Smith v. Paul

• Decision Date: 27 October 1959
• Docket Number: No. 18372,18372
• Citation: 345 P.2d 546,77 A.L.R.2d 1036,174 Cal.App.2d 744
• Parties: , 77 A.L.R.2d 1036, 123 U.S.P.Q. 463 Ernest Manfred SMITH, Plaintiff and Appellant, v. David A. PAUL, Peter Pederson and Talbert Pederson, Defendants and Respondents.
• Court: California Court of Appeals Court of Appeals

Page 546

345 P.2d 546

174 Cal.App.2d 744, 77 A.L.R.2d 1036, 123 U.S.P.Q. 463

Ernest Manfred SMITH, Plaintiff and Appellant, v. David A. PAUL, Peter Pederson and Talbert Pederson, Defendants and Respondents.

No. 18372.

District Court of Appeal, First District, Division 1, California.

Oct. 27, 1959.

Hearing Denied Dec. 23, 1959.

Maynard Garrison, Jr., Wallace, Garrison, Norton & Ray, San Francisco, for appellant.

Albert E. Gately, Gately & Gately, San Francisco, Robert H. Andresen, Mill Valley, for respondents.

BRAY, Presiding Justice.

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?

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

Facts.

Plaintiff, although not a licensed architect, is engaged in the business of designing homes. In his complaint he alleged that defendants were constructing a house, using, without his consent, plans and specifications created and designed by him, the reasonable value of the use of which is $3,500. ¹

The court entered a minute order giving judgment for defendants, and stating: '* * * defendants to prepare findings, consistent with the view that while there was a fiduciary relationship and a common law copyrigh, and the plans were 'copied', and there was responsibility on the both defendants for copying them, the plans had been published, and also there was no resultant damage or profit.' The court found that defendant Paul 'copied said plans * * * for the construction of the residence for defendant Peter Pederson with the knowledge of said defendant that the Carr house was being substantially duplicated.'

1. Common Law Copyright.

Section 980, Civil Code, provides:

'(a) The author or proprietor of any composition in letters or art has an exclusive ownership in the representation or expression thereof as against all persons except one who originally and independently creates the same or a similar composition.

'(b) The inventor or proprietor of any invention or design, with or without delineation, or other graphical representation, has an exclusive ownership therein, and in the representation or expression thereof, which continues so long as the invention or design and the representations or expressions thereof made by him remain in his possession.'

This section has been said to accept the traditional theory of protectible property under common law copyright. Weitzenkorn v. Lesser, 1953, 40 Cal.2d 778, 789, 256 P.2d 947; Heckenkamp v. Ziv Television Programs, 1958, 157 Cal.App.2d 293, 300, 321 P.2d 137; 31 Cal.Jur.2d 702, § 4. While there does not appear to be any California authority holding that a common law copyright would apply to architectural designs, plans and specifications, there is authority to that effect in other jurisdictions. Kurfiss v. Cowherd, 1938, 233 Mo.App. 397, 121 S.W.2d 282; Wright v. Eisle, 1903, 86 App.Div. 356, 83 N.Y.S. 887.

Defendants rely upon a statement in 3 Am.Jur. 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.' 135 A. 614, 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 Mackay case, 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 protectible 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 involved here is in Weinstock, Lubin & Co. v. Marks, 1895, 109 Cal. 529, 42 P. 142, 30 L.R.A. 182. There the plaintiff maintained a wearing apparel store designated 'Mechanics' Store' in a building erected by it in 1891 'the front of which is of peculiar architecture, containing arches and alcoves, of which there was none other similar in the city of Sacramento.' 109 Cal. at page 534, 42 P. at page 143. The defendant erected a building adjoining, which so far as the first or lower story was concerned was similar in all respects to that of the plaintiff. The defendant there maintained a store which he named 'Mechanical Store.' The court found that the 'erection of the defendant's building exactly the same as plaintiff's building in every particular, and the adoption of the use of the words 'Mechanical Store,' and the absence of any name or sign upon or in defendant's store designating the true proprietorship of defendant's store' (109 Cal. at pages 534-535, 42 P. at page 143) were all done to deceive the public and to pirate the plaintiff's customers. The trial court, in an injunction proceeding, ordered the defendant to place, both outside and inside of his store, a sign legible to customers and passersby, indicating his proprietorship. On appeal the court treated the defendant's conduct as a fraud upon the public and the plaintiff, but felt that the order was too strict in requiring the defendant to show his proprietorship. It modified the order to require that the defendant 'in the conduct of this business, shall distinguish his place of business from that in which the plaintiff is carrying on his business, in some mode or form that shall be a sufficient indication to the public that it is a different place of business from that of the plaintiff.' 109 Cal. at page 543, 42 P. at page 146. In discussing the decree which should be entered the court said, among other things, 'How may the court reach the wrong? The defendant had the right to erect his building, and erect it in any style of architecture his fancy might dictate.' 109 Cal. at page 543, 42 P. at page 146.

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, technical signs, symbols and graphic representations to communicate his ideas. ²

What constitutes 'publication' of architectural plans, drawings and designs where the common law copyright has attached has so far as we have been able to determine, been considered in only three reported cases in this country. All are lower court decisions. Wright v. Eisle, supra, 83 N.Y.S. 887, held that the filing of the plans for a building in a municipal building department which required such filing before construction could be approved, and the construction of the building, was such a publication of the plans as to destroy the architect's common law copyright in them. Kurfiss v. Cowherd, supra, 121 S.W.2d 282, and Gendell v. Orr, 1879, 13 Phila. 191 (a city court), held that the building of a structure from the plans, and its exposure to public gaze, was such a publication as to destroy the architect's common law copyright in the plans. These cases will be discussed later.

Generally, writers who have considered the subject contend that these cases are wrong in principle. ³ Only a 'general publication' and not a 'limited publication' results in loss of common law rights. William A. Meier Glass Co. v. Anchor Hocking Glass Corp., D.C.Pa.1951, 95 F. Supp. 264. As said in the article by Arthur S. Katz, supra (19 Law & Contemp.Prob. 224) there are two forms of publication in copyright cases: one, general publication, the other limited publication. General publication has been defined as 'such a disclosure, communication, circulation, exhibition, or distribution of the subject of copyright, tendered or given to one or more members of the general public, as implies an abandonment of the right of copyright or its dedication to the public,' Werckmeister v. American Lithographic Co., 2 Cir., 1904, 134 F. 321, 324, 326. A limited publication is 'one which communicates a knowledge of its contents under conditions expressly or impliedly precluding its dedication to the public.' Idem, at page 324. T...