expression through the medium of architecture has evolved and is
slowly establishing itself as an important concept throughout the world.

Architectural expression refers to design or the determination of form which includes every
aspect of every quality of a building, including size, shape, materials, texture, color,
ornamentation, etc. In addition, design must support the function of the building, appropriate
for its intended use with appropriate materials, construction techniques, and quality
workmanship. Architectural expression communicates through suitable vocabulary the ideas
that define the building and its use.1

The application of architecture as a medium of expression can be traced back to the early days
when paintings, drawings and engravings on walls of caves intellectual characteristics in their
form.2 This expression of art has changed and evolved over the years, often in line with the
progression of human history. The history of architecture dates back through various regions,
traditions and dates. It dates back to the Neolithic architecture, where mud-bricks were used to
construct houses and covers different forms of architecture such as Islamic architecture,
Buddhist architecture, Chinese, Korean, Japanese architecture, Gothic, Baroque, Renaissance
architecture, to name a few.3 We will discuss most of these individually so as to gain a deeper
insight into the evolution process.

1
1 Vaughan, Brenda Cisco: Educational Ideals vs. Architectural Expression : The Genesis of Building Excellence, p.2,
https://webspace.utexas.edu/cherwitz/www/ie/samples/b_vaughan.pdf, last accessed on 13th Sept, 2013
2 Tomitsch Martin, Moere Andrew, Grechenig Thomas: A Framework for Architecture as a Medium for Expression,
p.1
3 http://simple.wikipedia.org/wiki/Fresco, last accessed on 13th September, 2013

Each of these eras exploited the medium of architecture in a different way. For example, ceiling
frescoes, were considered highly popular during the Renaissance period and were used to
convey power and wealth to the people visiting the structure.4 The history of architectural
expression traces the change in traditions, regions, trends and cultures through centuries. The
term architecture refers not only to the physical structure but also spans interior design and
decor. Architecture as an expressive medium exploits the facade, interior and structure as a
medium of expression.5

5.2 EVOLUTION OF ARCHITECTURAL EXPRESSION 2

O riginally architecture evolved from necessity. The need to house and survive under
harsh weather conditions served to be the primary purpose for any building. Along with
basic survival needs, religion and culture played a vital role in such expression and also
its change from time to time. The architecture in ancient Egypt and Mesopotamia was
influenced by the fact that most structures during that period were built to pay homage to
deities.6

Unlike Egyptian and Mesopotamian architecture, Persian
architecture was designed solely to display the wealth of the
state. For the ancient Persians, creating buildings that
impressed guests was important. In the old Persian

architecture, semi-circular and oval-shaped vaults were of
great interest, and domes formed the dominant element in
Persian architecture. The great mosques
of Khorasan, Isfahan, and Tabriz each used local geometry,

local materials, and local building methods to express in

Shaykh Lutf Allah Mosque, Iran

their own ways the order, harmony, and unity of Islamic architecture. And thus when
the major monuments of Islamic Persian architecture are examined, they reveal complex
geometrical relationships, a studied hierarchy of form and ornament, and great depths of
symbolic meaning. 7


4 Id.
5 Tomitsch Martin, Moere Andrew, Grechenig Thomas: A Framework for Architecture as a Medium for Expression,
p.2
6 http://www.wisegeek.com/what-is-architecture-design.htm last accessed on 14th Sept, 2013
7 http://en.wikipedia.org/wiki/History_of_architecture#Ancient_Egyptian_architecture last accessed on 14th Sept,
2013

Once the Greeks and Romans came into power,
architecture design shifted from a religious or
pragmatic concentration to design based upon civic
concerns.8 Roman engineering and construction gave
way to employing new construction techniques such
as the arch, dome and vault which were little in use
before. This was also a response to the changing social

Arch of Constantine, Rome

climate which demanded new buildings of increasing complexity — the coliseum, the
residential block, bigger hospitals and academies.9

Islamic architecture has been influenced by a wide range of

secular and religious architectural designs from the

foundation of Islam to the present day resulting in their own

unique style of architecture. Their structures can be seen to

be characterised as mosques, tombs, palaces and forts with

each of them following a typical style of construction and

design. Historic Chinese architecture laid emphasis on a

Hall of Supreme Harmony, Forbidden City wide horizontal axis with a roof that floated above such a
(Beijing, 1450 AD) base which is contrary to the idea of western architecture that

focuses more upon height. There were several treaties regarding Chinese architecture, one of

them called the Yingzao Fashi10 where the height of the classical Chinese architectural tradition

in writing and illustration can be found. In it there are numerous and meticulous illustrations

and diagrams showing the assembly of halls and building components, as well as classifying

structure types and building components.

Korean architecture has developed on the lines of Chinese architecture but has its own identity.

A construction usually rises from a stone sub foundation to a curved roof covered with tiles,
held by a console structure and supported on posts; walls are made of earth (adobe) or are

sometimes totally composed of movable wooden doors. The console, or bracket structure, is a
specific architectonic element that can be seen through all their buildings with Seoul's
Namtaemun Gate Namdaemun11 standing as the most symbolic example of such a structure.

Similarly, even Japanese architecture has been influenced by Chinese and Korean architecture
but has evolved on its own due to the process of rebuilding Japan after World War II. The


8 Id.
9 Id.
10 http://en.wikipedia.org/wiki/Yingzao_Fashi last accessed on 14th September, 2013
11 http://en.wikipedia.org/wiki/Namdaemun last accessed on 14th September, 2013

3

modern approach to Japanese architecture could be seen in the form of skyscrapers and
layering and cocooning around inner space to adapt to the urban needs.12

Gothic architecture emerged in the 12th century and feature almost skeletal stone structures
with great expanses of glass, pared-down wall surfaces supported by external flying buttresses,
pointed arches using theogive shape, ribbed stone vaults, clustered columns, pinnacles and
sharply pointed spires. Windows contain beautiful stained glass, showing stories from
the Bible and from lives of saints.

Following this, the period of Italian Renaissance could Fresco at the Sistine Chapel
be seen dating back to the 14th century Buildings
constructed during these times were massive,
impressive, and nearly every structure tested the
boundaries of architecture as the world knew it. In
Italy, around 1300 A.D, the artist Giotto painted
frecoes which told a story in the form of its paintings
which laid down the path to the era of art history called
the Rennaisance. Giotto's most famous frescoes are in
the Arena Chapel in Padua, Italy. He also painted in the
Church of St. Francis at Assisi and at Santa Croce (Church

of the Holy Cross) in Florence.13

Following this, frecoes became a symbol of power and it was usually the rich who would
employ artists for this purpose. The most famous of all was the painting of the Last Judgment at
the Sistine Chapel for which the renowned artist, Michelangelo was especially flown to Rome.
This trend of painting fresoes continued till the next odd 200 years after which it was
discovered that it was easier to paint in oil and canvas and put it up on the ceiling than to paint
on the ceiling. Thus, the trend of frescoes began to fade and was substituted by some other
form.

With the advent of the 19th century, one could see a different pattern of architecture emerging.
It was dominated by a variety of stylist variations and interpretations that were not used as a
form of expression before. Two forms of architecture known as Art Nouveau and Art Deco
flourished and changed the set pattern of architectural expression which was being followed

4
12 http://en.wikipedia.org/wiki/History_of_architecture#Ancient_Egyptian_architecture last accessed on 13th
September, 2013
13 http://simple.wikipedia.org/wiki/Fresco, last accessed on 13th September, 2013

over the years. Both these genres of art began as a result of rebellion by many European artists,
graphic designers, and architects rebelled against formal, classical approaches to design.14

As we have earlier discussed, most of western architecture was a copy of earlier architecture - a
variety typically referred to as Neo-Classical, Neo-Gothic, Greek Revival, Italian Renaissance
Revival, Beaux Arts Classical, Italianate or similar veins. In the late 1800s through the early part
of the 1900s, style and architectural ornamentation adopted something called Art Nouveau.
The artistic movement of Art Nouveau started in Europe around 1890 and lasted until around
1910.15 This style of art was characterized by a belief that all of life was art, and as a result, all of
life should be treated as an art form. This flew in the face of classic art, which was reserved for
the wealthy.

Some of its predominant features include the use of graceful, rhythmic patterns of curvy lines
connecting images in art. They focussed on organic subject matter and such art could be found

Nouveau

in plenty of flowers, leaves, vines, grass, seaweed, insects and other organic images in Art



jewellery, hardware, windows and architecture. Silver, pewter, iridescent glass and exotic
woods as well as semi-precious stones were the materials most often used on interior surfaces
and furnishings.16 Examples include images of birds etched into window frames or curled
around each other on fabric for upholstery, or abstract lilies drifting around and connecting to

5
14 http://architecture.about.com/od/artnouveau/g/artnouveau.htm last accessed on 14th Sept, 2013
15 http://www.apartmenttherapy.com/quick-history-art-nouveau-142976 last accessed on 14th Sept, 2013
16 http://www.bellemaisoninc.com/2008/05/art-nouveau/ last accessed on 14th Sept, 2013

each other on dinnerware.17 Some may define it as the bridge from classicism to modernism
but it is more than that as it encouraged artists to find beauty in the most mundane object.

Followed by this was an approach that was truly a step forward towards modern architecture,

popularly known as Art Deco. It was meant to reflect a

style of its own: Modern. It embodied all that was

thought of as "modern." There were no more ionic or Corinthian columns; in its place were

buildings with vertical lines and the birth of skyscrapers. These were the buildings of the future:

sleek, geometric, dramatic. With their cubic forms and zigzag designs, art deco buildings

embraced the machine age.18 The buildings were relatively simpler in terms of fea tures and

facade with use of geometric ornamentation consisting of circles, diamonds, chevrons, zig-zags,

triangles, pyramids, spirals, octagons, etc. All in all this movement represented the beginning

of modernity, freshness, progress, commerce and unlimited possibilities.

After World War II one could see elements of Art Deco around but it had mostly been discarded

as old-fashioned and naively optimistic. The 1900’s saw various theories to architecture such as
the “less is more’’ theory by Architect Ludwig Mies van der Rohe who epitomized the lack of
ornamentation and overt functionality. This theory was contradicted by the “less is bore”
theory. 19

Postmodern architecture focussed on the needs and desires of the generation in terms of
comfort and design.20 The theory behind many postmodern works is that if the product is
functional and attractive, those who reside or work inside can have happier and more
productive lives. Architects espousing this movement liked to add the unexpected touches to
buildings that go against convention but still look appealing. For instance, a skyscraper built in
the genre of postmodern architecture can sport classical columns to add to the overall beauty


17 http://www.life123.com/arts-culture/architecture-2/art-nouveau/art-nouveau-style.shtml last accessed on 14th
Sept, 2013
18 http://architecture.about.com/od/artdeco/ss/artdeco.htm last accessed on 14th Sept, 2013
19 http://www.wttw.com/main.taf?p=88,5 last accessed on 14th Sept, 2013
20 http://www.rinkdesign.com/characteristics-of-postmodern-architecture last accessed on 14th Sept, 2013

6

of the building. Colours, too, tend to lean toward the unexpected, while continuing to remain
within an established colour scheme.21

Classic examples of modern architecture are the Lever House and the Seagram Building in
commercial space whereas transitional examples of postmodern architecture are the Portland
Building in Portland and the Sony Building in new York city, which borrows elements and
references from the past and reintroduces colour and symbolism to architecture.22

This brings us to the present day and form of architecture known broadly as the Contemporary
architecture. This is different from Modern architecture as it adds the elements of personal
touch and warmth that had been known to be lacking from modern architecture. This type of
architecture represents everything that is modern. It focuses on the use of energy efficient
materials, use of recyclable resources and architects today are heavily dependent on the use of
computers for such expression.

