The Protection Of Architectural Design Of Buildings A Growing Trend

Architectural design” is the art and science of designing buildings and various other non-building structures. It involves a great deal of skill and ingenuity and is the result of creativity, talent and hard work painstakingly built and acquired over several years.  Through the passage of time, there has been a constant growth in the field of architectural design with each architectural nuance representing various diverse historical eras. As Winston Churchill rightly stated, “We shape our buildings; thereafter they shape us”.  In light of the aforesaid, there is a great need for protection of one’s skill and dexterity resulting in the creation of varied unique architectural designs

It is interesting to note that copyright protection was not accorded to “works of architecture” until the revision of Berne convention in 1908, when it was included in the list of “literary and artistic works” protected at the international level under Article 2(1). Thereafter, several countries modified their laws to the tune of the Berne Convention with respect to copyright protection granted to “works of architecture”. However, the different legislations have distinct and specific provisions as to what type of “architectural work” can be protected.

In addition to copyright protection of architectural designs, trademark protection is also recognized and granted to “works of architecture” through-out several jurisdictions of the world. There has been an interminable rise of trademark registrations granted to the design of buildings in respect of certain goods and/or services across various jurisdictions, so as to prevent unscrupulous traders from reaping the benefit of the reputation and goodwill so painstakingly acquired by another. Several building designs across the globe have acquired successful trademark registrations for instance, the Empire State building in New York, U.S.A, the Sydney Opera House in Sydney, Australia, and the most recent Taj Mahal Palace Hotel in Mumbai, India.

INDIA

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The Taj Mahal Palace Hotel standing majestically on the waterfront across the grandiose Gateway of India in Mumbai, having hosted eminent personalities and tourists from across the globe for the past 114 years, has become representative of the very essence of Mumbai. The hotel further garnered significant fame and recognition worldwide having been one of the places under siege during the horrific 26/11 terrorist attacks in Mumbai. Thus, having amassed such tremendous amount of recognition, the Taj Mahal Palace Hotel has somewhat become synonymous to the cultural heritage of Mumbai and is thus often used to portray the Mumbai city skyline on memorabilia, souvenirs and merchandise such as such as t-shirts, tea cups, coffee mugs etc.

Indian Hotels Company Ltd.(IHCL), which owns the 114-year-old prestigious Taj Mahal Palace Hotel, was successful in registering the architectural design of the flamboyant hotel.  The Indo-Saracenic arches and architraves of the hotel along with its tower wing exterior has been successfully registered under Registration No. 3386351 along with the iconic and distinctive red-tiled Florentine Gothic dome by itself under Registration No. 3386350, both in class 43 of the NICE Classification for "Services for providing food and drink; temporary accommodation." Moreover, the owner of the hotel has a further trademark Application pending before the Trade Marks Registry for the architectural design of the Taj Mahal Palace hotel in the absence of the tower wing exterior under Application No. 3387665 and another one for the black and white version of the regal hotel in its entirety under Application No. 3584683.

As stated herein above, IHCL has only registered the architectural design of the Taj Mahal Palace Hotel under Class 43 of the NICE Classification for "Services for providing food and drink; temporary accommodation." Thus, as per the Trade Marks Act, 1999, IHCL can only prevent commercial exploitation of its trade marks for identical and/or allied and cognate goods and/or services.

In order to claim commercial exploitation of the IHCL’s registered trade marks in relation to unrelated and dissimilar goods and/or services such as the use of the mark on various souvenirs and memorabilia like mugs, t-shirts etc. IHCL will have to prove that its marks have acquired substantial amount of reputation and goodwill (i.e rely on common law rights) in order to be declared as a well-known trade mark in which case, protection against trade mark infringement may also be granted for dissimilar goods and/or services.

THE TRADE MARKS ACT, 1999

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Section (2)(m) of the Trade Marks Act, 1999, defines a “mark” as a “mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof”. Thus, the Act extends protection of an architectural design in relation to a particular set of goods and/or services.

Under the Trade Marks Act, 1999 in order for a building to secure a successful trademark registration, the nature of the building must be such so as to create a strong inference of identifiability wholly and solely with the owner of the trademark to the exclusion of others and must be capable of distinguishing the goods and/or services offered by the owner of the trademark from those of others.

Trademark protection is granted in perpetuity as long as the trade mark registration is renewed every 10 years.

THE COPYRIGHT ACT, 1957:

Section 13 of the Copyright Act, 1957 clearly extends copyright protection to “artistic works” which specifically includes “work of architecture” as per Section 2(c)(ii) of the Copyright Act, 1957 and which is defined as “work of architecture means any building or structure having an artistic character or design, or any model for such building or structure” as per Section 2(b) of the Copyright Act, 1957. 

