Legal Issues Surrounding the Use of Digital Intellectual Property on Design and Construction Projects (2013)

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23 department’s opinion that “the lack of a valid model is not available as a litigation strategy.”305 IX. BIM ISSUES THAT MAY LIMIT COPYRIGHT PROTECTION FOR A MODEL A. Copyright in Original BIM Models and in Derivative Models 1. What Is or Is Not Protected by a Copyright Owner’s Rights in a Model Based on the departments’ responses to the survey questions, it appears that the departments have not encountered the issues that are discussed in this part of the digest. However, as the use of BIM becomes more widespread, the following issues may have more sali- ence. With BIM, the production of a model may proceed in a number of ways, each of which may give rise to ques- tions of authorship and copyright ownership, unless otherwise resolved in advance by contract.306 As empha- sized in this section of the digest, “[t]he parties should decide in advance which parties will be entitled to make derivative models from other parties’ models and how and when record copies of models will be created and preserved.”307 2. Rights of a Copyright Owner in a Derivative Model It is assumed in this subsection of the digest that there is an authorized transformation or adaptation of any underlying plans or data to create a model for a project. The issue, thereafter, is the copyright laws’ treatment of a model that is derived from the source- model for a project. Under Section 106 of the Copyright Act, a copyright holder has certain “exclusive rights,”308 including the rights to make copies of a protected work; to create a derivative work; to distribute copies of a protected work to the public; and to display a work publicly. A “deriva- tive work” is defined as one that is “based upon one or more preexisting works…[that] may be recast, trans- formed, or adapted.”309 To be a derivative model, it has 305 PennDOT Response. 306 Winick, supra note 68, at 1640. 307 Larson & Golden, supra note 38, at 87 (footnote omitted). 308 Under Section 106 the rights of a copyright holder in- clude the rights “(1) to reproduce the copyrighted work in…; (2) to prepare derivative works based upon the copyrighted work; (3) to distribute copies…of the copyrighted work to the pub- lic by sale or other transfer of ownership, or by rental, lease, or lending….” 309 Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000). to be based upon and borrow substantially from one or more preexisting, copyrightable works.310 The designer of an original model, for example, a transportation department or an independent contrac- tor, is the owner of the copyright and has the right to create a derivative model based on the source-model. Under the copyright laws, the creator of an original work has a “de facto monopoly” on all works derived from the original work.311 Thus, “[u]nderstanding the contours of infringement of the derivative work right also requires understand- ing how the derivative work right relates to the primary right granted to copyright owners—the right to control the reproduction of copyrighted works.”312 If a BIM model is copied or derived entirely from an underlying model for a project, unless altered by con- tract, the default rule is that the author of the model (e.g., the original architect, planner, or designer) owns the copyright in the resulting model.313 Without any additional creative work within the meaning of the copyright laws, a derivative work is but a copy of the underlying model.314 If the copyright holder in an underlying model cre- ates a derivative model based on the underlying model, however, the holder’s copyright in the derivative work extends only to that part of the derivative model that was original in the holder’s underlying work.315 For a derivative model to be both a derivative and to be sepa- rately copyrightable by the owner of the copyright in the underlying model, the derivative model must have borrowed substantially from the prior work.316 For the copyright holder in the underlying model who creates a derivative model, if the new elements in the derivative model are separately copyrightable, then the derivative model is separately copyrightable by the same copyright owner.317 The new elements in the derivative model must amount to more than a minimal or trivial contri- bution.318 A derivative model, thus, may be very similar to the underlying model. The Copyright Act’s provision that a designer of an underlying model has the right to make or authorize derivative models helps to prevent “an end- less series of infringement suits posing insoluble diffi- 310 M.H. Segan, Ltd. Partnership v. Hasbro, Inc., 924 F. Supp. 512 (S.D.N.Y. 1996). 311 NIMMER, supra note 20, at vol. 1 § 3.03[A]. 312 Loren, supra note 137, at 63–64 (2000) (footnotes omit- ted). See Fred Riley Home Building Corp. v. Cosgrove, 883 F. Supp. 1478, 1482 (D. Kan. 1995) (stating that “[c]reation of a derivative work requires consent by the owner of the original copyright to the creation of a derivative copyrightable work”). 313 Brunka, supra note 12, at 185. 314 Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc., 528 F.3d 1258, 1260 (10th Cir. 2008). 315 NIMMER, supra note 20, at vol. 1 § 3.04[A]. 316 Id. § 3.01. 317 Id. 318 Moore Pub., Inc. v. Big Sky Marketing, Inc., 756 F. Supp. 1371, at 1375 (D. Idaho 1990).

