Smith v. Paul

Plaintiff appeals on the judgment roll alone from a judgment in favor of defendants.

Questions Presented

1. Does a designer have a common-law copyright in plans for a house prepared by him?

2. Does the filing of the plans in a county office as required by law to obtain a building permit constitute a publication divesting plaintiff of his common-law copyright 1

(This is a ease of first impression in California.)

Defendants rely upon a statement in 3 American Jurisprudence at page 1003: “With respect to the idea itself, however, where it is not protected by patent or copyright, it has been said that there is no intrinsic property in the architect’s design or any exclusive right in the design or in the reproduction.”

An examination of the case upon which this statement is based, Mackay v. Benjamin Franklin Realty & Holding Co., 288 Pa. 207 [ 135 A. 613 , 50 A.L.R. 1164 ], demonstrates that the statement is too broad, as the court merely held that where a property owner employs an architect to design a building for him, and the architect, unbeknownst to his employer, appropriates an idea from another architect’s plans, the employer is not liable “for something so entirely intangible as an idea, not connected with physical property.” ( 50 A.L.R. 1166 .) The opinion then states: “Doubtless trover might be maintained for the actual conversion of plans” but not against the employer who had no knowledge of the architect’s acts. Whatever the interpretation of the decision in the Maekay ease, section 980 of our Civil Code provides, in effect, that a designer’s plans are his literary property, limited, however, to as long as the plans “remain in his possession.” We see no reason why architectural plans do not come within the provisions of section 980, Civil Code, particularly subdivision (b). We therefore hold that such plans are proteetible property under common-law copyright.

2. Publication.

Publication of the plans would end the property right. (Civ. Code, § 983.) Plaintiff contends that as the filing of the plans was required by a Marin County ordinance in order to obtain a building permit, such filing was not voluntary and could not constitute a publication which would deprive the designer of his property right. In his contract with the Carrs, plaintiff retained ownership of the plans with the Carrs to have the exclusive use thereof. Defendants contend and the court found that the construction and maintenance of the house in full public view also constitutes a publication.

The nearest approach in California to the questions in

It has been held that “the filing of the original [of an intellectual product] for copyright purposes is a publication such as forever ends the right of the creator to claim a common law copyright, even though he fails to obtain a statutory copyright.” (Kurfiss v. Cowherd, supra, 121 S.W.2d 282 , 287; see also cases there cited.)

The architect expresses his thoughts and reveals his artistic personality in his plans, drawings and designs. In this respect, he is similar to all other creators of intellectual properties.. Additionally, however, he uses, among other things,

The purpose of the requirement of filing the plans in a government office is to protect the public from unsafe construction —not to take away from the architect his common-law property rights. It must be remembered that, generally speaking, it is only by repeated uses of the same sets of plans (or modifications thereof) that the architect really profits from his intellectual production. In a completed structure the architect is not publishing a copy of his plans. The structure is the result of his plans and while he is publishing the general design (such as in Weinstock, Lubin & Co. v. Marks, supra, 109 Cal. 529 , where the court appeared to hold that the defendant could duplicate the exterior of the plaintiff’s building) and cannot complain if someone duplicates his design, a far different situation appears when that person copies the complete plans of the structure.

The architect derives no profit from the deposit of his plans with the building department. He does not thereby sell his work and has no intention of dedicating it to the public. He is

In view of the language of section 983, subdivision (b), “If the owner of any invention or design intentionally makes it public,” (emphasis added) we do not believe that the mere filing of the architect’s plans in a building inspector’s office or in any governmental office in compliance with a requirement that the plans be so filed in order to obtain a building permit constitutes a publication. While the filing is “intentional” in a sense, it is a compulsory filing and would not appear to be accompanied by the intention required by the statute, nor filed with the intention of making the plans public.

Section 1892, Code of Civil Procedure, provides: “Every citizen has a right to inspect and take a copy of any public writing of this state, except as otherwise expressly provided by statute.” Section 1893 provides that “Every public officer having the custody of a public writing, which a citizen has a right to inspect, is bound to give him, on demand, a certified copy of it, on payment of the legal fees therefor, and such copy is admissible as evidence in like cases and with like effect as the original writing.” Section 1894 provides that “Public writings” include “4. Public records, kept in this state, of private writings.” In Harrison v. Powers (1912), 19 Cal.App. 762 , 763 [ 127 P. 818 ], it was held that a person could copy official documents (there census reports of school children in the official custody of the city and county board of education) even though the purpose was to use the information obtained in private business.

As we have pointed out, the forced filing of the plans in the building department of a municipality constitutes only a limited publication of the common-law copyright, a limited publication which gives no person the right to use a copy thereof. In view of the limited purpose of the filing of architect’s plans in a building department the plans do not become a public record in the sense that the public has the right to use such plans. The plans are in the category of those mentioned in Runyon v. Board of Prison Terms & Paroles, 26 Cal.App.2d 183 [ 79 P.2d 101 ], where the court stated (p. 184): “. . . the courts have consistently declared that in another class of eases public policy demands that certain

In United States v. Certain Parcels of Land, 15 F.R.D. 224 , it was held that the deposit of documents in public records pursuant to an order of court was not “intentional” and

In Stanley v. Columbia Broadcasting System (1950), 35 Cal.2d 653 , 661 [ 221 P.2d 73 , 23 A.L.R.2d 216 ], the court said: “ . . the common-law right is perpetual, existing until lost or terminated by the voluntary act of the owner . . .’ ” (Emphasis added.)

