Fifth Circuit Takes First Pass at Several Questions on Architectural Protections Under the AWCPA

On Friday, the U.S. Court of Appeals for the Fifth Circuit issued a ruling answering multiple questions of first impression regarding copyright claims involving building plans, including the scope of protection under the Architectural Works Copyright Protection Act (AWCPA) for constructed buildings and floorplan renderings. While the appellate court vacated and remanded the Western District of Texas’ dismissal of Kipp Flores Architects’ (KFA) copyright infringement claims, it affirmed the lower court’s dismissal of KFA’s claims under the Digital Millennium Copyright Act (DMCA) over alleged failures to include copyright management information (CMI) on new floorplans developed from KFA’s technical drawings.

KFA filed the underlying lawsuit after Austin-based homebuilder American Housing Ventures (AHV) over AHV’s failure to include KFA’s copyright notice on floorplans and renderings for a third development project following two AHV projects covered under a 2016 licensing agreement with KFA. The Western Texas district court dismissed KFA’s DMCA and conversion claims, but KFA voluntarily dismissed its specific performance claims seeking return of materials provided under the licensing agreement and certain copyright claims before appealing to the Fifth Circuit.

KFA Had No Obligation to Address Affirmative Safe Harbor Defense in Its Complaint

The Fifth Circuit acknowledged that this case provided the appellate court’s first brush with the AWCPA, enacted by Congress to provide for distinct protections for both architectural works and architectural plans as required by accession to the Berne Convention. While the Berne Convention Implementation Act (BCIA) already included architectural plans within the definition of “pictorial, graphic, and sculptural” (PGS) works under 17 U.S.C. § 102(a)(5), the AWCPA created protections for the constructed architectural work under Section 102(a)(8). Those protections are subject to limitations codified at 17 U.S.C. § 120(a), which eliminates the right to exclude pictures or other pictorial representations of the constructed work if that building is ordinarily visible from a public place.

Although the appellate court found error in the dismissal of KFA’s copyright claims to its architectural plans as PGS works, the district court properly narrowed KFA’s protections in its architectural works such that floorplans or digital renderings created by defendants fell within the Section 120(a) safe harbor. KFA argued from the Eighth Circuit’s 2021 ruling in Designworks Homes v. Columbia House of Brokers Realty, which narrowed the pictorial representation limitation under Section 120(a) to those created for artistic purposes, but the Fifth Circuit read the statutory text more broadly such that “other pictorial representations” included functional images alongside artistic expression.

The Fifth Circuit’s majority opinion, authored by Circuit Judge Don Willett, also dismissed KFA’s arguments that Section 120(a)’s safe harbor does not apply to pictorial representations created before the construction of the building. However, Judge Willett noted that the applicability of the safe harbor turns on whether the architectural work had already been constructed as of the infringing display. Although the district court took judicial notice that KFA’s works had been constructed before the new representations were created, KFA’s complaint is silent as to when the allegedly infringing display occurred. Because Section 120(a) is best classified as an affirmative defense, the district court erred in dismissing these claims as KFA had no obligation to negate the statutory safe harbor in its complaint.

License Agreement Cannot Convert Section 1202(b) Into Obligation to Add CMI

Turning to KFA’s DMCA claims, the Fifth Circuit found no violation of 17 U.S.C. § 1202(b) in the creation and distribution of floorplans and digital renderings without any CMI. First, KFA argued that the license agreement’s CMI obligations prevented defendants from arguing their conduct didn’t violate Section 1202(b) in failing to include CMI in those renderings. However, noting that parties cannot amend the law by contractual stipulation, the Fifth Circuit found that the proper remedy for KFA on this theory sounded in contract law rather than the Copyright Act.

The Fifth Circuit also agreed with the district court’s finding that Section 1202(b), which prevents the removal of CMI, does not create an affirmative obligation to add CMI where it wasn’t present to begin with. Under the statutory language, a party may not “intentionally remove or alter” CMI, which the Fifth Circuit interpreted to require that something present has been removed or changed in some way. The Fifth Circuit nixed each of KFA’s counterarguments, underscoring that liability under Section 1202(b) does not attach unless the floorplans and renderings were reproduced from works and drawings containing the CMI.

Without disagreeing as to the copyright findings, Circuit Judge Andrew Oldham dissented from the Fifth Circuit majority on a jurisdictional issue. In the majority opinion, Judge Willett noted the posture of the appeal, which followed KFA’s voluntary dismissal of certain claims, does not comport with Federal Rule of Civil Procedure (FRCP) 41(a)’s provisions governing the dismissal of an entire action. Even though the district court erroneously allowed the dismissal of some claims rather than the entire action, Judge Willett found appellate jurisdiction satisfied as the dismissal occurred under court order pursuant to Rule 41(a)(2). However, Judge Oldham argued that the claims purportedly dismissed by KFA are still pending in district court under Fifth Circuit precedent stemming from Williams v. Taylor Seidenbach, Inc. (2020) where the en banc court held that any erroneous dismissal under Rule 41(a) was a nullity.

Image Source: Deposit Photos
Author: AndreyPopov
Image ID: 211210396