24 culties of proof.”319 The copyright in a derivative model protects against either the copying or the infringing of the underlying model’s original contribution present in a later derivative work.320 3. Rights in a Derivative Model Created by a Designer’s Licensee A copyright holder in an underlying model may enter into a license or other agreement with one or more col- laborators on a project, whereby, for example, the de- signer provides a copy of the underlying model and/or controls access to it. In this situation, it is assumed that a license or other agreement does not clarify who owns the copyright in a derivative model or models; thus, the default rules under the Copyright Act apply. It is as- sumed further that a collaborator later claims a copy- right in a derivative model that is based, of course, on the underlying model provided to the licensee. In this scenario, a derivative model is being created with the permission of the copyright owner in the underlying model, but the copyright owner has not been careful to make certain that any original contributions by way of a derivative model vest in the copyright owner of the underlying model. Patry on Copyright warns that when a “derivative work is created with the permission of the copyright owner or is otherwise permitted by law (e.g., the use is fair use), copyright may vest in the derivative work owner.”321 As Nimmer on Copyright also cautions, “[t]he rights between the underlying copyright owner and derivative owner should be determined by the contract between them. Absent any such contract, Section 201(c) sets the default rules….”322 Material taken from the underlying model is infringing if it is taken without the owner’s permission.323 By having an exclusive license to use the original model, the licensee is treated as the copyright owner of the underlying work for the purpose of exercising rights, the meaning or extent of which could be in dispute later, that have been granted to the licensee.324 Contributions to an underlying model created by an- other may be copyrightable as a derivative work, but any copyright in the derivative model would extend only to the new elements in the derivative model. The creator of the derivative model would not have any rights in preexisting material in the underlying model, which is one reason that it has been held that the copy- right in a derivative work is “thin.”325 319 Picket v. Prince, 207 F.3d 402, 406 (7th Cir. 2000). 320 NIMMER, supra note 20, at vol. 1 § 3.04[A]. 321 4 PATRY ON COPYRIGHT § 12:21. 322 NIMMER, supra note 20, at vol. 1 § 3.04[4]. 323 NIMMER, supra note 20, at vol. 2 § 7.16[B][5][b]; NIMMER, supra note 20, at vol. 1 § 3.01. 324 NIMMER, supra note 20, at vol. 1 § 3.05. 325 Harvester, Inc. v. Rule Joy Trammell + Rubio, LLC, 716 F. Supp. 2d 428, 439, 440 (E.D. Va. 2010) (stating that “deriva- tive works enjoy a thin layer of copyright protection, whereby only the original material contributed by the new author re- If the agreement between the parties bars a licensee from claiming a copyright even in a licensed derivative model, the contractual provision should govern.326 Fur- thermore, Nimmer on Copyright states that if the par- ties’ agreement stipulates that a licensee will not claim copyright in a derivative work and the licensee violates the stipulation, then the violation may “void the license altogether, thereby rendering the making of the deriva- tive work itself an act of copyright infringement.”327 4. Unauthorized Copying and Infringement of an Underlying Model In this scenario, there is no license or other agree- ment but a party presumably with access to an underly- ing model 1) copies the model and 2) makes original contributions to it in creating a derivative model. The scenario presented, first, is a violation of the copyright holder’s right in the underlying model to re- produce the model. As Patry on Copyright explains, “when a work is copied verbatim from one format to another, e.g., from a cartridge to a disk, or from a hard drive to any other file format, the reproduction right, not the derivative right, is infringed.”328 The reproduction right covers not only claims of verbatim reproduction of a copyrighted work, but also claims for non-literal copying. Non-literal copying constitutes in- fringement if the work is substantially similar to the copy- righted work. To infringe the derivative work right, the new work must also exhibit a substantial similarity to the preexisting copyrighted work. Thus, determining where infringement of the reproduction right ends and in- fringement of the derivative work right begins can be dif- ficult.329 Thus, the copyright owner’s right of reproduction of an underlying model may be violated without any “re- casting, transformation or adaptation of the authorship of the original,” i.e., without any infringement.330 Second, besides violating the copyright owner’s right of reproduction existing in the underlying model, the unauthorized user’s creation of a derivative model is an act of infringement. For example, infringement occurs when there is an unauthorized recasting, transforma- tion, or adaptation of a two-dimensional work into a three-dimensional version;331 “[t]he addition of an extra dimension usually necessitates creating elements not ceives protection”); see also Moore Pub., Inc. v. Big Sky Market- ing, Inc., 756 F. Supp. 1371 (D. Idaho 1990). 326 NIMMER, supra note 20, at vol. 1 § 3.06. 327 Id. 328 4 PATRY ON COPYRIGHT §§ 12:14. 329 Loren, supra note 312, at 64 (footnotes omitted) (empha- sis supplied). 330 4 PATRY ON COPYRIGHT § 12:16. See Harvester, Inc., 716 F. Supp. 2d at 447 (stating that when there was unauthorized copying of copyrighted work (architectural drawings) the court need not reach the issue of whether the defendant “incorpo- rated…protected expression into its own drawings”). 331 Id. § 12:20.

