In Warren Freedenfeld Associates, Inc. v. McTigue et al., 531 F.3d 38 (1st Cir. 2008), the court of appeals reversed the trial court’s decision to dismiss an architect’s complaint because the period during which he could sue had expired. The court found no facts that showed the architect had notice of the alleged copyright violation before the limitations period passed.

            The defendant in this case hired plaintiff, the architect, to design a veterinary hospital. According to Article 6 of the contract between them, the architect was to retain all rights to the plans and drawings prepared for the project. After the relationship between the two began to spoil, the architect filed a formal copyright application for his plans with the U.S. Copyright Office. The owner and the architect eventually signed a termination agreement that said Article 6 was still in effect. Also, the agreement prohibited the owner to use any work solely produced by the architect.

            Four years after signing the termination agreement, the architect saw the floor plan of the veterinary hospital and realized his copyright had been infringed. He filed a copyright infringement suit against the owner six years later. The trial court sided with the owner and found that the architect should have known about the infringement for more than three years because any “reasonably diligent person” in the architect’s position would have found out about it. So the court charged the architect with knowledge for more than three years and said he sued the owner too late – the period during which he could sue had passed. The trial court also determined that the owner had no rights in the plans and drawings filed with the copyright office.

            The architect appealed. The court of appeals disagreed with the trial court and found that the facts were insufficient to conclude that a reasonable person in the architect’s position would have known of the copyright infringement. For example, the owner had responded to the architect’s written warning not to use his work by saying the plans had been discarded. The court also rejected the owner’s argument that the word “solely” in the termination agreement gave the architect notice. The termination agreement did not authorize the owner to use any copyrighted work.

            The court of appeals also rejected the owner’s claim that he had an interest in any of the copyrighted materials because it constituted work for hire. The contract must expressly state “work for hire” for such interest to exist.

            Many owners draft contracts with hired professionals and include the “work for hire” language. An architect should strike the language “word for hire”  and include appropriate language in the contract to preserve the architect's copyright interest in the documents. At most, an architect should share ownership with the owner and not to give ownership rights to standard forms that have been developed over years. If an architect gives up ownership to the owner, the architect should include a provision that requires the owner to pay for any losses that result from the use of the documents outside the uses provided in the contract.

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