Whereas desire for particular aesthetic elements
typically drove previous styles, need is the
primary driving element behind
contemporary architecture.23 Increase in
population, along with a reduction of funds
and some resources, are forcing communities
to explore different means of building and
organizing space. For example, in Japan,
multi-functional homes are being designed

using incredibly small spaces. These are usually vertical and have
features like foldable separations within the space and optimal use
of limited space. This trend shows how emphasis is now being laid upon functionality and utility
in the construction of buildings.

Over the years, architecture has been used to express various beliefs, faiths, idea etc., whether
these are religious or those indicating power, and though these parameters may gravitate
towards functionality, style and utility; the essence of architecture as a form of distinct
expression cannot be ignored and must be offered its due admiration and protection.

7
21 Id.
22 http://en.wikipedia.org/wiki/History_of_architecture#Ancient_Egyptian_architecture last accessed on 14th Sept,
2013
23 http://www.wisegeek.org/what-is-contemporary-architecture.htm last accessed on 14th Sept, 2013

5.3 ARCHITECTURAL EXPRESSION AND COPYRIGHT: 8
RELATIONSHIP AND CONCERNS

A rchitecture is so deeply and inherently woven into the social fabric of human life that its
importance cannot be underestimated. From a mere hut to monuments of national
importance such as the pyramids of Giza in Egypt, architecture is bound to influence our
lives and the environment around us. Winston Churchill once rightly said that “we shape our
buildings; thereafter they shape us.”24

An architect’s most invaluable intellectual property would be to the employment of his skills
and expertise which consist of designing architectural plans and drawings based on which
buildings are built. These are based on the creativity and originality of the architect and serve as
a blueprint for the structure in question. Architecture is both an artistic as well as a functional
endeavour. Notwithstanding the impact of it in our lives, the legal protection which may be
granted to architectural structures has been a widely debated issue. The main question is
whether it is legally possible to reproduce an architectural work without taking permission from
the architect.25

Although it has been recognized as protect worthy in most countries, it is still battling issues
under copyright law in various situations which we shall discuss. We can start by quoting the
case of the iconic pyramids of Egypt where a law has been proposed under which it would be
held illegal to produce exact replicas or sell images of the pyramids and other recognizable
antiquities in the country such as the Giza Pyramids, the Sphinx, and the mask of Tutankhamun.
26

The law held that no exact scale replica can be made. For instance: if an object is two inches
(five centimeters) tall, a product of the same dimensions cannot be made without permission.
But a three-inch (six-centimeter) replica would be acceptable.27 This was deemed to be passed
in order to protect Egyptian culture but the retrospective nature of the law and the ambiguity
regarding the meaning of an exact replica prevented the law from seeing the light of the day.

While the idea of paying royalty to the government of Egypt for the reproduction of
architectural work may seem absurd to few, other owners of landmark buildings have adopted


24 http://www.wipo.int/wipo_magazine/en/2011/05/article_0004.html last accessed on 14th Sept, 2013
25 Ibid.
26 http://news.nationalgeographic.co.in/news/2008/01/080115-egypt-copyright.html last accessed on 14th Sept,
2013
27 Ibid.

a modified approach. For example, while there are no restrictions for tourists wishing to
photograph the Auditorio de Tenerife in Spain, the owners have clearly set out the terms of use
of the building’s image for commercial operators.28

Morality of the rights of the architect is another aspect of architectural work that deserves a
mention. This can be seen in the case of the Sydney Opera House where Danish architect, Jon
Utzon who had won the an international competition to design a performing arts complex
could not contest his moral rights as the author of the architectural work when certain changes
were made to his original design by Australian architects as the law operational at the time did
not recognise the moral rights of an architect.29

Another challenge the most architects face with respect to protection of their work is drawing
the line between plagiarism and inspiration. What one may define as inspiration could result as
plagiarism to another. At what stage of the construction plan would the inspiration turn into
plagiarism? Would a different purpose for the same work absolve another from being hit upon
for infringement?

These are questions that still pose a concern for an architect who is an artist at heart.
Infringement can occur at any stage, from plan to plan, plan to building, building to plan and
building to building due to which the exact point in time at which an artist could be held for
infringement remains undefined. Apart from this, legal battles are fought due to the
retrospective nature of copyright laws which pose a concern for the reconstruction of an
architectural work.

In the global world of possibilities today, it is almost impossible to expect a person to be aware
of the works of all others due to which a clash is almost inevitable. A step towards adopting a
more transparent and global practise in architecture would help to keep architects connected
and aware of each others’ works. Also, adoption of uniform laws rather than country specific
laws would serve as a levelled platform and mitigate the confusion being caused by the different
approach to protection of architectural work under countries.

5.4 PROTECTION OF ARCHITECTURAL WORK IN USA

9
28 http://www.wipo.int/wipo_magazine/en/2011/05/article_0004.html last accessed on 14th Sept, 2013

29 http://www.wipo.int/wipo_magazine/en/2011/05/article_0004.html last accessed on 15th Sept, 2013

C opyright in architecture is an important but little understood subject in the field of
intellectual property rights. Just like a new invention, an original work of music, art, an
original architectural plan also needs to be protected. However, architecture has not
always been subject to copyright law. Even today, it is at a nascent stage in various countries
and is the subject of confusion and controversy. Laws regarding the protection of architectural
work differ from country to country and aim to strike a balance between the exclusive rights of
the creator and the rights of the public. We shall start by discussing the protection guaranteed
to architectural work under the law prevalent in USA.

A 5.4.1 HISTORY OF COPYRIGHT IN ARCHITECTURAL WORK
rchitecture has not always been protected under copyright laws. This trend began in
1790 when the first copyright law was passed which extended copyright protection to
only books, maps and charts. In 1909, it was extended to include only architectural
blueprint and it was not until 1976 that an architect’s plans and drawings were to be protected
under the law. However, this was subject to various loopholes such as the utilitarian doctrine
prohibiting copyright in useful articles and the process of prevention of reverse engineering of a
building.30 For instance, one could observe the building constructed from those drawings and
subsequently replicating the design in a new drawing or in another building.31

Keeping in mind the above mentioned loopholes, an amendment to the original Copyright Act
was passed in 1990 under the Architectural Works Protection Copyright Act of 1990 (AWPCA). It
was passed soon after United States' adherence to the Berne Convention for the Protection of
Literary and Artistic Works became effective. Under the Act, architectural works are defined as
the design of a building as embodied in any tangible medium of expression, including a building,
architectural plans, or drawings. The scope of protection extends to the form, arrangement,
and composition of the work, but excludes individual standard features.32

The Act protects designs embodied in actual works of architecture, which allows an architect to
file for infringement when a new building is copied from his or her copyrighted building.33 This
act defines architectural works as a new class of protectable subject matter; a shift that was
motivated by the need of the US to comply with the other international conventions such as

10
30 http://en.wikipedia.org/wiki/Copyright_in_architecture_in_the_United_States last accessed on 15th Sept, 2013
31 http://www.lexology.com/library/detail.aspx?g=230194ce-e29a-4b50-b36b-7f8e7e1687e3 last accessed on 15th
Sept, 2013
32 Vanessa N. Scaglione, Building Upon the Architectural Works Protection Act of 1990, 61 Ford. L. R. 193, citing the
Architectural Works Protection Copyright Act, http://www.artlawgallery.com/2013/07/articles/intellectual-
property-copyright-and-moral-rights/the-architecture-of-copyright/#page=1, last accessed on 15th Sept, 2013
33 Id.

the Berne Convention wherein 165 countries specifically recognise architectural work as
protected subject matter as a literary and artistic work.34

5.4.2 TYPES OF ARCHITECTURAL WORKS GRANTED PROTECTION

C opyright protection can extend to general drawings and blueprints, preliminary plans,
sections, elevations, floor plans, construction plans, rough models, models of internal
support, models of external appearance, photomontages of the building against
backdrops, computer-generated images of a design, and constructed buildings.35 Other than
these, building designs that were constructed, or whose plans or drawings were published
before December 1, 1990 and structures other than buildings, such as bridges, dams, walkways,
tents, recreational vehicles, mobile homes, and boats do not form a subject matter of
copyright.36 Accordingly the Architectural Works Protection Copyright Act of 1990 has resulted
in the architect having two separate copyrights in his work, one in the design embodied in the
drawings or building as ”architectural work” and the other in the drawings themselves, as
”graphic ” or ”pictorial” works.

Section 703 of the Architectural Works Protection Copyright Act of 1990, provides that
"architectural works" be added to the list of "works of authorship" enumerated in section 102
of the Copyright Act. Under this definition, the Architectural Works Protection Copyright Act
protects only the design of "buildings." However, many architectural works are not "buildings."
The original version of the act protected not only buildings, but also other "three-dimensional
structures’, which was later deleted. On the other hand, a limitation to "buildings" seems to
leave out a great many structures normally considered to be works of architecture. For
instance, Central Park and Brooklyn Bridge are one of the best architectural works of New York
but cannot be protected under the act. 37

If a work does qualify as a "building," it may also qualify as a sculpture under Section 102(a)(5).
Prior to passage of the Architectural Works Protection Copyright Act of 1990, monumental,
non-functional works of architecture received protection under Section 102(a)(5) as "sculptural
works." This provision remains unaffected by the Architectural Works Protection Copyright Act.
Works such as the Statue of Liberty, the Washington Monument, and the Gateway Arch
continue to receive section 102(a)(5) protection as sculptural works. As a result, the AWCPA
offers dual protection to such works under Section 102(a)(5) "sculptural works" and section


34 http://www.lexology.com/library/detail.aspx?g=230194ce-e29a-4b50-b36b-7f8e7e1687e3 last accessed on 15th
Sept, 2013

35 http://en.wikipedia.org/wiki/Copyright_in_architecture_in_the_United_States last accessed on 15th Sept, 2013
36 Ibid.
37 Raphael Winick: Copyright Protection for Architecture after the Architectural Works Copyright Protection Act of
1990, p.16, http://scholarship.law.duke.edu/dlj/vol41/iss6/8/ last accessed on 15th Sept, 2013

11

12

102(a)(8) "architectural works."38 What still goes ignored by the act is the work of architects
who have used their skills to design a wide variety of household items such as teapots,
telephones etc. which are classified under sculptural works and not architectural work.

T 5.4.3 TWO STEP TEST OF ORIGINALITY AND FUNCTIONALITY
o be protected under the AWCPA, structure must first qualify as a "building"; it must then
satisfy a two-part test to establish that its design is first, original, and second, not wholly
functional.39

! 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, the second step is undertaken.

! The second step is to examine if the design elements are functionally required or not. If
the design elements are not functionally required, the work is protectable.

