Twisting in the Wind

In drafting legislation, it is impossible to convey most of what went into the legislation: what led to the proposal, the initial discussions about the proposal, the decision to introduce a bill including the assessment of who would be for it and who would be against it (and how to take care of such opposition), the prospects for passage, whether it was really necessary or worth the effort, the initial drafting, selecting witnesses for the hearing(s), preparing questions for the hearing, the actual hearing and inevitable surprises, making necessary revisions in light of the hearing, the effort to secure the necessary support and eliminate objections, the subcommittee mark-up (when I was subcommittee staff the most difficult mark-up task was just getting a quorum; I once had to block the door to try and persuade members from leaving, and we eventually considered"rolling" quorums in which we counted the total number of people who had come at different times), the full committee mark-up (getting the full committee chair to schedule a time wasn't easy and could fall victim to fights about other, unrelated disputes in which your bill was kept off as retaliation) and any problems that occurred at the full committee, the drafting of the committee report, preparing the bill for the floor, preparing floor statements and getting floor time, eliminating last minute objections that came out of the blue, and finally getting the bill passed. And that's only one chamber.

In the case of copyright protection for the built design of works of architecture, even before all of the above began, there were discussions two years before the first bills were introduced, during the Berne adherence efforts, when a decision was made to postpone any provision extending protection to architectural works in favor of a Copyright Office report. I then spent a year studying the issue and drafting the Copyright Office report, amidst a brutal fight with the then-General Counsel about a different, but related issue, the standard for conceptual separability. It was only by placing architectural works in its own category of work of authorship in new Section 102(a)(8), that the legislation could go forward, leaving for another day the donnybrook over conceptual separability.

The 1990 Architectural Works Copyright Protection Act was the end result. It is a statute I have tremendous fondness for, both because it is a subject matter I truly love (see my earlier posting on Louis Kahn), because it was the only non-fast track statute I worked on that never changed once it left the House subcommittee, because it reflected pure policy, and because I lived deeply the history of its passage through battles in the Copyright Office and later in drafting the legislation.

Chief Judge Michael Mukasey of the SDNY recently issued a masterful and important AWCPA opinion (decided Aug. 4th but not filed until the 10th), Thomas Shine v. David M. Childs and Skidmore Owings & Merrill. Here's a link to a helpful 2004 article on the dispute from Architectural Record, including side by side photographs of the two works, and an August 11, 2005 NY Times article on the opinion, with one picture.

In brief (since this is only a blog), in 1999, Shine, a Masters architecture student at Yale took a class on skyscrapers from famed architect Cesar Pelli. The object of the class was to create a design proposal for what became the Freedom Tower at the World Trade Center. Shine created a number of sophisticated models, one of which was called "Shine 99" and the other "Olympic Tower" (back in the days before Sheldon Silver stopped New York from being seriously in the running for the Olympics). A jury, including Childs, held Shine's Olympic Tower in high regard. Shine describes the work as "a twisting tower with a symmetrical diagonal column grid, expressed on the exterior of the building, that follows the twisting surface created by the floor plates' geometry."

The saga of the World Trade Center "Freedom Tower" design is the stuff of soap operas, including the "difficult marriage" between Daniel Liebeskind and Childs. Recently, the design that is alleged to be infringing was scrapped due to security concerns, so as Judge Mukasey pointed out, any damages and the need for injunctive relief, are iffy indeed. But when that original design was released, some at the Yale Architecture School thought there was a lot of similarity to Shine's Olympic tower. Litigation followed.

Access was not an issue, nor is this the first time that there are alleged similarities between a younger architect and that of an older one on the jury for the younger architect's work: a famous example involves Jorn Utzon's Sydney Opera House and Eero Saarinen who was on the Sydney jury and who later designed the TWA terminal at JFK and Dulles International Airport, outside of DC.

Judge Mukasey granted defendant's motion for summary judgment on Shine 99 but denied it for the Olympic Tower. His discussion of the substantial similarity issues is quite sound (and I don't express any opinion on infringement), but without taking away from the infringement discussion, I want to instead focus on the earlier, copyrightability stage because defendants made some arguments I find patently frivolous.

The first argument is that Shine's models were not protectible because there were preliminary or conceptual and one could not construct an actual building from them. Judge Mukasey rightly noted no cases supported these arguments, but even more to the point, the statute rejects them. First, here's the definition of "created," in 17 USC 101: "A work is 'created' when it is fixed in a copy or phonorecord for the first time; where a work is prepared over a period of time, the portion of it that has been fixed at any particular time constitutes the work as of that time, and where the work has been prepared in different versions, each version constitutes a separate work.

Preliminary works are protectible: if I write one chapter of a treatise on copyright law and plan to write 25, chapter one is protected even if I never finish the other 24 (I did, btw). Second, the definition of an "architectural work" in Section 101 (quoted by Judge Mukasey) imposes no special requirements on architectural works, so the general definition of "created" applies. There was consideration in the legislative process to limit protection only to the actual built design, but Congress decided against such a limitation. A watercolor or charcoal sketch is just fine, as are three-dimensional models. All that matters is that there is a fixation. SOM's argument is legally frivolous. But is it against SOM's long-term interest? Might SOM not be a plaintiff some day? Yes, but here's how SOM's argument might work out in practice: to be a protected architectural work, you need to have not just artistic rendering of the design, but also a full-set of working drawings. For skyscrapers you're talking vast, extremely expensive drawings. No one makes such drawings until the work has been bid and awarded. Who builds big expensive skyscrapers? Big corporate architecture firms like SOM do. Architects like Shine don't; in fact, very very few architects ever do. Those who don't build, but who do create expressive designs would, under SOM's theory (if I understand it), be out of luck and at the mercy of the SOMs of the world. Fortunately, that's not the law.

SOM's next argument is that the Olympic tower isn't original. Having attacked Shine's work because it couldn't be used to construct a building, SOM then claimed the design was functionally dictated and therefore not protectible. Really? How would SOM know, since they couldn't actually make a building from the design.

In reviewing SOM's argument, Judge Mukasey rightly focused on the low general standard for originality and on the particular definition of architecture, which focuses on overall form. I wrote that definition and I wrote it that way to capture the nature of architectural expression, which at its greatest is one of form. I also recognized that architecture, like Cubist paintings, frequently consists of the original use of geometric shapes. SOM attempted to subvert the statutory definition by dissecting the work into constituent elements and then declaring since none of the dissected elements were protected, the whole wasn't. That's missing the whole point. As Judge Mukasey pointed out, the House report (there was no Senate bill) dictated a two-step process: first one looks to see if the work is original, meaning its overall form. If so, one asks whether that form is functionally dictated. If the overall form is not functionally dictated, the work is protectible.

It is this two-step test that served to resolve the fight I had with the General Counsel of the Copyright Office on conceptual separability: she thought the Guggenheim Museum was a useful article whose overall form was functionally dictated. It thought that insane: the overall form of the Guggenheim is not functionally required; if it was all art museums would look like it, and they don't. We could never agree, and the dispute had, actually, nothing to do with architecture, and everything to do with good-looking toasters and the like. But so long as architecture was not in Section 102(a)(5), the two-step test was fine with her. I thus find it amusing to see SOM resurrect the argument in a different guise: all parts are required to support the whole therefore the whole and none of the parts are original. The argument is wrong, and, as it turns out, not original.