Hunn v. Dan Wilson Homes, Inc.
Where an architectural draftsman left his design firm mid-project and later used partial plans drawn during his employment to complete the project, the U.S. Court of Appeals for the Fifth Circuit affirmed the ruling that the draftsman and his client had an implied license to use the draft plans and thus did not infringe the firm's copyrights. Hunn v. Dan Wilson Homes, Inc., Case Nos. 13-11297, 14-10365 (5th Cir., June 15, 2015) (Elrod, J.).
Dan Wilson Homes (Wilson), a home construction company, hired Hunn Designs (Hunn) to complete architectural plans for four custom homes. Ben Lack, a draftsman employed at Hunn, created partial plans and delivered paper copies to Wilson and the homeowners at several weekly meetings. Before Lack had completed the project, he disclosed to Hunn that he wished to resign, which led to his termination. Hunn asked that Lack return the physical files from the Wilson project but did not ask for the AutoCAD software files. After learning of Lack's termination, Wilson made several proposals to Hunn to ensure the completion of the project, but Hunn declined, believing that Lack and Wilson had devised a secret plan to cut Hunn out of the project. Wilson then asked Lack to complete the plans, which he did using the AutoCAD files residing on his home computer.
Hunn registered copyrights in the plans with the U.S. Copyright Office and brought suit against Wilson and Lack, asserting copyright infringement. After a bench trial, the court entered judgment to defendants favor as to the copyright infringement claim and awarded defendant's attorneys' fees. Wilson appealed.
The 5th Circuit affirmed the district court's rulings in all respects, holding that Lack and Wilson had an implied license to use Hunn's copyrighted plans. The Court cited Shaver, where the U.S. Court of Appeals for the Seventh Circuit found that an architect who prepared a preliminary design for an airport had granted an implied license such that the airport was free to hire a new architect to complete the design. The architect in Shaver asserted that he intended that the airport only be permitted to use the design if he remained on the project, but there was no evidence of such intent in the record. Similarly, Hunn, through its agent Lack, had delivered multiple drafts of the plans to Wilson "without any written or orally communicated restrictions about limits on Dan Wilson's ability to use the delivered drawings," thereby creating an implied license. The 5th Circuit explained that this license covered the plans in both physical and AutoCAD format, as they contained the same content. The 5th Circuit also noted that Hunn's registered copyrights were not for the AutoCAD files but instead for plans printed out from the AutoCAD software.
The Court affirmed the award of attorneys?? fees pursuant to the Copyright Act, stating that "an award of attorney's fees to the prevailing party in a copyright action is the rule rather than the exception and should be awarded routinely." Where the district court had considered the proper factors, including the parties' motivations and reasonableness, the award of attorneys' fees was appropriate.
Delivering Architectural Plans May Create Implied License
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