In order to fulfil the first step, a certain benchmark for measuring such originality must be laid
down so as to avoid difficulty in interpretation. The act defines originality to follow the general
standard as applicable to other copyrightable works. This standard does not include
requirements of novelty, ingenuity, or aesthetic merit. Also, it can take various forms such as
the use of unoriginal individual elements in original ways, the combination of new elements
with old elements, and the placement of the otherwise banal into new and original contexts.40

The establishment of the second step wherein the case for demonstrating non-functionality is
to be made depends upon the seperability test. Under this, if it can be proved that the
architect’s elements of design are independent of the aspect of functionality, then the work can
be granted protection under the act. In most cases, proving of such separation turns to be
problematic due to which the efforts of the artist are fruitless and in vain.

5.4.4 AUTHORSHIP/OWNERSHIP OF ARCHITECTURAL PLANS

G enerally, copyright protection extends to the “author” of architectural plans or designs
wherein the author is the party who creates the work or expresses the idea into a
tangible medium as per Section 201(a) of the act. There may be various categories
under which such an architect may fall; the protection of their work would depend on which
category they fit:


38 Raphael Winick: Copyright Protection for Architecture after the Architectural Works Copyright Protection Act of
1990, p.16, http://scholarship.law.duke.edu/dlj/vol41/iss6/8/ last accessed on 15th Sept, 2013
39 Id. at p.19
40 Idib.

A. EMPLOYEE OR INDEPENDENT CONTRACTOR

T he general rule is that if an architect is an independent contractor and there is no
express agreement stating that the architectural plans are “works for hire,” the
architect is considered the author and copyright protection for the plans is extended
to the architect. This was derived from Palazzola Architects and Assoc., Inc. v. A.M.E. Group,
Inc., where the plaintiffs in Palazzola was an architectural firm that designed customized
homes and brought a suit against AME Group for constructing a virtually identical home as
one of theirs. The court held that the work done by the plaintiff did not form a work of hire
and that he worked in the capacity of an independent contractor and not an employee due
to amounted to infringement of architectural work.

B. ARCHITECTS EMPLOYED BY AN ARCHITECTURAL FIRM

A s discussed above, the work produced by an architect employed by an architectural
firm will be considered as work for hire and protection under copyright would
extend to the architectural firm that employed the architect.
C. CLIENT OWNERSHIP IN DRAWING

A rchitects hired by clients for individual projects would not amount to work for hire
and the author of such work shall be allowed to claim protection of his architectural
work.41

5.4.5 INFRINGEMENT OF ARCHITECTURAL WORKS

J ust like the case of infringement of a trademark or patent, if is proved that the work of an
architect has been infringed, he may take recourse to the provisions of the Architectural
Works Protection Copyright Act. The burden of proof lies upon the architect/author of
architectural work to prove that his design has been infringed by another owing to reasons like
copying, reproduction or striking similarity. The standard for determining the infringement
remains the same for architectural works as it does for any other work that it copyrighted
under intellectual property laws.

The test for copyright infringement usually is a two-step process. First, the court would
determine if there was any copying-in-fact, which is generally based on the defendant’s access
to the copyrighted work and whether the similarity between the two works suggest copying.


41 http://www.clausen.com/index.cfm/fa/firm_pub.article/article/13185fd9-7378-49fe-baf7-

ed62981b4888/Copyright_Protection_Authorship_of_Architectural_Plans_and_Architectural_Works.cfm last

accessed on 16th Sept, 2013

13

Secondly, both works would be analyzed with reference to substantial similarity which involves
the comparison of only the copyrightable elements of both the works.42

A. COPYING-IN-FACT OF ARCHITECTURAL WORK

O nce the architect assumes the ownership of a valid copyright and finds that his
design has been infringed by another, he would have to start by proving that his
work has been copied to an extent that is greater than what the law permits.
He could use direct evidence to support this claim, in the absence of which he would
have to depend upon indirect methods of the defendant having access to his work and its
substantial similarity with his work.

The accessibility may be proved by showing that the path of the plaintiff and defendant
had crossed in the past. In other words, that the defendant had a reasonable
opportunity to view the work of the plaintiff.43 For example, in the case of Shine v.
Childs44, Shine who was a former Yale architecture student sued architect David Child
and his firm for stealing his design after reviewing it in 1999 as part of a jury at a class
presentation. Here, the plaintiff had already established reasonable opportunity and
was left to prove similarity between the two works to win his case.

A number of key observations were made through this case about the scope of AWCPA
and its application. Firstly, it was held that AWCPA protection may potentially extend to
those works that fall within the conceptual phase of the architectural process. The
design need not be detailed to qualify for protection under copyright. Second, the mere
fact that certain aspects of a design have been built before need not render the entire
design unprotectable.45 Thirdly, the court held that two works should be held
substantially similar if an ordinary observer would be likely to overlook differences and
regard their aesthetic appeal as the same.

This decision laid for better protection of architectural design and provided much
judicial guidance to the protection of architectural work. One essential point being is the
registrability of design, in this case the relief being limited to only actual damages on
account of non-registration of design. Had the design been registered, the relief could


42 http://en.wikipedia.org/wiki/Copyright_in_architecture_in_the_United_States last accessed on 15th Sept, 2013

43 David E. Shipley: The Architectural Works Copyright Protection Act at Twenty: Has Full protection Made a
Difference? p.25, http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2130674##
44 http://www.leagle.com/decision/2005984382FSupp2d602_1930 last accessed on 16th Sept, 2013
45 Matthew Clanton: A Tale of Two Towers, p.3, http://www.intellectualpropertylawblog.com/archives/12840-
print.html, last accessed on 16th Sept, 2013

14

extend towards that of more specific nature. Also, as seen in the case, it is likely that
architects may unintentionally infringe another’s pre-existing copyrighted work due to
which additional care should be taken to follow strict clearance practices for considering
other people’s designs.46

B. INFRINGEMENT BY REPRODUCTION OF PLANS

A ssuming an architect's plans are copyrightable, and that ownership and copying
are established, it has long been settled that unauthorized reproduction of plans
constitutes infringement. The act did not make any changes to this.

C. UNAUTHORIZED PHOTOGRAPHS OF ARCHITECTURAL WORKS

O nce an architect’s plans are copyrighted, the right to distributing, or public
display of pictures, paintings, photographs, or other pictorial representations of
the work is allowed but remains limited through the provisions of Section
120(a). The rationale for exempting pictorial representations is that architecture is a
public art form which is routinely photographed by tourists, architects, critics and others
and depiction of such work in say, an architectural magazine would only be making way
for publicity for the work of the architect and he cannot claim infringement for the
same.

The provisions are such that they allow for the copyright holder to control the production
of three-dimensional reproduction of a design but not that of a two-dimensional one.
Also, sculptures are still offered protection against two-dimensional reproduction due to
which it would be advantageous for an architect to categorize his work under sculptural
work rather than architectural work.47

A landmark case to discuss this limitation is Leicester v. Warner Brothers.48 In this case, a
sculpture was protected by copyright was displayed about 8 times in the movie Batman
Forever without Warner Brothers obtaining a license to make use of it in the movie
which was considered an infringement for which a suit was initiated by Andrew
Leicester, the creator of the sculptor. The statue was filmed and photographed and used

15
46 Matthew Clanton: A Tale of Two Towers, p.3, http://www.intellectualpropertylawblog.com/archives/12840-
print.html, last accessed on 16th Sept, 2013
47 Raphael Winick: Copyright Protection for Architecture after the Architectural Works Copyright Protection Act of
1990, p.30, http://scholarship.law.duke.edu/dlj/vol41/iss6/8/ last accessed on 16th Sept, 2013
48 http://www.law.cornell.edu/copyright/cases/232_F3d_1212.htm last accessed on 16th Sept, 2013

both in the film and in marketing materials. Additionally, the statue was reproduced by
constructing a scale model that was displayed in the film.49

It focussed on two issues under infringement; the use of 3-D reproductions of the radial
towers and for taking photographs which were used in the movie. Regarding the first
issue, Leicester's contract with R&T gave it a license to make reproductions of Zanja
Madre in brochures, advertisements, catalogs etc. and this gave them the right to sub-
license the right to use the sculpture. Since, Warner Bros. were the holders of a valid
sub-license to use the work, it did not amount to infringement. Addressing the second
issue, the pictures taken of the towers were not considered infringing under the
exemption for pictorial representations of buildings in the Architectural Works
Copyright Protection Act of 1990.50

D. UNAUTHORISED USE OF PLANS

A re plans infringed by construction of the building they depict? If an architect
seeks protection for the blueprint of his design which is later reproduced into a
building, would that amount to infringement? The answer to these questions
kept changing within the time and can be traced through various cases. For instance, the
plaintiff in Eales v. Environmental Lifestyles, Inc.51 sued for infringement when she
discovered that her plans were used without her permission to build a home in Arizona
and won.

Similarly in Christopher Phelps & Associates, LL C v. Galloway52, the defendant wanted to
build an upscale retirement home on Lake Wylie near Charlotte, North Carolina. He
looked at a few homes nearby and liked the design of one of them. He obtained
permission from the owner to use the design to construct a similar house while was
granted by the owner mistaking the copyright of the house to be hers. Once, the
plaintiff got to know about such unauthorised use of his works, he sued for infringement
and subsequently won.

E. REVISION OF PLANS

T he revision of protected plans and their use at a later stage in a somewhat
different structure can constitute infringement of the copyright owner's right.
However, keeping in mind the need for a building to be able to adapt and change


49 http://www.copyrightwebsite.com/Visual/Batman/Batman.aspx last accessed on 16th Sept, 2013
50 Ibid.
51 http://www.leagle.com/decision/19921834958F2d876_11677 last accessed on 16th Sept, 2013
52 http://www.leagle.com/decision/20071024492F3d532_11020 last accessed on 16th Sept, 2013

16

from time to time, a limitation was imposed upon it under Section 120(b). This limitation
allowed the owners of a building embodying an architectural work the right to making
alterations to the building as needed.53

If the architect wishes for his permission to be obtained for any alteration on his original
work, he may achieve this by entering a separate contract for it. It will not be an express
right granted to him under the AWCPA. Also, local and historic preservation laws shall
continue to protect a work if it is considered too valuable to alter.

5.4.6 FORMS OF RELIEF AVAILABLE UNDER THE ACT

O nce the owner of the copyright has proved his case for infringement, the next step
would entail the type of relief to be sought. The act provides several forms of relief:
injunctive relief, statutory and actual damages, recovery of the defendant's profits,
and impounding or destroying infringing copies. Injunctive relief and destruction may prove to
be problematic when applied to architectural works. For instance, grant of an injunction is
bound to affect not only the defendant, but also the other parties like investors, banks, and
tenants who may have invested significant costs over the construction of the infringing
building. In an injunction is not granted, the court may grant other appropriate relief such as
payment of license fees or monetary damages. Similarly, the monetary loss and substantial
hardship that is incurred if the court orders the destruction of an infringing building is even
beyond compare to that of injunction.