25 found in the original….”332 When there is an “unauthor- ized incorporation” of an underlying model into a de- rivative one, the incorporation is copyright infringe- ment.333 The incorporation violates the derivative rights of the copyright owner in the underlying model.334 Third, it is necessary, however, to separate the original contributions to the model and the original con- tributions in the infringing derivative. The author of an underlying model has no rights in the original elements contributed by the infringer to make a derivative model. The reason is that the author of the underlying model is not the author of the original elements contained in the infringing model. Assuming that the contributions made by the infringer contained in the derivative model satisfy the original work of authorship test under the Copyright Act, the infringer may claim a copyright only in his or her contributions contained in the infringing model.335 Under Section 103(a) of the Act “only the por- tion of a derivative…work that employs pre-existing work would be denied copyright.”336 On the other hand, if an underlying work “pervade[s] the entire derivative work” then the derivative model would not be protected by the copyright laws.337 More- over, “the original copyright owner is the only party that can distribute the infringing nonseparable deriva- tive material….”338 In sum, when a copyright owner’s derivative rights are violated by an infringer, it is possible for the in- fringer to have a copyright “in the noninfringing parts of the derivative work.”339 5. Substantial Copying Versus a Complete Transformation of an Underlying Model When an infringer makes a derivative work, in our case a model, the infringement must involve the appro- priation of the underlying model. There must be a sub- stantial similarity between the underlying work and the infringing derivative.340 However, the derivative, although based on an underlying model, may make so many alterations or contributions that the two models are not similar. Without substantial similarity in pro- tectable expression between the underlying model and a derivative model there is no infringement.341 332 Id. 333 NIMMER, supra note 20, at vol. 1 § 3.06. 334 Id. § 3.06. Brunka, supra note 12, argues that “alterna- tive design(s) may constitute derivative works.” With BIM it is easy to create plans that are similar; the “regularization re- sults in…copies becoming ‘substantially similar’” and closer to infringing. Id. at 185–87. 335 NIMMER, supra note 20, at vol. 1 § 3.06. 336 Id. 337 Id. 338 4 PATRY ON COPYRIGHT § 12:22. 339 Id. 340 Id. § 12:13. 341 See id. In sum, one who transforms a work sufficiently may be entitled to a copyright based on the creator’s contri- bution.342 As one commentator notes, a copyright owner’s “exclusive right to prepare a derivative work does not serve as an omnibus shield against any and all misappropriation.”343 6. Proof of Infringement Although “a derivative work is one which ‘incorpo- rates a portion of the copyrighted work in some form,’ courts interpret the statute as also requiring that an infringing work be substantially similar to the work on which it is based.”344 There are two elements that a plaintiff must prove, the first being that that an alleged infringer used “the plaintiff’s material as a model, tem- plate, or even inspiration” and the second being that “the defendant’s work is substantially similar to [the] plaintiff’s work….”345 To prove the first element, “the plaintiff must show directly or by inference that the defendant mechanically copied the plaintiff’s work...or that the defendant had the plaintiff’s work in mind when he composed the al- leged infringing work.”346 To prove the second element, the plaintiff must show that at least some of the elements the defendant copied constitute protected subject matter, and that audiences for the two works will find these ele- ments in the defendant’s work to be similar to elements in the plaintiff’s work. Mere similarity between the works 342 Halpern, supra note 14, at 581 (stating that “[t]he use of digital technology to reproduce or to transform visual works has resulted in the need to rethink…what kind of ‘contribution’ will be sufficient to give the creator of the reproduction or transformation [of a derivative work] a copyright interest in the resulting work”). 343 Id. at 582. 344 Swatee L. Mehta, Berkeley Technology Law Journal An- nual Review of Law and Technology: 1. Intellectual Property: A. Copyright: 3. Derivative Works: a) Substantial Similarity Test…., 15 BERKELEY TECH. L. J. 49, at *49 (2000), hereinafter cited as “Mehta” (quoting H.R. REP. NO. 94-1476, at 62 (1976) and citing Litchfield v. Spielberg, 736 F.2d 1352, 1357 (9th Cir. 1994) (rejecting the argument that the right to make derivative works covers any work based on a copyrighted work and hold- ing that substantial similarity must exist before a work would be considered derivative within the meaning of 17 U.S.C. 106(2)); Ferguson v. NBC, Inc., 584 F.2d 111, 113 (5th Cir. 1978) (applying substantial similarity test); Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 907 (3d Cir. 1975) (using substantial similarity inquiry); cf. Nichols v. Universal Pic- tures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (characterizing the test for infringement as “whether the part...taken is ‘substan- tial’”)). 345 Seshadri, supra note 25, at 15 (quoting NIMMER § 13.01[B], at 13-9) (emphasis supplied)). 346 Brunka, supra note 12, at 179 (quoting 17 U.S.C. § 501 (2006) (internal quotation marks omitted) and citing Arstein v. Porter, 154 F.2d 464 (discussing infringement); GOLDSTEIN ON COPYRIGHT § 9.1 (2005); Shine v. Childs, 382 F. Supp. 2d 602, 611 (S.D.N.Y. 2005)).