In Wright v. Eisle, supra, 83 N.Y.S. 887 , a case similar to ours, the court held that the fact that the architect filed the plans and specifications with the building department of the city of Mt. Vernon (which he was required to do in order to get the necessary building permit) plus the construction of the building in public view, constituted a publication which terminated the common-law copyright. There the defendant after seeing the residence constructed under the architect’s plans and specifications went to him and sought a duplicate thereof. The defendant refused to pay the price demanded but hired another architect who copied said plans and specifications. The architect sued the defendant claiming a common law right of property in the plans. The court held that as long as the plans remained in the hands of the designer he had a property right in them. However, he lost this right by the publication of the plans in filing them with the building department and in constructing the house. “The law protects him in the first publication of his work; it guaranties him the right to receive compensation for his labor; and when this has been accomplished the purpose of the rule of law has been served, and at common law he can have no further rights in the work.” (P. 889.) When the designer “has permitted the work to be filed in a public office as a step in furnishing the basis on which he is to receive compensation from his work . . . the plaintiff has published his work to the world, and can have no exclusive right in the design, or in its reproduction.

The decision in the Wright case is weakened somewhat by the fact that the court held that there is no evidence in the case that the defendant, or anyone acting in his behalf, had copied the plans and specifications on file in the building department, and the fact that the plaintiff architect had transferred to the person for whom he had prepared the plans, all property rights therein, whereas in our case the plaintiff architect retained their ownership.

In Kurfiss v. Cowherd, supra, 121 S.W.2d 282 , the defendants copied without consent plans of a house drawn by the plaintiff .in an architectural contest, after a house had been constructed from such plans, under a license from the plaintiff. (The plans were not, as in the Wright case, supra, filed in any public office.) While the court held that the plaintiff had lost his common-law property rights, it was because of the peculiar facts of the case, and because the court found that there was a general publication by the architect and not a limited one as in our ease. There, the house constructed from the plans “was advertised as being open for public inspection and thousands of people inspected the property during several months.” (P. 284.) The court pointed out that by placing the house on public inspection there was a general as distinguished from a limited publication. In determining the type of publication the court said (pp. 287-288) : “We might add that the authorities all hold that while the intention of the author must be taken into consideration, yet that intention will be determined not by what he says but by what he does. The circumstances of the exhibition or alleged publication will determine whether or not it was a general or limited publication. ... We think this unrestricted exhibition of the house was a publication. It is said that it was not intended that the public could or would take measurements thereof; but the fact remains that there were no restrictions to keep anyone from so doing, nor is it claimed that any effort was made to prevent it. It is not a question of whether measurements were so made; it is a question of whether the exhibition was public to all the world and unrestricted.” The court pointed out: “It has been many times held that the exhibition

Is it legally sound to say that a completed structure is a publication of its plans ? It has been held that for a work to be published it must be reproduced, that is, there must be an issuance of copies to the general public. (White-Smith Music Co. v. Apollo Co. (1907), 209 U.S. 1 [ 28 S.Ct. 319 , 52 L.Ed. 655 ].) A completed structure is no more a copy than the exhibition of an uncopyrighted moving picture film, the performance of an uncopyrighted radio script, or the broadcast of an uncopyrighted radio script, all of which acts have been held not to dedicate the contents to the public. (De Mille Co. v. Casey (1923), 121 Misc. 78 [ 201 N.Y.S. 20 ]; Universal Film Mfg. Co. v. Copperman (1914), 218 F. 577 , cert. den. 235 U.S. 704 [ 35 S.Ct. 209 , 59 L.Ed. 433 ].) The

In considering what constitutes publication of a common-law copyright, it is necessary to remember the fundamental difference between a common-law copyright and the federal statutory copyright. Common-law copyright is usually referred to as the right of first publication for once a work is published the owner’s common-law protection is gone, and anyone may copy the work. (Werckmeister v. American Lithographic Co., supra, 134 F. 321 , 324; Stanley v. Columbia Broadcasting System, supra, 35 Cal.2d 653 , 661.) The common-law right even terminates upon the obtaining of a statutory copyright. “ ‘. .. Speaking generally, common-law rights are limited to unpublished works, and all common-law property rights therein are lost on a publication . . . while statutory copyrights relate mainly to published works . . ” (Stanley v. Columbia Broadcasting System, supra, 35 Cal.2d 653 , 661.) A statutory copyright requires publication plus compliance with the copyright statutes. Common-law copyright may be regulated by the several states, statutory copyright solely by the federal government. Apparently California has regulated

As this is a ease of first impression in California we must decide between adopting the rather limited view of the three cases in other jurisdictions above mentioned which held that filing in a municipal building department of architectural plans or the building of the structure therefrom, constitutes a general publication causing-the loss of the architect’s common-law copyright or adopting what to us appears the better reasoning and the more equitable result, namely, that both acts constitute a limited publication which does not cause such loss. We adopt the latter view and hold that in this case the plaintiff did not lose his common-law copyright.

In view of the court’s statement in the minute order for judgment that plaintiff’s plans were “ ‘copied,’ and there was responsibility on the both defendants for copying them,” (a somewhat similar finding appears in the findings) the judgment is reversed as to the issue of liability and remanded to the trial court for trial upon the issue of damages alone.

Wood (Fred B.), J., and Tobriner, J., concurred.

Respondents’ petitions for a hearing by the Supreme Court were denied December 23, 1959.