The Act also enshrines the doctrine of “fair use” and lays down acts which do not amount to copyright infringement of “works of architecture” under Section 52 and in particular Section 52(s) which permits the “making or publishing of painting, drawing, engraving or photograph of a work of architecture or the display of a work of architecture” and Section 52(u) which “permits the inclusion in a cinematograph film of:

(i) any artistic work permanently situate in a public place or any premises to which the public has access;

(ii) any other artistic work, if such inclusion is only by way of background or is incidental to the principal matters represented in the film;

However, Section 59 of the Copyright Act, 1957 particularly imposes a restriction on remedies in case of “works of architecture” which states that where construction of a building or other structure which infringes or which, if completed would infringe the copyright in some other work has been commenced, the owner of the copyright shall not be entitled to obtain an injunction to restrain the construction of such building or structure or order its demolition. The owner of the copyrighted building cannot claim specific relief and the only remedy available to the copyright owner will be damages and criminal prosecution.

The term of copyright in an artistic work such as “work of architecture” is a period of 60 years from the beginning of the of the calendar year next, following the year in which the author dies.

Thus, even though the copyright law being quite stringent does not afford extensive protection to architectural works, it is still advisable for architects to file copyright application to make a prima facie case in the event of a suit for infringement.

In addition to copyright protection which is time bound, it is recommended that the owner of the architectural work applies for a trade mark registration of the architectural design of the building in order to make a prima facie case in the event of commercial exploitation of the ingenious design in relation to the goods and/or services for which it is registered, since trademark registration, if renewed every 10 years, provides protection in perpetuity.

Being the first building to secure a trademark registration in India, it will be interesting to see as to what lengths IHCL goes, so as to curtail unscrupulous traders from willful misappropriation of the tremendous amount of goodwill assiduously amassed by IHCL for over more than a century in relation to the Taj Mahal Palace Hotel.

Let’s do a brief study on the opinions taken by various jurisdictions on what amounts to infringement of intellectual property in relation to “works of architecture”.  

UNITED STATES OF AMERICA:          

The Lanham Act and the

U.S Copyright Law:

Architectural works are eligible for federal registration under the Lanham Act in the United States of America. Under the Lanham Act, three-dimensional configuration of a building can procure a successful trademark registration only “if it is used in such a way that it is or could be perceived as a mark” as per the PATENT AND TRADEMARK OFFICE, TRADEMARK MANUAL OF EXAMINING PROCEDURE, § 1301.02(c).

Several buildings/monuments in the United States of America have been successfully granted trademark registration for their architectural distinctiveness such as the Empire State Building, the Chrysler building and the Flatiron building in New York, the Rock and Roll Hall of Fame in Cleveland, Ohio, the Golden Bridge and the Transamerica Building San Francisco, California to name a few.

In 1990, copyright protection was extended to “architectural works”. Title 17 US Code § 120 of the U.S Code was amended to include “architectural works” within the ambit of copyright protection (added by Architectural Works Copyright Protection Act, 1990). “Architectural works” is defined as “the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings.” However, the law provides for particular exceptions that do not amount to copyright infringement in relation to “architectural works” such as the “making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.”

ROCK AND ROLL HALL OF FAME AND MUSEUM VS. GENTILE PRODUCTIONS

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In 1996 the Rock and Roll Hall of Fame Foundation (the Foundation) successfully registered the architectural design of the Rock and Roll Hall of Fame Museum, New York as a trademark. The Foundation was actively involved in selling various promotional material that portrayed the Museum and depicted a small insignia or trademark. The promotional material included posters.

Thereafter, a professional photographer named Charles Gentile, photographed the building for use on a poster featuring the Museum along with the words “ROCK N’ ROLL HALL OF FAME- CLEVELAND” after the Foundation refused his offer of obtaining an official sponsorship for a poster of his photograph.

Gentile, against whom a preliminary injunction for sale of his posters was issued, appealed to the Sixth Circuit. The majority was of the view that “they did not readily recognize the museum’s design on the poster as an indicator of origin or sponsorship; rather, they viewed the photograph as that of a well-known and accessible public landmark. The majority stated that the public might not perceive the picture of the museum as an identifier or origin as much as ornamental.”  Furthermore, the majority held that the use of the words “ROCK N’ ROLL HALL OF FAME- CLEVELAND” would constitute non-infringing fair-use of the Foundation’s mark and, unless Gentile’s use of the museum design was proven to be infringing, the mere use of the aforestated words would merely constitute a description of the goods.

Thus, it appears that a trademark owner of a building may enjoin certain reproductions of its trademark. However, the holder must first establish a likelihood of confusion of the alleged infringing mark with its mark.

ESRT EMPIRE STATE BUILDING, L.L.C. V. MICHAEL LIANG

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The Empire State Building in New York owned by ESRT Empire State Building LLC has successfully registered the architectural design of the building as a trademark for varied services under classes 35, 36, 38, 41, 43 and 45 of the NICE Classification. Thereafter, it was successful in preventing a beer maker namely, Michael Liang from registering a trademark logo that wholly included the image of the Empire State Building in respect of alcoholic and non-alcoholic styles of beer.

The Empire State Building LLC had rightly pointed out that the building gift shops sold wine and champagne and was of the view that the sale of beer under the logo of the Empire State Building was likely to conjure up an immediate association with ESRT Empire State Building LLC as the source of origin in the minds of the purchaser, consumers and the traders.