A copyright holder must also determine against whom a claim for relief should be pursued.
Copyright law accepts claims of contributory infringement and vicarious liability. For instance, if
an architect infringes a copyrighted design, the clients of that architect may be liable for a claim
of vicarious liability, depending upon the control their level of control over the work. If a party
does not have relatively high level of control, a contributory infringement claim may still be
brought. In this way, a contractor or client who did not exercise a great deal of control over the
architect may be found liable for an infringing design by the architect.54

5.4.7 DRAWBACKS OF THE ARCHITECTURAL WORKS PROTECTION
COPYRIGHT ACT OF 1990 (AWPCA)

17
53 Raphael Winick: Copyright Protection for Architecture after the Architectural Works Copyright Protection Act of
1990, p.26, http://scholarship.law.duke.edu/dlj/vol41/iss6/8/ last accessed on 16th Sept, 2013
54 Raphael Winick: Copyright Protection for Architecture after the Architectural Works Copyright Protection Act of
1990, p.33, http://scholarship.law.duke.edu/dlj/vol41/iss6/8/ last accessed on 16th Sept, 2013

18

T he act did help to resolve the issue of granting recognition to architectural works as a
separate head by itself; however, it ignored the other important question of the extent
of work that would be granted protection. The main question being, which aspect of the
architectural work would actually be protected? Would it be the functional or the non-functional
aspect of work that would be protected? Would this dichotomy not be required and the work in
its entirety be protected?

The Copyright Act protects pictorial, graphic, or sculptural works only if the work can be
identified separately from, and exist independent of, the work’s functional aspects. Therefore,
copyright still depends on the extent to which a work reflects artistic expression and protection
is restricted to the purely artistic aspects of the work.55 For instance, no protection may be
claimed in case of a chair where the artistic elements overlap with the functional aspects,
although it may be almost impossible to separate the two.

This would create a huge turmoil with reference to the registration of architectural works in the
present age, considering that the aspect of functionality forms the backbone of post modern
architecture. Strict application of the US’s requirement that copyright protection extend only
to non-functional building design will deny protection to successfully modern buildings.56 These
limitations on copyright protection pose one of the greatest threats to innovation in
architecture—after all, what incentives do architects have to design ground breaking and
streamlined buildings if someone else can immediately copy their design?

Lastly, the act protects the overall design of the architectural work but it does not protect the
individual standard features such as common windows, doors, and other staple building
features from protection. Although aspects of a particular style of architecture may be
unprotectable as standard features or under the scenes a faire doctrine, the architect's
combination of the style's standard elements or features can possess the requisite originality to
be deemed a copyrightable work. 57

The AWCPA has been in effect for thirteen years which has given us enough time for its healthy
evaluation. Even though this act post the Berne Convention, has made way for the protection
of architectural work under copyright, it comes with its own list of shortcomings. To start with,
the provisions are such that they allow for the copyright holder to control the production of
three-dimensional reproduction of a design but not that of a two-dimensional one, thus diluting
their rights.


55 http://www.artlawgallery.com/2013/07/articles/intellectual-property-copyright-and-moral-rights/the-
architecture-of-copyright/#page=1 last accessed on 15th Sept, 2013
56 Ibid.
57 David E. Shipley: The Architectural Works Copyright Protection Act at Twenty: Has Full protection Made a
Difference? p.23, http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2130674##

This in today’s world is unacceptable considering there is a wide market for two dimensional
representations of buildings in the form of post cards, t-shirts and other forms of merchandise
that the architect cannot exploit owing to the restrictive nature of the act. However, this is not
an absolute restriction and can be overcome by a contract to protect the same for the fear of
infringement.

The hugely criticised and the most important clog of the act are shown in the aspects of
buildings it seeks to offer protection. Why would the act aim at protecting only the non-
functional aspects of the architectural work when modernity and functionality seem to be the
mantra in the architectural world? Also, what happens when the aesthetic and functional
aspects are closely intertwined? In today’s world where space is a constraint and utilitarian
concern is more important than anything else, the act seems to be almost running contrary.
There is also no set standard for the interpretation of the functionality aspect of architectural
work yet. It clearly shows that the act has not been able to keep pace with the changing times
and has failed to address the level of modernity that the world is at, today.

Apart from this, the act has provided architects with greater protection than they enjoyed
before. Architects now have the exclusive right to build from their designs; because reverse
engineering now constitutes infringement.58 Just like any other act, the government should
take cognizance of the loopholes and make amendments to the act to address the same. The
most important ones would include dealing with the question functionality aspect, substantial
similarity and striking a balance between the rights of the architect and the public. This must be
done taking cognizance of other laws offering protection like patent, trademark, local and
historic preservation laws so as to avoid overlapping.

5.5 COPYRIGHT AND ARCHITECTURAL EXPRESSION – THE
INDIAN PERSPECTIVE

T he importance of copyright in architecture was not felt for the longest time as buildings
were constructed for the purpose of fame and recognition. As this trend changed, it
became a profession, a source of livelihood for many architects which then paved the
way for the protection of their work.

19
58 Raphael Winick: Copyright Protection for Architecture after the Architectural Works Copyright Protection Act of
1990, p.50, http://scholarship.law.duke.edu/dlj/vol41/iss6/8/ last accessed on 16th Sept, 2013

Copyright is the legal protection given to the creator of an original literary or artistic work
through which he is granted an exclusive right by the law, to do, authorize, or prohibit certain
acts in relation to such work. This kind of protection not only encourages existing artists to
produce more such work but also motivates those who were looking for ways to protect their
creative work.

Considering the nature of copyright, it holds great value in the lives of artists, authors, painters,
architects, music composers and production companies, film production companies, computer
games designers etc. It recognises their talent by offering them the right to seek protection of
their creative work under a statute. Most of the Copyright law in India is based on the copyright
laws in UK. The Indian journey towards making copyright a law began with the passing of the
Copyright Act of 1914 which was linked to the British Copyright of 1911.

This was followed for a good five decades until it began to be considered out of pace with the

fast and modern changing world with advancements such as broadcasting, litho-photography.
Subsequently, a new act was enacted by the Parliament, known as the Copyright Act of 1957.

This act was based on the Berne Convention and Universal Copyright Declaration, both of which
India is a signatory. It was suitably amended again in the 1999 according to the prevailing
situation in the India and around the world.59

In the field of copyright, it provides the same protection to nationals of member States as its
own nationals. For example, a book written in India by an Indian author will enjoy the same
protection in Ghana as a book which might be written by a Ghanian author. Secondly, it enacts
the feature of automatic registration in member countries, for instance, a book written in India
need not be applied for application under the German copyright law. In terms of architecture,
this answers the every important question pertaining to duplication of buildings of great
importance. For example, if an architectural work such as the Taj Mahal is copyrighted in India,
it will automatically be deemed copyrighted in the other signatory countries as well and a
country, say, Australia cannot build a replica of the same denying its protection under
copyrights in their country.

The act helps to define what is covered under the ambit of copyright, process of registration of

a copyright, the subject matter of copyright, term of copyright, author and owner of copyright,

rights conferred by copyrights, process of acquiring a copyright, how to assign, transfer of
relinquish a copyright, how to license, infringement of a copyright, offences, appeals etc.60 It
also provides other requisites for the work to qualify for protection. We shall be discussing all of

Law,
59 Sanjeev Malhotra: Right of Ownership under Indian Copyright
http://www.legalserviceindia.com/articles/copy_owner.htm, last accessed on 20th Sept, 2013
60 http://www.iitk.ac.in/siic/copyright.html last accessed on 23rd Sept, 2013

20

these while focussing upon architectural expression and will also try to paint a picture for the
future of copyright in architectural expression. In India, there is no separate act that has been
passed to deal with copyright issues pertaining to architecture and the same is covered under
the Copyright Act of 1957 under artistic work.

T 5.5.1 THE COPYRIGHT ACT, 1957
he Copyright Act, 1957 which was amended in 1999 brings within its ambit, all works of
creativity such as art, music, films, architecture etc. The issue of protection which was
almost nonexistent in the country has gained importance through the provisions of this
act. It protects original literary, dramatic, musical and artistic works and cinematograph films
and sound recordings from unauthorized uses. Unlike the case with patents, copyright protects
the expressions and not the ideas. It ensures safeguarding the rights of the authors over their
work which results as a motivation for further creativity. Further, the protection of works of
artists, writers, architects, designers, musicians builds an atmosphere of creative competition
resulting in setting a higher standard of work.

5.5.2 SUBJECT MATTER OF COPYRIGHT

Copyright subsists throughout India in the following classes of works:

" Original literary, dramatic, musical and artistic works;

" Cinematograph films; and

" Sound recordings

An artistic work means-

# a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving
or a photograph, whether or not any such work possesses artistic quality;

# a work of architecture; and

# any other work of artistic craftsmanship

An “architectural work” is the design of a building as embodied in any tangible medium of
expression, including a building, architectural plans, or drawings. The work includes the overall
form as well as the arrangement and composition of spaces and elements in the design, but
does not include individual standard features.

21

"Musical work" means a work consisting of music and includes any graphical notation of such
work but does not include any words or any action intended to be sung, spoken or performed
with the music. A musical work need not be written down to enjoy copyright protection.

"Sound recording" means a recording of sounds from which sounds may be produced regardless
of the medium on which such recording is made or the method by which the sounds are
produced. A phonogram and a CD-ROM are sound recordings.

"Cinematograph film" means any work of visual recording on any medium produced through a
process from which a moving image may be produced by any means and includes a sound
recording accompanying such visual recording and "cinematograph" shall be construed as
including any work produced by any process analogous to cinematography including video films.

"Government work" means a work which is made or published by or under the direction or
control of:

$ the government or any department of the government

$ any legislature in India, and

$ any court, tribunal or other judicial authority in India61

Copyright protects the rights of authors, i.e., creators of intellectual property in the form of
literary, musical, dramatic and artistic works and cinematograph films and sound recordings. An
Author under the Copyright Act under Section 2(d) shall mean:

% In the case of a literary or dramatic work the author, i.e., the person who creates the
work

% In the case of a musical work, the composer
% In the case of a cinematograph film, the producer
% In the case of a sound recording, the producer
% In the case of a photograph, the photographer
% In the case of a computer generated work, the person who causes the work to be

created62

In the case of a work made in the course of the author’s employment under a contract of
service or apprenticeship, the employer shall, in the absence of any agreement to the contrary,
be the first owner of the copyright. In Thomas v. Manorama63, it was held that in the case of


61 http://www.infinijuridique.com/content/copyright last accessed on 23rd Sept, 2013
62 http://www.infinijuridique.com/content/copyright last accessed on 23rd Sept, 2013
63 http://indiankanoon.org/doc/1514026/ last accessed on 23rd Sept, 2013

22

termination of the employment, the employee is entitled to the ownership of copyright in the
works created subsequently and the former employer has no copyright over the subsequent
work so created.

Where a person employs another to do work for him under his control in a way that he would
direct when, where and how the work should be done, then it amounts to a contract of service.
Whereas if the same person employs another to do work for him but leaves it to him to decide
how the work is to be done, it would amount to contract for service. Thus, the distinction
between the two is the same as that between an independent contractor and an employee and
the law is applicable as it had been discussed under the US law resulting in the architect being
the author in the first case and the employer being the author in the second case.

5.5.3 REQUIREMENTS UNDER THE ACT

5.5.3.1 CONCEPT OF ORIGINALITY

T he first and foremost requirement of a work to classify for protection is
“originality”, which in simple words means something new, that has not been
done before. However, there has been no definitive definition that has been laid
down by the act defining the same. As we know, most of Indian Copyright laws are
derived from the laws of the UK due to which they also follow a similar approach to the
question of originality. The similarity can be seen in a number of cases too.