26 does not imply infringement; rather, such similarity must be substantial.347 The term substantial similarity is defined as sufficient similarity of a second work to the protected work to support a reasoned inference by an ordinary ob- server that more probably than not the second work was copied from the copyrighted work. The dominant test for substantial similarity, as elaborated by the Second Cir- cuit, is the “total concept and feel” test.348 For the defendant to prevail when a plaintiff suc- ceeds in making a prima facie case, the defendant must disprove the plaintiff’s ownership; show that the defen- dant was authorized by a license or other agreement to make and use a copy or that the copying amounts to fair use; or demonstrate that the works are not substan- tially similar.349 Although the use of BIM appears not to have been the subject of many cases, there has been litigation when, for example, a construction company made iden- tical images of an architect’s plans. In Aitken, Hazen, Hoffman, Miller, P.C. v. Empire Constr. Co., 350 the court held that the copying did not constitute fair use. In another case, a copyright holder of a floor plan for a house established that an alleged infringer had access to and had traced the copyrighted design.351 As for com- puter software, the copying of a copyrighted computer software system by licensees and its employees was held to be an infringement of the copyright holder’s ex- clusive right to prepare derivative works.352 Also, the distribution of copyrighted software to other than quali- fied users violated a manufacturer’s exclusive right to distribution under the Copyright Act.353 B. Noncopyrightable Elements of Models 1. Introduction Although copyright protection extends to BIM and models used for transportation planning and construc- 347 Brunka, supra note 12, at 179 (citations omitted) (inter- nal quotation marks omitted). 348 Brunka, supra note 12, at 179–80 (quoting CONSTRUCTION CHECKLISTS: A GUIDE TO FREQUENTLY ENCOUNTERED CONSTRUCTION ISSUES 311–12 (Fred D. Wil- shusen, et al. eds., American Bar Association, 2008) (some internal quotation marks omitted); Shine v. Childs, 382 F. Supp. 2d 602, 613 (S.D.N.Y. 2005). 349 Seshadri, supra note 25, at 18 (quoting NIMMER ON COPYRIGHT § 13.04). 350 542 F. Supp. 252, 260 (D. Neb. 1982). 351 John Alden Homes, Inc. v. Kangas, 142 F. Supp. 2d 1338 (M.D. Fla. 2001); see also Forest River, Inc. v. Hearland Rec- reational Vehicles, LLC, 2010 WL 4683628 (N.D. Ind. 2010). 352 CMAX/Cleveland, Inc. v. UCR, Inc., 804 F. Supp. 337 (M.D. Ga. 1992); see also Tracfone Wireless, Inc. v. Access Tele- com, Inc., 642 F. Supp. 2d 1354 (S.D. Fla. 2009) (infringement occurred when a competitor created an unauthorized reproduc- tion and derivative versions of copyrighted software). 353 Microsoft Corp. v. EEE Business, Inc., 555 F. Supp. 2d 1051 (N.D. Cal. 2008). tion, the protection is limited for several reasons. Copy- right protection extends to a model that is an original work of authorship; however, certain elements of any model may not be protected by the copyright laws. 2. Ideas Copyright protection, first, does not exist for an idea.354 Under the doctrine of merger, when an idea merges with the expression of the underlying idea in a work, the work is not copyrightable.355 The doctrine of merger…holds that “when there is essen- tially only one way to express an idea, the idea and its expression are inseparable and copyright is no bar to copying that expression.” …The related doctrine of scenes a faire denies copyright protection to “unoriginal ele- ments flowing from the undisputed standard and inher- ent characteristics” of a common idea.356 The purpose of the merger doctrine is to ensure that courts do not unwillingly grant protection to an idea by granting exclusive rights to only one or a few means of expressing an idea;357 doing so “would effectively accord protection to the idea itself.”358 It is