In view thereof, in the case of ESRT Empire State Building, L.L.C. v. Michael Liang, the TTAB (2016), the Trademark Trial and Appeal Board (TTAB) agreed with ESRT that the Michael Liang’s beer logo incorporating the ESRT’s registered trademark is likely to cause dilution by blurring ESRT’s registered trademark which is “famous for the purposes of dilution” and has a “strong degree of recognition” with ESRT alone, and thus, the use of the allegedly infringing beer logo is bound to be construed as having originated from the owner of the trademark alone, or as having some nexus, association, affiliation, endorsement or an authorized license from the owner of the trademark. Hence, the registration of the beer logo was refused on ground of “dilution of trademark rights.”

There are several other instances in the United States of America, where owners of trademarks of buildings have aggressively protected their Intellectual Property Rights for instance, The New York Stock Exchange was successful in preventing a casino in Las Vegas from displaying a replica of the building, the Flatiron building in New York whose trademark registration is owned by Newmark Operators, was successful in obtaining a license from the Flatiron Partners for depicting the building in its company logo.

THE EUROPEAN UNION:

Just like India and the United States of America, all the countries of the European Union extend copyright as well as trademark protection to “works of architecture”.

What is interesting to note is the different take on the concept of “Freedom of Panorama” taken by different countries of the European Union in relation to copyright law.

FREEDOM OF PANORAMA

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What is

Freedom of Panorama?”

Freedom of Panorama: Freedom of Panorama is a provision in the copyright laws of various jurisdictions that permits taking of photographs and video footage and creating other images (such as paintings) of buildings and sometimes sculptures and other art works which are permanently located in a public place, without infringing on any copyright that may otherwise subsist in such works.

While all the countries of the European Union recognize trademark and copyrights protection of buildings and architectural works/design, there is a vast disparity related to the principle of “Freedom of Panorama” across the various countries of the European Union in relation to copyright in buildings and architectural designs. Article 5 of the InfoSocDirective(1) (Information Society Directive) lists the “Freedom of Panorama” as an exception to copyright infringement.

However, in Germany, the defense of “Freedom on Panorama” permits third parties/public to make pictorial representation of only that which is visible from the street, also known as the “Freedom of Streetscape” defense. Countries like Denmark, Sweden and Finland can rely on such defense only for “buildings” per se and not other works of art. Romania, Bulgaria and Slovenia permit pictorial representation of copyrights work only for non-commercial use.

On the other hand, countries such as Greece and Italy have not implemented the defense of “Freedom of Panorama” at all, which means that any form of use of copyrighted work would technically amount to infringement, whether the same is for commercial or non-commercial purpose.

It is interesting to note that up until October, 2016, France too had not implemented the exception of “Freedom of Panorama”. Thus, “Freedom of Panorama” had become a much discussed and debated topic in the French Parliament and the French Parliament had been considering the introduction of the said defense for limited non-commercial use, at least in relation to architectural works and sculptures located in public places. Hence, as a result of such debate, Article L122-5 of the French Code was amended so as to include the defense of “Freedom of Panorama”. The Code now permits the “reproductions and representations of works of architecture and sculpture, placed permanently in public places (voiepublique), and created by >natural persons, with the exception of any usage of a commercial character."

THE EIFFEL TOWER IN PARIS:

The world- renowned and one of the wonders of the world namely, the Eiffel Tower in Paris, France, was built as far back has 1889. Thus, the copyright in the said monument no longer exists as the same in now in the public domain and the citizens and tourists and free to take pictures of the same during the day. However, it is interesting to note that the “Societed’Exploitation de la Tour Eiffel” owns the copyright in the tower’s current unique and innovative light design that twinkle for 10 minutes of every hour from nightfall to 2:00 a.m.

The artistic illumination being separate and distinct from the structure itself is yet not in the public domain and enjoys copyright protection.

The fact that more than 30 million pictures of the Eiffel Tower in all its illuminations are freely available on the internet, it can be concluded that, photographing the Eiffel Tower at night for personal use or a use with limited economic value may not attract any legal action. However, commercial exploitation of the Tower in all its illuminations may potentially attract the wrath of the “Societed’Exploitation de la Tour Eiffel”.

CONCLUSION:

Based on the various views taken by the several jurisdictions across the globe, it may be inferred that protection of architectural ingenuity is becoming a growing trend.

India has a multitude of archaic as well as modern-day buildings and monuments which are novel and distinctive by nature and there is a great need for protection of such architectural dexterity. Trademark and copyright protection of architectural design of buildings and monuments in India may attract a plethora of infringement cases for lawyers involving both, trademark and copyright infringement. However, one must be highly cautious in dealing with such infringement cases to ensure that the common public is not robbed of its rights to enjoy the cultural heritage of their country.

Thus, only time will tell whether protection of architectural craft in India proves to be a boon or a curse to the citizens of the country.

Source : https://www.lexology.com/library/detail.aspx?g=e56cbff7-a884-4935-af05-5084f90bd5ad

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