For example, in the case of Macmillan and Co. v. K.J. Cooper64, it was held that for a
work to be right protection, “independent labour must be apparent” and that “it is
necessary that labour, skill and capital should be expended sufficiently to impart to the
product some quality or character which the raw material does not possess and which
differentiate the product from the raw material.”65

In Camlin Pvt. Ltd. v. M/s National Pencil Industries66, it was held that in order to be
covered by the Copyright Law, any work in which copyright is claimed must originate
from the author who must have expended his skill and labour and the work must be
something which has not been copied by the author from anyone else. In coming to this
conclusion, this case relied upon two English cases: Leslie v. J. Young and Sons67, and
Ladbroke (Football) Ltd. v. William Hill (Football) Ltd68. In both of them, there was an


64 Macmillan and Co. v. K.J. Cooper, A.I.R. 1924 P.C. 75
65 Ibid.
66 Camlin Pvt. Ltd. v. M/s National Pencil Industries, A.I.R. 1986 Del. 444
67 Leslie v. J. Young and Sons, [1894] A.C. 335
68 Ladbroke (Football) Ltd. v. William Hill (Football) Ltd., (1964) 1 All E.R. 465

23

emphasis upon the labour expended in the creation of the work sought to be protected.
This approach had been adopted by the Indian Courts too.

The Indian approach seemed to focus upon the effort of the labour and claimed that the
facts would be protected simply because labour had been expended in collecting it. This
was different from the US approach and similar to the UK approach. This showed how
heavily Indian courts relied upon English courts which caused adverse effects on Indian
jurisprudence.

However, Indian courts saw a radical shift in this position through the case of Eastern
Book Company v. D.B. Modak69, wherein it was opined that a standard of minimum
creativity and exercise of skill and judgment would be needed. This pronouncement
means that the Court has now adopted a combination of the U.S. and Canadian
positions as the Indian position on this issue. This has been criticized on the fact that
although for establishing a copyright, the creativity standard that applies is not that
something must be novel or non-obvious, but some amount of creativity in the work to
claim a copyright is required. It does require a minimal degree of creativity.70

It can be seen that this judgment is a step in the right direction as it aims to protect that
which is the creation of a man’s intellect and not that which is the fruit of his labours.
Just because time, money and labour have been spent on a work, does not qualify it to
be passed off as original literary work. In the long run, there needs to be a separate
yardstick for determining originality so that it acquires a definite character.

5.5.3.2 OTHER REQUIREMENTS

T he second requirement is that it should be in some tangible form and attached to
any medium. That medium can be paper, CD, magnetic tape, plastic or even rock.
This is not a ground for non grant of a copyright. The third requirement is that the
work which is expressed in any tangible medium should be such as it can be perceived,
reproduced or communicated later on. So to summarize the requirements of copyright
one has to look for originality requirements in terms of independent creation with some
element of creativity.71

5.5.3.3 MODES OF TRANSFER OF COPYRIGHT


69 (2008)1 S.C.C. 1
70 http://swayambhumukherjee.blogspot.in/2009/10/understanding-originality-in-copyright.html last accessed on
23rd Sept, 2013
71 Ibid.

24

A n author may in the course of time, may wish for another to have access to his
original work. This access can be granted only if the copyright is somehow
transferred or shared between the original author and the person seeking
access. For ex: if an architect designs a building whose copyright subsists in his name but
subsequently he sells the building to someone who wishes to be the holder of
intellectual property in the building as he has bought the building, what remedy would
be available to the author? He could exercise various options such as the process of
assignment or issue a license in favour of the new owner, which would transfer the
rights of copyright into the hands of the latter.

It is imperative that when considering assignment or license arrangements, companies
ensure that their arrangements do not infringe Indian exchange control regulations.
Often companies engaging in an assignment arrangement overlook the fact that Indian
Reserve Bank rules must be followed when issuing shares as consideration to an
Assignor who is a non-resident.

T 5.5.4 ASSIGNMENT
he owner of a copyright in an existing work, if he feels that somebody else can exploit his
expression commercially more effectively or for any other reason, may transfer his
copyright in the work to somebody else through the process of assignment under Section
18 of the act. This assignment or transfer may be made either wholly or in parts, for ex: the
author may assign 50% or 60% or 99% of his interest in the copyright owned by him. It takes
shape in the form of an agreement between the parties which has to be duly signed. It would
cover the rights assigned to the other party, the duration of assignment and also specify the
amount of royalty payable, if any, to the author or his legal heirs during the currency of the
assignment and the assignment shall be subject to revision, extension or termination on terms
mutually agreed upon by the parties.72

If the assignee does not use the rights conferred upon him within a period of one year from the
date of assignment, the assignment in respect of such rights shall be deemed to have lapsed
after the expiry of the said period unless otherwise specified in the assignment. If there is no
fixed period of assignment then in such case the assignment shall be for a period of five years
from the date of assignment. In a recent judgement, a division bench of the Delhi High Court
in Pine Labs Private Limited vs Gemalto Terminals India Limited73 the Court has held that in
case the duration of assignment is not specified, the duration shall be deemed to be five years

25
72 http://legalpoint-india.blogspot.in/2010/06/copyright-law-in-india.html last accessed on 23rd Sept, 2013
73 http://www.indiankanoon.org/doc/1662896/ last accessed on 23rd Sept, 2013

and after five years the copyright shall revert to the author. Similarly, if the territorial extent is
not defined then the assignment shall be limited to the territory of India.

5.5.5 LICENSING

A part from using the method of assignment to transfer the rights, another method that
may be used includes that of licensing. A license would mean the permission to do a
certain act, the performance of which would otherwise be deemed to be an
infringement. For ex: an architect may grant permission to a film production company to show
his building in the background of a song sequence under a license, the use of which would
otherwise amount to infringement of copyright.

This has to be in writing and duly signed by both parties under Section 30 of the act and the
licensee can be either a registered or an unregistered user. The difference between the two is
that the registered user can institute infringement proceedings in certain circumstances, while
the unregistered permitted user does not have this power under the Trademark Act. The
parties to a License agreement are also free to choose the territorial scope of the agreement as
well as the term of the contract.74

A license is different from an assignment as under a license, the user may get certain rights as
agreed under the agreement but does not acquire ownership of the work, whereas in the case of
assignment, the assignee becomes the owner of the interests assigned to him under the
agreement. A license may be exclusive or non-exclusive.

An exclusive licence allows the licensee to exercise the rights granted to the exclusion of all
others, including the copyright owner. If the owner of copyright in a plan grants an exclusive
right to reproduce the plan in the form of a building, for example, then no one else (including
the copyright owner) may build a house from this plan. A non-exclusive license is also a
permission to use the work in one of the ways exclusively controlled by the copyright owner,
but because it is non-exclusive, the copyright owner may offer similar licences to others, and
can use it himself. A non-exclusive license does not have to be recorded in writing, but it is
always advisable to do so. Further, a non-exclusive license does not have to be expressly
granted, but can be implied from the conduct of the copyright owner.

5.5.6 COMPULSORY LICENSE

26
74 http://www.mondaq.com/india/x/87398/Trademark/Assigning+Licensing+IPR+In+India last accessed on 23rd
Sept, 2013

C ompulsory licenses are licenses that are granted by the government to an individual or a
company seeking to use the copyrighted works. These are basically rights which are
forced to be transferred by an unwilling seller to a willing buy in order to avoid the
formation of a monopoly. Remuneration or royalties received for a copyrighted work under
compulsory license are specified by the law of each country.

Compulsory licensing can be invoked under the following circumstances with respect to both
published and unpublished works: If any work that has been published or performed in public
for which a complaint is made to the Copyright Board that the owner of the copyright has
refused to republish or allow the republication of the work or has disallowed the performance
of the work or has not allowed for the communication of such work by broadcast due to which
it is withheld from the public.

In such a case, if the Board is satisfied, they may grant the person who made the complaint a
license to republish or communicate the work subject to payment to the owner of the copyright
under Section 31 of the Copyrights Act, 1957. It has been proposed to amend this section of the
Copyright Act so that a compulsory license may be granted under this Section in respect of not
merely an Indian work but in respect of any work. Considering that a compulsory license may
be granted in respect of any work, it has been proposed to delete the explanation which
defines what an Indian work is for the purposes of this Section. Further, it has been proposed to
allow for the grant of a compulsory license under this Section not specifically to the
complainant but to any person(s) who, in the opinion of the Copyright Board, is or are qualified
to publish the concerned work.75

In case of an unpublished work, or work that is published and communicated but withheld from

the public in India, if the author is dead or unknown or cannot be traced, any person who
applies to the board informing them of the same shall be granted a license to publish or
communicate the work, under Section 31A of the act.76 This would be subject to payment of
royalty and other conditions to be determined by the board.

W 5.5.7 INFRINGEMENT

henever any person makes breach of any right of a copyright holder he is said to
have infringed the copyright. The copyright infringement occurs when a copyrighted
work is reproduced, distributed, performed, publicly displayed, or made into a

27
75 http://copyright.lawmatters.in/2010/05/non-voluntary-copyright-licences.html last accessed on 24th Sept, 2013
76 http://www.slideshare.net/altacitglobal/compulsory-licensing last accessed on 24th Sept, 2013

derivative work without the permission of the copyright owner. Application of this to works of
architecture would mean that reproduction or construction of a building based on another
building without prior permission would qualify as an infringement.

Under this, the works which are derivative in nature must be that of the author of the
copyrights and not anyone else. For ex: if an architect uses a part of the architectural design of
another architect in order to build his own building, without the prior permission of the
architect who owns the copyright of the building from which the other architect derives his
work, it would amount to infringement. This permission may be obtained through an
assignment or a license for the use of the same. As for the author, if he makes certain changes
to his work, he must ensure that the changes are not minimal and should be such as for it to
qualify as a new piece of work.

However, not all inspiration amounts to infringement of copyright. There are few situations
under which such inspiration would be covered under the doctrine of fair use and would thus
not amount to infringement. Copyright law allows portions of a copyrighted work to be used
without the author's permission for specific purposes. This is referred to as fair use. It allows for
portions or in some cases the entirety, of copyrighted works to be used for purposes such as
criticism, comment, news reporting, research, teaching, scholarship, or research.77 This is a
defence available to someone who uses another’s work—without permission—in the creation
of his own.

Indian law on infringement of architectural expression has not yet been explained properly as it
is clubbed with other expression such as music, arts etc. We shall be discussing how the law
should be changed in order to give architectural expression the protection it deserves under the
law.

5.5.8 REMEDIES

5.5.8.1 CIVIL AND CRIMINAL REMEDIES FOR COPYRIGHT
INFRINGMENT

A copyright owner can take legal action against any person who infringes the
copyright in the work. The copyright owner is entitled to remedies by way of
injunctions, damages and accounts. Any person who knowingly infringes or
abets the infringement of the copyright in any work commits criminal offence under
Section 63 of the Copyright Act.78


77
78 http://legalpoint-india.blogspot.in/2010/06/copyright-law-in-india.html last accessed on 24th Sept, 2013

28

5.5.8.2 DEFENCES TO INFRINGMENT

A defendant in an infringement action may rebut the presumption of copying by
showing that it is an independent creation. He should be able to establish that
his works are substantially different from that of the plaintiff so as to qualify as
being original. For instance, if an architect constructs a building which is substantially
similar to the Taj Mahal which may be copyrighted, he would have to ensure that he
proves the dissimilarity between the two in order to avoid charges of infringement.