difficult, however, to articulate the difference between an idea and the expression of the idea.359 Al- though ideas may not be copyrightable, a computer pro- gram that expresses an idea by way of a computer de- vice or machine brings the expression within the standard of communications that are copyrightable.360 Although there are elements of a computer program that are not copyrightable as ideas, it has been held that the rule against the copyrighting of ideas does not prevent an entire computer program from being copy- rightable.361 It has been held that the processes used in developing a computer program, as compared to the expression adopted by the programmer, are not within 354 See Intervest Constr., Inc. v. Canterbury Estate Homes, Inc., 554 F.3d 914, 919, 921 (11th Cir. 2008). 355 Todd Hixon, The Architectural Works Copyright Protec- tion Act of 1990: At Odds with the Traditional Limitations of American Copyright Law, 37 ARIZ. L. REV. 629, 652 (1995), hereinafter cited as “Hixon.” See Raymond M. Polakovic, Should the Bauhaus Be in the Copyright Doghouse? Rethinking Conceptual Separability, 64 U. COLO. L. REV. 871, 888 (1993). 356 Maddog Software, Inc. v. Sklader, 382 F. Supp. 2d 268, 278 (M.D. N.H. 2005) (citation omitted) (footnote omitted). 357 Control Data Systems, Inc. v. Infoware, Inc., 903 F. Supp. 1316 (D. Minn. 1995). See John Pinheiro & Gerard La- Croix, Protecting the “Look and Feel” of Computer Software, 1 HIGH TECH. L.J. 411, 428 (1987). 358 New York Mercantile Exch., Inc. v. IntercontinentalEx- change, Inc., 497 F.3d 109, 117 (2d Cir. 2007) (citation omitted) (internal quotation marks omitted), cert. denied, 128 S. Ct. 1669, 170 L. Ed. 2d 357 (2008). 359 Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir. 1983) (citations omitted), cert. dis- missed, 464 U.S. 1033, 104 S. Ct. 690, 79 L. Ed. 2d 158 (1984). 360 M. Kramer Mfg. Co., Inc. v. Andrews, 783 F.2d 421, at 435. 361 Brignoli v. Balch Hardy & Scheinman, Inc., 645 F. Supp. 1201, 1204 (S.D.N.Y. 1986).

27 the scope of copyright protection.362 In Apple Computer, Inc. v. Franklin Computer Corp.,363 the Third Circuit held that computer programs are not to be denied copy- rightability on the basis of their being a “process,” a “system,” or a “method of operation” that is not copy- rightable.364 No cases were located for the digest specifically in- volving BIM and the merger doctrine. Nevertheless, in one case it was held that the merger doctrine did not bar copyright protection for an engineer’s registered design and drawings for a plant because there were numerous ways to express those ideas.365 In another case, the merger doctrine did not bar an engineer’s copyright infringement action because the defendants did not demonstrate that there was only one way to create a map and subdivide property.366 However, in another case, the merger doctrine did constrain an ar- chitectural firm’s drawings because there were factors that limited the “opportunity for originality and avail- able ways in which to express elements” in the draw- ings.367 3. Functional, Industrial, and Utilitarian Elements If design elements reflect the merger of aesthetic and functional considerations, artistic aspects of the work cannot be said to be conceptionally separate from the functional elements and thus the work is not copyright- able.368 Likewise, copyright protection does not extend to utilitarian works and industrial design.369 Copyright is available only to protect the form of an object, sepa- 362 Gates Rubber Co. v. Bando Chemical Industries, Ltd., 9 F.3d 823 (10th Cir. 1993). See also Woods v. Resnick, 725 F. Supp. 2d 809 (W.D. Wis. 2010) (stating that finance formulas used in a computer program in the auto financing industry, whether categorical as business logic, algorithms, or math equations, could not be copyrightable); Harbor Software Inc. v. Applied Systems, Inc., 925 F. Supp. 1042 (S.D.N.Y. 1996) (hold- ing in part that the method of calculating cyclical statistics in a computer program designed to automate marketing services for insurance agencies was not protectable for copyright purposes as the expression of the method merged with the algorithm itself). 