Apart from this, the defendant is free to use the defence of fair use. If he is able to
prove that the act of infringement is being directed at an architectural design which is to
be used for the purposes of conducting research upon in order to study the expression
of architectural techniques behind its construction, he may be excused from the charge
of infringement. However, this exemption should not be misused and should consider
other important factors of the purpose and character of the use, including whether it is
of a commercial nature or for non profit educational purposes, the nature of the
copyrighted work, the amount and substantiality of the portion used in relation to the
copyrighted work as a whole, and the effect of the use upon a potential market for or
value of the copyrighted work.79

Lastly, it is not compulsory to get one’s work copyrighted. Copyright vests in an author
from the moment the work is conceived and it does not require any formality. However,
certificate of registration of copyright serves as prima facie evidence in a court of law
with reference to dispute relating to ownership of copyright.

5.5.9 PROCEDURE TO APPLY FOR COPYRIGHT REGISTRATION

I n order to register an architectural work for copyright under artistic works, the following
formalities have to be complied with:

& Form number XIV must be collected from the Copyright Office and submitted in
triplicate after filling the particulars mentioned therein. One form must be held by the
applicant which would be carrying the diary number. This diary number acts as a
tracking number that can be used to check the status of the registration.

& These documents would be submitted to the Copyright Office along with a Demand
Draft of Rs. 500.

29
79 http://legalpoint-india.blogspot.in/2010/06/copyright-law-in-india.html last accessed on 24th Sept, 2013

& A NOC-No Objection Certificate duly signed by the creator would have to be attached
with the form.

& A registration may take anywhere from 1-2 years to be passed.

& If the applicant is not from India, he must mention the local address, without which the
registration would be denied.

& Also, if the applicant is not from India, he would have to disclose details of any legal
cases he may be involved in the home country.

5.6 FUTURE OF INDIAN LAW ON ARCHITECTURAL EXPRESSION:
CRITICISM AND RECOMMENDATIONS

T o start with, there are currently about 900 companies practising architecture in India
along with a large number of architects working as independent contractors. With this
growing number along with the sprouting of buildings in any and every part of this
developing nation, one must think that the laws governing such architecture would be in place.
However, this field is still granted a relatively low standard of protection with few provisions
relating to it in the Copyrights Act of 1957.

First and most importantly, these works are governed by the provisions of the Copyright Act,
1957 where they are bundled along with other works such as music, computer programs, novels
etc. They do not have a separate act governing them due to which they must follow the same
provisions as those applying to the other works. This causes a lot of confusion as architecture is
a field of its own with its set of peculiarities. How and why should this be clubbed with other
works? The need of the day is to pass a separate act for architectural works and their
protection.

As of now, it is covered under the Copyrights Act which suffers from various draw backs with
regards to the protection of architectural works. We shall be discussing them one by one as
stated below in order to strengthen the existing copyright law governing it:

' Architectural expression under the Copyright Act, 1957 is covered as a subject matter
under the head of artistic works and literary works for its plans. Due to this it cannot be
viewed as a separate field. This clubbing should be done away with by adding
architectural expression as a separate head under the subject matter covered by the
act. Along with this, what kind of a building would constitute architectural expression

30

must be defined in detail. It must also define the rights along with the limitation on
them, such as the limitations on exclusive rights of the architect (such as the right of
alterations). For example, if there is a regular office building and the building of a mall
designed in an artistic fashion, both of which seek copyright protection, firstly, which of
the two would qualify as architectural expression and secondly, what would be the
rights granted to the owner of such copyright? Lastly, the remedies in case of an
infringement must be specifically defined for architectural building which may in rare
cases involve demolition of the building.

' In order for an architectural work to be qualified for protection under copyright, it must
be original. The word original has been used very loosely in this context and its meaning
has been derived on the basis of various judgments passed over the years. Most of this
is influenced by the theories of law followed in the UK courts. How can the law expect
one to adhere to a certain characteristic and not define it in the first place? This causes
the meaning of original tilting towards being subjective. Keeping this in mind, a separate
yardstick must be defined for measuring what qualifies as being original which must be
different from the standards adopted by other works like literary or music as originality
in each of them would hold a different meaning. For example, if a building resembling
the Shinto architecture in Japan is recreated in India following the same pattern of
archways but with a noticeable difference such as a slight change in the bend of the
archways, would it still be qualified as original under the Indian law? Such step must be
taken in conjunction with international copyright such as the Berne Convention of which
India is a signatory. It must also take into account the new technological approach to
construction which further blurs the concept of originality.

' In India, the concept of copyrights in architecture is at a budding stage. This period
marks the onset of the proposal of such protection in the country which is extremely
surprising considering the boom of the construction industry over the last recent years.
Architects work closely with the construction industry due to which their economic
welfare is destined to be determined with the peaks and fall of the construction
industry. Considering this, the role of architectural firms in copyright is still uncertain in
the country. This can be attributed to the fact that all such transactions take place
through the enforcement of contracts among parties since there is no specific law laying
down provisions regarding the same. In the absence of a national law, this serves as a
good alternative. Therefore, it is about time that the importance of copyright in
architecture is recognised and duly legislated.

' A major loophole discovered in the present copyright act would be the term of
“derivative works”. Under the act it is said that the author of the copyright would have a

31

right to bring a charge for infringement in case another person reproduces, derives from
the work of the original architect. It has used the term of “derivative work” without
defining it. Due to this one may confuse this with adaptation or transformation. It puts
the authors of architectural expression in a Catch 22 situation as the architect may think
that he is simply drawing inspiration from the work of another but it may be termed as
being a derivative work due to the lack of explanation as to what constitutes a
derivative work. For example, if an architect builds a building which represents a
combination of the design of three other buildings, would it be a derivative work or an
adaptation? It would amount to infringement but the exact recourse to be undertaken is
undefined in such a case.

' If we were to follow the US law, the derivative work must be such as to make use of a
substantial amount of the prior work’s expression. In the case of Rogers v. Koons80,
Artist Jeff Koons bought a note card displaying Art Rogers’ photo of a group of puppies
with their owners and hired architects to make four sculptures based on the
photograph. The sculptures were similar to the photograph with small changes such as
flowers in the couple’s hair, and the puppies’ blue coats. The courts held that the
sculptures were too similar to those in the photograph despite the added changes by
the architect and thus was made to be a case of infringement.


' If the same law was to be applied to the earlier example, it would or not be a derivative
work based on the similarity that the new building would display to the prior work. This
level of similarity would be judged by the eye of a common man and not an artist’s.

' On similar lines, copyright law deters a person from making adaptations of protected
works without the permission of the owner of the copyright in the original work.
Although the adaptation may be eligible for copyright protection in its own right, it
would amount to infringement unless the necessary copyright licence has been
obtained from the owner of the copyright. There could be two ways to comprehend this
situation. Firstly, if a person does not have the right to use the original work in the first
place, how can his adaptation of it be copyrighted? Secondly, the adaptation could be
copyrighted as being entirely new such that it has a separate standing from the original
work it adapted from.

' Adaptation as covered under the copyright law means a change in the format. As noted
earlier, the definition of an “adaptation” under Indian law is extremely narrow and
limited, and this limitation has created yet another grey area in Indian copyright law.81


80 960 F.2d 301 (2d Cir 1992)
81 http://copyright.lawmatters.in/2010/10/adaptations-derivations-and.html last accessed on 24th Sept, 2013

32

Therefore, either the definition of adaptation must be amended so as for them to apply
to architectural works or a separate clause defining the same must be inserted into the
act.

' The Copyright Act, 1957 is designed in a way that it bundles several creative
components such as music, literary, dramatic, arts into the same act. All of them being
so different in their own way are subject to the same set of provisions of law. In my
opinion, the act must be amended to alter this situation by a segregation of these wide
heads into smaller and more objective groups. Provisions regarding each of them should
be laid down separately as provisions which may be applicable to one may not be
applicable to the other. For instance, architectural expression could be a separate head
with its own set of provisions.

' The provisions laid down by the Copyright Act, 1957 were last amended in 1999 and are
thus quite outdated. They must be revised keeping in mind the technological revolution
in the last 13 years. The architectural plans and blueprints which were usually hand
drawn before are now made using design tools available on the internet. This does not
specifically change or affect copyright law but would affect the architect’s bend of
creativity by restricting it to what such technology has to offer.

In today’s modern world where architectural plans are made using digital 3D design techniques,
digital imaging etc.; the legal implications will be different. For instance, making an
architectural plan by traditional drawing method and using a 3D printer for the same might
deliver a different result. This is due to the chance of a creation due to an accident, one slight
disruption may lead to a completely different plan from the one envisioned. On the other hand,
once you press that button to transmit your computer file to the machine that builds up your
design, all control is transferred to the machine. Since the future of technology lies in 3D
printing, the main question is whether it is not an infringement to create 3D printer designs for
items protected, to disseminate such designs or to use a 3D printer to make copies of said item
for personal, private use.

Since the copyright law in India is based upon that of UK, we could derive from a case in the UK
wherein a 3D printer was used to make a copy of a vase produced by Acme PLC who own
copyright in the design drawings for the vase. Bridget reverse-engineers a 3DPDF for the vase
and uses it to make her own copy of it and distributes the same on the internet for other users.
Has Bridget infringed any of Acme’s rights?

It was held that there was no infringement based on the decision of BBC v Pally, an earlier case
where the garments depicting the ‘teletubby’ characters were brought for 2D infringing copies
of their 3D creations. It was held that copyright in a design document was not infringed by any

33

form of copying of the subject article, including making a 2D copy of it. Thus, the garments did
not infringe copyright in any original Teletubby design artwork, as they had not been directly
copied from them.82 Using this rule as a precedent, along with the fact that there was absence
of commercial intent in making the 3DPDF, there was held to be no infringement in the case of
printing of the vase using the design owned by Acme PLC. This meant that this included making
new two-dimensional drawings from the three-dimensional product - in other words, if you
reverse-engineer the product to create your own design, this new design document doesn't
infringe the copyright of the original one. And since the evidence was that Pally's T-shirts had
been copied from the Teletubbies themselves as seen on TV, not the BBC's original design
drawings for them, Section 51 applied and there was no infringement.83

Another important topic to be discussed under the protection of works is the protection of
statues, sculptures etc. designed exclusively for a movie or used in a movie. Just like any other
artistic works, these works too require air protection against infringement. Although the Indian
movie fraternity is considered to be one of the most glamorous in terms of the sets used in
songs and movies, no case regarding protection of such works has been registered till now. On
the other hand, this has been the focus of various cases one of them being LucasFilm Limited v
Ainsworth84 which involved infringement issues relating to both UK and US copyright.

In this case, Ainsworth, was approached to produce stormtrooper helmets for the Star Wars
series and was provided with two drawings and a clay model from which to work. He was then
asked to make stormtrooper armour and was given drawings and samples. He kept the moulds
following production and set up a website selling helmets and armour in the US that were made
from the original moulds. A suit for infringement under the UK copyright laws was brought
forward by Lucasfilm; owners of the artistic works of Star Wars, with the argument that sale of
the helmets would amount to infringement as they qualified as sculptures which fall under the
copyright law.

The question to be issued here was whether the helmets were artistic works so as to gain
protection under the law. While analysing the definition of a sculpture under the law, the court
held that the helmets could not be considered as a sculpture under the law due to its utilitarian
nature and the fact that it was being used as an industrial prop and nothing more. It was
intended to be worn as part of a costume in a film in order to identify a character and its

34
82 http://www2.law.ed.ac.uk/ahrc/script-ed/vol7-1/bradshaw.asp last accessed on 2nd October, 2013
83 http://technollama.blogspot.in/2008/05/end-to-knitting-saga.html last accessed on 2nd October, 2013
84 [2008] EWCA 1878

characteristics. It was a combination of costume and prop, but its primary purpose was
utilitarian; although it did not lack artistic merit, it lacked artistic purpose.85

Apart from this, other reasons were cited by referring to cases like George Hensher Ltd v
Restawhile Upholstery (Lancs) Ltd86, which paid attention to the intention of the creator. In this
case, although the items were the result of craftsmanship, they were not works of artistic
craftsmanship, as they were intended to give a particular impression in a film, not to appeal to
the viewer's aesthetic sense. Ainsworth also relied on Section 51 and 52 to claim a defence.

Next, the Court considered whether UK courts had jurisdiction to adjudicate claims brought by
foreign parties against persons domiciled in the United Kingdom for infringement of copyright
committed outside of the European Union in breach of the copyright law of that country. The
court started with relying on the principle set in British South Africa Co v. Companhia de
Moçambique87 where an English court having no jurisdiction to judge an action for the
determination of the title to foreign land was held to be a general principle which applied not
only to foreign land, but also to claims for foreign intellectual property rights infringement.
However, it was realised that the rule in Moçambique had been significantly eroded and could
no longer be applied in light of the development in European law of article 22(4) of the Brussels
I Regulation, which states that in proceedings concerned with the registration or validity of
patents, trademarks, designs, or other similar rights required to be deposited or registered, the
courts of the Member State in which the deposit or registration has been applied for, has taken
place or is deemed to have taken place, have exclusive jurisdiction irrespective of the domicile
of the defendant.88 Accordingly, the court allowed Lucasfilm to proceed with its claim against
Ainsworth for the infringement of its U.S. copyrights. Such a decision would be particularly
significant where infringement takes place in a country with less stable and internationally
respected legal systems than the U.K., for example in India.

Further one could have a look at the case of Leicester v. Warner Brothers cited earlier wherein
a sculpture protected by copyright was displayed about 8 times in the movie Batman Forever
without Warner Brothers obtaining a license to make use of it in the movie which was
considered an infringement. India must take a clue from such judgments and claim protection
for its copyrights in film props and sets. The dearth of cases relating to such issues opens
gateways for India to define its own way to deal with such infringement issues.

35
85 http://www.internationallawoffice.com/newsletters/detail.aspx?g=9774c287-ca5a-4f05-8480-deddadb9ac41 lat
accessed on 3rd October, 2013
86 [1976] AC 64
87 [1893] AC 602
88 http://about.bloomberglaw.com/law-reports/highest-uk-court-rules-replica/ last accessed on 3rd October, 2013

It can be seen from the numerous loopholes and recommendations made with regard to
copyright in architectural expression, that the condition of the Indian legal system pertaining to
architectural expression is quite appalling. It is still viewed as a fairly new concept and will take
time to be formally accepted and enforced through the law. It has still not recognised the scope
of copyright in architectural expression and is thus lagging far behind when it comes to its
protection. With buildings being constructed all over the country, this concept cannot and must
not go without securing the due protection that it deserves.

5.7 COMMON COPYRIGHT PROBLEMS ENCOUNTERED BY
ARCHITECTS

T here are a number of fairly commonly arising situations involving infringement of
architects’ rights in their drawings or in buildings they have designed. We shall be
enlisting and discussing few of them.

( If plans are produced for the purpose of planning permission and then the client does
not buy the site, can the purchaser of the site freely make use of the plans? The answer
to this question is almost certainly no. If the new owner of the site builds in accordance
with those plans, it would result in copying which is itself an infringement of the
copyright in those plans and he will then build a building in accordance with those
plans. The building of the building constitutes reproduction of the drawings in a material
form and itself constitutes an infringement of copyright. 89

( A second commonly encountered problem is where plans have been produced for
company A, who then sells the site with planning permission to company B. Company B
then builds a building in accordance with the plans, although company B was not the
company responsible for commissioning the plans. The question arises as to whether
company B is entitled to do this. This will depend entirely on the agreement between
company A and the firm of architects. If the architects have been retained to produce
drawings for the purposes of obtaining planning permission then the use of those plans
to build the building will infringe the architects’ copyright. All that company A had was a
licence under the architects’ copyright for the purposes of obtaining planning
permission. Company A cannot therefore pass on to company B any greater licence
than company A was granted.


89 http://www.crippslink.com/index.php?option=com_content&view=article&id=124:how-architects-can-avoid-
copyright-litigation&catid=20:technology-law-publications&Itemid=509 last accessed on 25th Sept, 2013

36

( Questions often arise where only part of a design has been copied and the question
then becomes whether this is sufficiently material to constitute infringement. The
answer to this question will depend entirely on the facts but it is always important to
look at the significance of the feature which has been copied. On the other hand, if less
significant features have been taken but a reasonable number have been taken, this will
also probably amount to infringement. Certainly in other areas of copyright
infringement it is commonly said that infringement will generally be found where a
defendant has been taking small but regular helpings from his competitor’s copyright
works.

( In practice, most copyright disputes involving architectural drawings arise from the use
of pre-existing drawings without consent from the owner of the copyright in those
drawings. The question that has to be answered is whether the person wishing to use
those drawings is in a position to take advantage of the licence which has been
expressly or impliedly granted by the architect. If the architect agreed that the plans
could be used to obtain planning permission and build the building and the person
wishing to take advantage of that licence has obtained rights through the architect’s
client, then such use is unobjectionable. However, if the licence granted to the client is
only partial or if the architect has not been paid in full legitimate objection may arise.90

5.8 COPYRIGHT AND PROTECTION OF ARCHITECTURAL WORKS
IN UNITED KINGDOM

T 5.8.1 HISTORY OF COPYRIGHT LAW IN UK 37
he history of copyright in the UK is usually traced back to privileges granted by the
monarch in the early modern period before 1700, giving printers (but not authors as
such) exclusive rights to print and distribute books. After the Anglo-Scottish Union of
1707, the author gained the exclusive right and liberty of printing books through the Statute of
Anne 1709 which confined the right to a period of 14 years.91 During the nineteenth century,
the scope of copyright was extended to include art, drama as well as literature.

The law also developed an international character when the Berne Convention for the
Protection of Literary and Artistic Works 1886 provided the concept of fair dealing where the
use of a copyrighted work may not require a license or constitute infringement. The late


90 Ibid.
91 http://www.britac.ac.uk/policy/copyright-guideines/part1.cfm last accessed on 25th Sept, 2013

nineteenth and twentieth century, saw further expansion of copyright to cover new ways of
producing and disseminating creative works: photographs, films, sound recordings, broadcasts,
computer programs and databases are all protected by copyright and neighbouring rights such
as Database Right.92

The act governing copyright law in United Kingdom is the Copyright Designs and Patents Act,
1988. In terms of architecture, it covers architectural drawings, plans and buildings. There is no
official copyright registry in the United Kingdom nor is there any requirement to pay
registration fees to secure copyright protection. As we go further, we shall be discussing how
effective the copyright law regime in UK is for protecting the interests and rights of architects in
their works.

5.8.2 COPYRIGHT LAW IN UNITED KINGDOM – COPYRIGHT
DESIGNS AND PATENTS ACT, 1988

C opyright law protects original architectural drawings and plans as literary works under
Section 3(1) of the Copyright Designs and Patents Act, 1988. However, a work of
architecture, being a building or a model for a building is also protected by copyright law
as an “artistic works” under Section 4 of the act. Therefore, in this way, architectural plans and
buildings are governed by different provisions under the act. Section 4(1)(b) defines a building
as including any fixed structure or part of a building or fixed structure:s4(2). This definition
includes for example, a modern addition to a building from another era, such as the Clore
Gallery at the Tate Britain in London.93

There is no need for architectural works to have ‘artistic’ quality which means the same level of
protection could be afforded to a block office building as that to the House of Parliament,
although this would be achievable only if other requisite of originality are met by the block
office building. The test for originality is quite simple and entails that the work must not be a
questionable copy of another work and that independent skill and effort went into its creation.
Therefore, under the copyright law, originality does not impose any standards of quality or
creativity.

In accessing the originality of an artistic work, a distinction has to drawn between what is
visually significant and what is not. For example, in Drayton Controls (Engineering) v Honeywell
Control Systems94 the court compared two drawings of a valve. The drawing was held to be
original by the court as there was a change in the shape which was visually significant. A mere


92 Ibid.
93 Copyright Issues on the Protection of Architectural Works and Designs,
http://centaur.reading.ac.uk/4621/1/Mann-Denoncourt.pdf last accessed on 26th Sept, 2013
94 [1992] FSR 245

38

reduction of scale and dimension of the original work was not considered visually significant
and held unoriginal. Further, in the case of Interlego AG v Tyco Industries Inc95 it was held that
in order for a work to constitute as being original, there must also be some unique element or
element of material alteration or enhancement to sufficiently show the change.96

While copyright law protects architectural plans and buildings, it does not protect the ideas
embodied in them. Only the permanent expression of the idea is protected: Jones v London
Borough of Tower Hamlets97. This is known as the idea/expression dichotomy. In this way, the
law offers free thought of architectural ideas and concepts without their monopolisation. Here,
it has been held in the case of Kenrick & Co v Lawrence & Co98 that the more general the idea
expressed in an architectural work is, the more difficult it will be to establish a case of
infringement. The difficulty arises when the court has to draw a distinction between a general
idea, which is not protected, and its expression, which is.

The question of ownership of the work under the law in UK is that the creator of the work shall
be the author and first owner of the works. It also states that where an employee in the course
of his employment creates the architectural work, then it will belong to the employer. Thus,
even here, the concept of the artist working as an independent contractor applies, wherein if
he is working as an independent contractor, he would be the author of the work while if he is
employed by someone, it would be considered as contract for service and the employer will be
the author of the works.

Copyright lasts for a limited period of time which is different for different categories of work. In
case of architectural plans and buildings, the period lasts from creation of the work until 70
years from the death of the author. When the copyright term expires, all the rights holder’s
rights come to an end, and the work enters the unfettered public domain.

5.8.3 TRANSFER OF COPYRIGHT - ASSIGNMENT AND LICENSING

I n case the author of the copyright wishes to transfer his copyright in the architectural work
to another person, he may do so through the process of assignment or with the help of a
license. Since copyright, is a bundle of several different rights, a transfer may be of one or
part of them rather than of the whole. The assignment must be in writing signed by or on
behalf of the assignor and does not affect the duration of protection of the work.