363 714 F.2d 1240 (3d Cir. 1983), cert. denied, 464 U.S. 1033, 104 S. Ct. 690, 79 L. Ed. 2d 158 (1984). 364 714 F.2d at 1250–51. 365 Jedson Engineering, Inc. v. Spirit Const. Services, Inc., 720 F. Supp. 2d 904 (S.D. Ohio 2010). 366 McIntosh v. Northern California Universal Enterprise Co., 670 F. Supp. 2d 1069, 1096–97 (E.D. Cal. 2009). 367 Harvester, Inc. v. Rule Joy Trammell + Rubio, LLC, 716 F. Supp. 2d 428, 440 (E.D. Va. 2010) (e.g., market demands, building codes and manufacturers’ clearance directives, func- tional demands, and other factors identified in the opinion). 368 Brandir Intern., Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142 (2d Cir. 1987). See also Galiano v. Harrah’s Operat- ing Co., Inc., 416 F.3d 411 (5th Cir. 2005); Chosun Intern., Inc. v. Chrisha Creations, Ltd., 413 F.3d 324 (2d Cir. 2005). 369 See generally SHELDON W. HALPERN, ET. AL., FUNDAMENTALS OF UNITED STATES INTELLECTUAL PROPERTY LAW: COPYRIGHT, PATENT, AND TRADEMARK, § 2.4. 4 (1999). rate from its function, and if such separation is not pos- sible, then copyright protection is unavailable.370 Although original plans, drawings and models, and architectural works are protectable under the copyright laws, highways and bridges are not protected as struc- tures under the copyright laws. Copyright protection for transportation works may be limited also on the basis that some elements needed to design a project are not protectable. 4. Systems and Methods Copyright protection does not extend to processes or methods of construction.371 For example, a manufactur- ing process is not copyrightable.372 A “copyright does not protect a system explained within a work, nor does it protect facts contained within a work.”373 5. Standard Architectural Features The copyright laws do not protect standard architec- tural features. However, “an original combination of standard features” may be copyrightable as long as “there is no functional necessity for the particular com- bination.”374 In one case it was held that a roof truss drafting program’s menu and submenu command tree structure were uncopyrightable. The means by which the program undertook the task of drafting roof truss planes were said to mimic the steps that a draftsman would follow in designing roof truss planes by hand.375 6. Industry Practices There may be no copyrightable expression when the expression is dictated by industry practices.376 Techni- cal industry concepts that are widely used are not pro- tectable elements.377 It has been held that if there are “external factors,” such as market or industry demands, requiring that all computer programs display specific 370 Schnadig Corp. v. Gaines Mfg. Co., 620 F.2d 1166 (6th Cir. 1980). 371 UNITED STATES COPYRIGHT OFFICE, A REPORT OF THE REGISTER OF COPYRIGHTS: COPYRIGHT IN WORKS OF ARCHITECTURE 113 (1989). 372 Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d 45 (5th Cir. 1995). See also Secure Services Technology, Inc. v. Time and Space Processing, Inc., 722 F. Supp. 1354 (E.D. Va. 1989) (holding that the timing in a facsimile machine was a process by which electronic signals were created, transmitted, or received was excluded from copyright protection). 373 Kugele, supra note 71, at 812 (citing ALAN LATMAN, ET AL., COPYRIGHT FOR THE NINETIES 30 (3d ed. 1989). 374 Sims & Miller, supra note 16, at 53 (citing 37 C.F.R. § 202.11(d)(2)). 375 MiTek Holdings v. Arce Eng’g Co., 89 F.3d 1548, at 1557 (11th Cir. 1996). 376 Mehta, supra note 344, at *60 (citing Amy B. Cohen, Copyright Law and the Myth of Objectivity: The Idea- Expression Dichotomy and the Inevitability of Artistic Value Judgments, 66 IND. L.J. 175, 212 (1990)). 377 Biosafe-One, Inc. v. Hawks, 524 F. Supp. 2d 452 (S.D.N.Y. 2007).

28 words on a computer screen, “the components of that program that provide such a function are not protected by copyright laws.”378 C. The Effect of the Architectural Works Copyright Protection Act Copyright protection extended to architectural plans379 even prior to the enactment in 1990 of the Ar- chitectural Works Copyright Protection Act (AWCPA).380 Because of the AWCPA, an architect has two copyrights in a completed architectural work: a copyright in the constructed building as defined in Sec- tion 102(a)(8) and a copyright in the plans and draw- ings under Section 102(a)(5).381 However, “the many reported decisions show that the scope of copyright pro- tection for architectural works is thin. As a result, the architect plaintiff will ordinarily have to prove close to verbatim copying in order to win.”382 The AWCPA provides little additional copyright pro- tection for planners and designers of transportation projects. According to the legislative history, although the AWCPA does not define the term building,383 the term includes structures inhabitable by humans as well 378 Cognotec Services, Ltd. v. Morgan Guar. Trust Co. of N.Y., 862 F. Supp. 45, 49 (S.D.N.Y. 1994). See also Maddog Software Inc. v. Sklader, 382 F. Supp. 2d 268, 272 (D. N.H. 2005) (holding that a computer program that permitted entry of data on different forms “designed to accommodate the stan- dard practices of the industry” was not infringed because based on the needs of the industry the forms were the only possible expression of the idea). 379 17 U.S.C. § 102. See NIMMER ON COPYRIGHT § 2.08[D] n.162 (1991); Winick, supra note 68, at 1609 (citing Demetriades v. Kaufmann, 680 F. Supp. 658, 664 (S.D.N.Y. 1988)); see generally 1 NIMMER ON COPYRIGHT § 2.08[D] n.164.1. 380 17 U.S.C. § 102(8). “[P]rior to the addition of ‘architec- tural works’ to the Copyright Act, architectural plans were only protected against two-dimensional copying (e.g., photo- copying).” Sims and Miller, supra note 16, at 53. [C]ertain restrictions apply to the scope of copyright protec- tion for architectural works that do not exist in other areas of copyright. [T]he owner of a copyright in an architectural work cannot prevent “the making, distribution, or public display of pictures, paintings, photographic, or other pictorial representa- tions of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.” With re- spect to modifications of a building, the Copyright Act states that “the owners of a building embodying an architectural work may, without the consent of the author or copyright owner of the architectural work, make or authorize the making of alterations to such building, and destroy or authorize the destruction of such building.” Id. at 53 (quoting 17 U.S.C. §§ 120(a) and (b)). 381 Winick, supra note 68, at 1621 (citing 17 U.S.C. §§ 101, 102(a)(5) (1988); H.R. REP. NO. 735, at 19, reprinted in 1990 U.S.C.C.A.N. at 6950 (“Protection for architectural plans, drawings, and models as pictorial, graphic or sculptural works under section 102(a)(5), title 17, United States Code, is unaf- fected by this bill.”)). 382 Shipley, supra note 28, at *7. 383 17 U.S.C. § 101. as structures used but not inhabited by humans, such as churches.384 The legislative history is clear that “bridges and related nonhabitable three-dimensional structures” are excluded from copyright protection.385 In drafting the AWCPA, a congressional subcommittee deleted the phrase “three dimensional structures” be- cause in the subcommittee’s view, interstate highways, cloverleafs, and pedestrian walkways do not deserve copyright protection.386 The reason is that these are “works whose overall forms are generally dictated by engineering considerations…. [They] do not embody the creative expression of an author…[and] merely express the laws of physics and structural engineering applied in a certain context.”387 D. Fair Use of a Model Any copyrighted work is subject to the “fair use” doc- trine. The fair use of a copyrighted work is not an in- fringement of copyright.388 Without the fair use doc- trine, a copyright holder would be able to control all access to a work.389 The fair use doctrine is one origi- nally created by the courts that was codified in the 1976 Copyright Act in 17 U.S.C. § 107.390 There are three kinds of fair use—for creative, personal, and educa- tional uses. Creative fair use involves the use of copy- righted material in another work in creating one’s own work.391 In what has been referred to as a preamble, § 107 states in part that the use of a copyrighted work for purposes of criticism, comment, news reporting, teach- ing, scholarship, or research is a fair use and not an infringement of copyright. The foregoing uses are not “presumptive categories of fair use protection. A trans- formative purpose is also required.”392 As the Ninth Circuit has observed, 384 Winick, supra note 68, at 1613–14 (citing H.R. REP. NO. 735 at 20, reprinted in 1990 U.S.C.C.A.N. at 6951). 385 Sims & Miller, supra note 16, at 54 (citing 37 C.F.R. § 202.11(d)(1) and (2)). 386 Winick, supra note 68, at 1613 (citing H.R. REP. NO. 735, 101st Cong., 2d Sess. 19–20 (1990), reprinted in 1990 U.S.C.C.A.N. 6935, 6950-51). 387 Winick, supra note 68, at 1614. 388 17 U.S.C. § 107. 389 Patterson & Birch, supra note 19, at 339. 390 See Folsom v. Marsh, 9 F. Cas. 342 (C.C.D. Mass. 1841) (holding that defendants’ verbatim use in its own publication of the letters of a former author constituted an act of piracy that violated the plaintiffs’ copyright in the original work from which the letters had been taken); Lawrence v. Dana, 15 F. Cas. 26, 79 (C.C.D. Mass. 1869), stating that the privilege of fair use accorded to a subsequent writer must be such, and such only, as will not cause substantial injury to the proprietor of the first publication; but cases frequently arise in though there is some injury, yet equity will not interpose by injunction to prevent the further use…. 391 Patterson & Birch, supra note 19, at 333. 392 Frederick E. Bouchat v. Baltimore Ravens Limited Part- nership, 619 F.3d 301, 309 (4th Cir. 2010).