39
95 [1989] AC 217, [1988] 3 All ER 949
96 Copyright Issues on the Protection of Architectural Works and Designs,
http://centaur.reading.ac.uk/4621/1/Mann-Denoncourt.pdf last accessed on 26th Sept, 2013
97 [2001] R.P.C.23
98 (1890) 38 WR 779

Provided the architect does not replicate the whole design in another work of architecture,
Section 64, CDPA1988 allows the designer to retain the rights to reproduce some parts of the
design for development, to be reused in another project. In general, architects prefer licensing
than assigning copyright of architectural plans. This provides them freedom of future use and
modification of their design for development.99 In Glengate-KG Properties Ltd v Norwich Union
Fire Insurance Society Ltd.100 and others, although a license was granted to Glengate to
reproduce the designs after completion of work, the architects had reserved the copyright in
the drawings and designs.

If there is no expressed agreement on copyright, the employer, that is, the commissioning
client, will have an implied license to use the drawings and plans for him according to the fee
paid to the architect. An architect can license a client or other design professions to use the
drawings, but the copyright normally remains with the architect who creates the drawings. If
fees due to them are not paid, the licence would not be valid. It would be an infringement of
copyright if the drawings are copied, distributed or rented to other designers or to make
alterations base on the original drawings without the author’s permission in the form of a valid
license. If a third party uses the plans for construction knowingly that it is an infringement of
copyright, they are in breach of copyright law. Apart from Copyright there are other forms of
protection for architects’ work such as unregistered design rights, registered nationally as
registered designs and European design rights.101

5.8.4 INFRINGEMENT OF COPYRIGHTS IN ARCHITECTURAL WORKS

C opyright is infringed when someone carries out one of the copyright owner’s exclusive
rights including those of reproduction, adaptation, copying, distribution of copies of
work to the public and an exception such as that of fair use would not apply.102 It is not
necessary that all cases would be that of direct infringement. There would be times when the
copyright owner may not even be aware of the infringement of his work perhaps in a far off
location. This may be in relation to the whole or a substantial part of the artistic work. In order
to understand how and under what situation it would amount to an infringement, we would
first have to understand what constitutes the meaning of substantial part of the work.

What is "substantial" is determined by a qualitative test, not a quantitative one, which means
that there may be an infringement even if a small but distinctive portion of the original artwork
is copied. There are accordingly no quantitative rules regarding what amount of a given type of


99 Copyright Issues on the Protection of Architectural Works and Designs,
http://centaur.reading.ac.uk/4621/1/Mann-Denoncourt.pdf last accessed on 26th Sept, 2013
100 [1996] 2 All ER 487
101 Ibid.
102 http://www.dacs.org.uk/knowledge-base/frequently-asked-questions last accessed on 26th Sept, 2013

40

work it is acceptable to copy or quote: a small taking could be substantial, a large one
insubstantial, depending on the nature of the work being copied.

In order to constitute infringement, there must be satisfaction of two elements. Firstly, there
must be a casual connection between the copyrighted and the allegedly infringing work as
established in the case of Francis, Day and Hunter Ltd v Bro103.Secondly, there must be copying
of a substantial part of the copyright work. In terms of the first element, the infringing work
must have been copied or derived from the copyrighted work. If two works are created
independently but found to be substantially similar, there would be no case of infringement
and the first to be created would be held protected by copyright. This similarity could be
coincidental or perhaps the result of the creators choosing similar subject matter.

A perfect replica is not necessary to prove infringement, as long as an ordinary average layman
would realise that there is an appropriation from the original work. Also, if the second author
uses the first author’s work to identify the common source, it would not amount to
infringement as he would have to further employ his own skill upon it: Pike v Nicholas104.

Getting back to the two elements stated above, a good example to explore the concept of
casual link would be through the case of Solar Thomson Engineering Co. Ltd v. Barton105. In this
case, the defendant asked the designer to design a spare part for a machine and in order to
make sure that he does not infringe the design of the claimant; he gave him instructions
regarding the design but did not show him the design of the claimant. It resulted that the
design created by the defendant was very similar to that of the claimant and the instructions
given formed sufficient causal link for it to amount to infringement.

Apart from a causal connection, in order to constitute infringement, it must be in relation to the
work as a whole or any substantial part of it. In the case of Pearce v. Ove Arup Partnership
Ltd.106, Pearce, who was an architectural student had made some drawings of a town hall and
claimed that an English civil engineering company along with Dutch architects had infringed his
copyright by erecting the Kunsthal in Rotterdam. Pearson held that features of Kunsthal’s
design had been copied from his designs which amounted to infringement. In this instance,
however, the court held that the degree of similarity between the two works was not sufficient
to give rise to an inference of copying.

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103 [1963] Ch 587
104 (1869) 18 WR 321
105 [1977] R.P.C. 537
106 [2002] ECDR CN2

Later it was held in the case of Designers Guild Ltd v Russell Williams (Textiles) Ltd.107 that
even if the overall impression of one’s work is similar to that of another, with noticeable
differences in details, it would amount to infringement. This seemed to follow the dictum of “if
it’s worth copying, it’s worth protecting.” The approach would be to not deal with the copied
features in isolation, but to compare their cumulative effect.108

At times, copyright of a work may not even realise that he has infringed someone else’s work.
The infringer need not be aware that he is copying in order to infringe another’s copyright
work. For instance, an architect may attend a convention where various architectural plans are
on display. He might sub consciously embody a few details from the plans he saw at the
convention into his own design, without it amounting to infringement. It is a key issue for
architects to determine a fine balance between manifestation of original concepts or styles
contained in the architectural plans already protected for use in their works.

5.8.5 ENFORCEMENT AND DEFENCES TO COPYRIGHT
INFRINGEMENT

T he first and most important form of defence under infringement of copyright of
architectural works is the concept of “fair use or dealing”. For instance, the design of a
building may be allowed to be copied as a smaller model to be used for private study.
The smaller model would be used only to examine and study the features and concept of
architecture used in the building and thus, such copying would not amount to infringement.

Other remedies under Section 62 of the Copyrights Design and Patents Act, 1988 include
damages and injunctions. Although demolition is also an option that may be exercised,
however, it is unlikely for the court to exercise this option as it involves a huge monetary loss.
The most common remedy in practise involves the awarding of financial compensation.

5.9 COMPARATIVE ANALYSIS OF COPYRIGHT LAWS IN USA, UK
AND INDIA

B oth the UK regime and the US legislation provide a similar level of copyright protection.
The fact that the US has specific legislation does not mean that the level of protection
afforded to architectural plans and works is higher. Both systems comply with the


107 http://www.publications.parliament.uk/pa/ld199900/ldjudgmt/jd001123/design-1.htm last accessed on 26th
Sept, 2013
108 Copyright Issues on the Protection of Architectural Works and Designs,
http://centaur.reading.ac.uk/4621/1/Mann-Denoncourt.pdf last accessed on 26th Sept, 2013

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requirements of the Berne Convention. An advantage of the UK system is that the definition of
building in s4 (1) (b) CDPA 1988 is very broad. The AWCPA definition of ’building’ is more
precise and therefore potentially more restrictive.

Neither the UK, United States nor Indian system of copyright protection provide completely
satisfactory protection to modern architects and engineers in respect of their architectural
plans, drawings or buildings (or models of buildings) in several respects. There is a need for
reform with respect to the protection of the rights and interests of the authors of architectural
works and designs. Firstly, it is submitted that features of architectural plans or building which
are original, even if they are functional, should be rewarded with legal protection against
unauthorised copying.

Secondly, there is a need for clear infringement standards in terms of artistic architectural works
especially in terms of the degree of “originality” and “substantial similarity” required to found a
successful action for copyright infringement. Thirdly, architecture should be protected in its own
category separated from “artistic works”, “graphic works” or the American category of
“pictorial, graphic and sculptural works”. Because of their nature and characteristics,
architectural works and designs should have sui generis protection. Most buildings are designed
to be functional and practical rather than simply for attaining an artistic purpose. Because of
their integrated characteristics of being utilitarian, functional as well as artistic, architectural
works and designs should not have to be evaluated under conceptual seperability test. There is a
need to establish a new test to satisfy their sui generis characteristics.109

As a solution, it may be that the most effective way to protect the rights and interests of
architects and designers of their architectural works and designs is by sui generis protection. Sui
generis protection would enable the special characteristics of architectural works and designs
requiring to be more adequately addressed.

This was regarding the prevailing copyright law in the US and UK. Since, the Indian copyright
law is based upon that of the UK, let us assume and study what would happen if the Indian
copyright law was to be based on the US law. If the US law was adopted and applied in India,
different legal implications would be bound to crop up. For instance, as per the current Indian
law, the exception to infringement is called “fair dealing” and consists of an exhaustive list of
activities covered under it. Also, the Indian law does not contain any list of factor to be
considered in determining fair dealing. In the US, the four statutory factors have been
interpreted to be illustrative and not to be treated in isolation. These factors are of possibility
of competition, necessity, commercial intent, nature of the copyrighted work and the effect of

Designs,
109 Copyright Issues on the Protection of Architectural Works and
http://centaur.reading.ac.uk/4621/1/Mann-Denoncourt.pdf last accessed on 2nd October, 2013

43

the use upon the potential market or value of the copyrighted work. Although some of these
factors have been considered while adjudicating in the Indian courts, the overall approach of
the courts has been quite restrictive.

For instance, in Harper & Row v. Nation Enterprises, the US Supreme Court applied much
emphasis on the implication of the defendant’s use on the potential market of the copyrighted
work. As mentioned earlier, this factor is little used in the Indian courts on fair dealing. Indeed,
it is without dispute that both the US and Indian laws us fair dealing and fair use as defences
against the cases of infringement but their applications vary to a large extent. If the Indian
courts were to apply the doctrine of fair dealing in a similar fashion as the US, it would open
doors to a more flexible, open, elaborate adjudication process rather than the conservative
approach that is currently adopted in the courts. Also, the adoption of this approach would help
to adhere with the Berne Convention by bringing about uniformity in the way different courts
adjudicated cases of copyright.

Similarly, the copyright law in UK must not blindly be copied and applied in the Indian regime.
This is due to the differences in sociological, economic and financial factors in both the
countries. The climate of a country plays a very important role in choosing the nature of
materials used for construction purposes. The size, nature of the windows used in a country
would vary depending upon the duration and amount of sunshine the region may receive. Also,
the population would play a great role in impacting the kind of architecture found in a
particular region. For instance, the houses in India are heading from being palatial bungalows to
single or double bedroom flats owing to the population explosion in the country. Such
advancements in a country which is home to a population of approximately 1.2 billion in
comparison to UK housing 63 million people calls for a different holistic approach.

To conclude, it is not wise to pick up the law of one country and apply it to another. The law of
each country must be developed keeping in mind its own requirements. For India, it is still at
the onset of its journey towards carving a copyright policy for architectural expression. It has
the power and flexibility of being, creating and protecting what and how it seeks, the way it
seeks. This opportunity must be utilized with utmost creativity by borrowing and making
changes in the current copyright law, showering attention upon the much ignored issue of
architectural protection.



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