29 [t]o help determine what else might count, we ask “whether the new work merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning or message; [we] ask, in other words, whether and to what extent the new work is transformative.” …“A ‘transformative’ use is one that ‘employ[s] the [copyrighted work] in a different manner or for a different purpose from the original….’”393 Section 107 sets forth four nonexclusive factors that are to be considered when assessing whether “the use made of a work in any particular case is a fair use….” The factors include: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for non- profit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. The fair use doctrine is applicable as well to derivative works that are discussed in Section VIII.A.394 As pro- vided in § 107, the fair use doctrine, subject to the above four factors, also applies to unpublished works. The fair use doctrine is an affirmative defense,395 presents a mixed question of law and fact,396 and is de- termined on a case-by-case basis.397 Section 107, how- ever, fails to include a clear standard for determining what is or is not a fair use. As many writers have noted, Congress provided no guidance in § 107 on how to evaluate or balance the factors.398 In a dissenting opin- ion, Justice Blackman, quoting a Second Circuit opin- ion, once described the fair use doctrine as “the most troublesome in the whole law of copyright.”399 Thus, the first factors in § 107 to be considered when applying the fair use doctrine are the purpose and character of the use and specifically whether the use is commercial in nature or is for a nonprofit educational 393 Frederick E. Bouchat, 619 F.3d at 308 (citations omit- ted). 394 4 PATRY ON COPYRIGHT § 12:25. 395 Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 at 561 (1985). 396 Frederick E. Bouchat, 619 F.3d at 307. 397 Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994). 398 Gideon Parchomovsky & Kevin A. Goldman, Fair Use Harbors, 93 VA. L. REV. 1483, 1485, 1496 (2007), hereinafter cited as “Parchomovsky & Goldman” (stating that “neither the courts nor the legislature have provided a useful definition of fair use, nor have they devised a meaningful method for de- termining which uses are fair”). 399 Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 475 (1984) (Blackman, J., dissenting) (quoting Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661, 662 (2d Cir. 1939) (per curiam)). purpose.400 If a use of a copyrighted work fits within one of the favored uses under the Copyright Act, then the use is considered presumptively fair, but if the use is commercial, then there is a presumption that the use is unfair.401 The commercial nature of a use that is claimed to be a fair use “weighs against a finding of fair use.”402 It has been held that the effect of a use on the value of a copyrighted work is “undoubtedly the single most important element of fair use.”403 Nevertheless, the fact that the use of a copyrighted work is for a commercial purpose does not necessarily defeat the fair use defense in an action for infringement of a copy- right.404 Other factors that are considered in determining whether copying is a noninfringing, fair use include the nature of the copyrighted work, the amount of the copy- ing of the work, and how the use affects the market for or the value of a copyrighted work.405 If part of a work that is copied is unpublished, then the absence of pub- lishing is an important factor but not one that is neces- sarily determinative of whether the copying is a fair use.406 In one case, a telephone company copied a copy- righted database generated by licensed, network- management software so that the database could be viewed through a third-party’s software to avoid re- peated access to the database. The court held that the copying of the database did not constitute a fair use.407 Although the DMCA brought the copyright laws “into the digital age,”408 the DMCA did not change the fair use doctrine in § 107.409 Nevertheless, one source argues that by prohibiting circumvention of technologi- cal protection measures, the DMCA made fair use ir- relevant with respect to the vast amount of protected expression stored in digital form. The DMCA gave copy- right owners an absolute veto over any fair uses of their works.410 E. Proprietary Rights in a Model A designer of a model should have a protectable property interest in its model until such time that the 400 Marcus v. Rowley, 695 F.2d 1171 (9th Cir. 1983), disap- proved,796 F.2d 1148 (9th Cir. 1986). 401 Robinson v. Random House, Inc., 877 F. Supp. 830 (S.D.N.Y. 1995). 402 Frederick E. Bouchat, 619 F.3d at 311. 403 Id. at 312 (citations omitted). 404 Consumers Union of United States, Inc. v. General Sig- nal Corp., 724 F.2d 1044 (2d Cir. 1983). 405 Id. (citing 17 U.S.C. § 107). 406 Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 554, 105 S. Ct. 2218, 2227, 85 L. Ed. 2d 588, 603 (1985). 407 Madison River Management Co. v. Business Manage- ment Software Corp., 387 F. Supp. 2d 521 (M.D. N.C. 2005). 408 Joseph B. Baker, Contracting to Supplement Fair Use Doctrine, 39 U. MEM. L. REV. 757, 764 (2009), hereinafter cited as “Baker” (quoting S. REP. NO. 105-109, at 2 (1998). 409 Baker, supra note 408, at 764. 410 Id. at 765.