BREACHING COPYRIGHT IN BUILDING PLANS AND DESIGNS: BEWARE THE FALL OUT
By Justin Cotton, Partner, Construction and Practitioner Advocacy, Lovegrove Smith & Cotton, Construction and Commercial Lawyers
A rising manifestation of building disputation is occurring in the area of copyright or intellectual property theft, and it is a particular problem for those building companies that have a design wing. If you have done the design work, the last thing you want is to discover that a customer who did not use your building services is now building the same or similar home elsewhere with someone else.
High volume builders in particular will need to take action from time to time to preserve their “intellectual property” or copyright in a design, for failure to make a strong statement when such a breach is brought to your attention can lead to repetitions of the wrongful conduct.
Such builders that do carry out design of the homes or buildings that they later construct, are entitled to copyright in the plans and drawings as well as the buildings constructed in accordance with that design. The building company becomes “the owner” in the copyright, and this continues well beyond the consumer’s first visit to a display home, it is an ongoing intellectual property ownership.
This copyright or intellectual property is a highly valuable commodity, for obvious reasons. Protection for the owner of that commodity is enshrined in the Copyright Act 1968 (Cth) and that legislation gives to the owner the exclusive right to do the following:
- reproduce the work in a material form;
- publish the work; and
- communicate the work to the public.
These actions are done for a material gain in trade or commerce, and hence any infringement of that right (or purported theft of the same) can lead to loss of business and loss of profit for the copyright owner. Conversely, a material benefit associated with the use of that right is transferred to the wrongdoer.
Section 36 of the Copyright Act 1968 stipulates that if a person does any of the acts pertaining to the copyright (as described above) or authorises another person to do so, then that is an infringement of copyright UNLESS that person has a license to do so from the copyright owner.
Often such documents as building contracts, particularly if they are industry standard agreements, will contain reference to copyright and state that it is an offence to reproduce the whole or a substantial part of the copyrighted document without the owner’s permission.
As solicitors we have sometimes had to warn clients against amending standard general conditions in a certain way lest they breach the copyright belonging to the industry body that published the particular contract agreement. There is always a right way and a wrong way to do things – in such cases the correct path is to prepare separate pages of special conditions that amend the general conditions.
Similarly with building plans and drawings, if a building company or indeed an architect has intellectual property ownership in these documents, then for a consumer to then engage in copying and reproducing this copyright work without the owner’s permission will amount to an infringement.
So what are the remedies once an infringement or breach is established? Section 115(2) of the Copyright Act 1968 allows a court to issue an injunction to halt any infringement that may be occurring (or any future breach). The court also has the power to award damages in the copyright owner’s favour to compensate for the breach or an account of profits in the owner’s favour.
In those circumstances where it can be shown that there was a flagrant or deliberate infringement, the Court is enabled (section 115(4) of the Act) to order additional or ‘exemplary’ damages – if the copyright owner has elected to pursue damages rather than an account of profits.
When we look at blatant, flagrant or deliberate mis-use of someone else’s design / intellectual property, that clearly goes to questions of intent and knowledge and will depend on the particular fact scenarios in a case by case basis.
The degree of similarity is also highly relevant and will depend on the unique factual matrix. The test of a ‘reasonable’ observer will generally be applied.
In building plan cases, this will involve a careful consideration of the degree of similarity in the plans and analysis of many factors.
If such matters as room sizes and dimensions, roof profiles, room floor plan layouts, positioning and orientation of rooms, wardrobes and fittings design, and location and design of windows and doors are all substantially the same, then there is a tendency to presume that the design is the same.
Builders need to protect themselves from intellectual property mis-use and to ensure they are properly rewarded for their own efforts and creation.
If Builders or designers need advice on their rights and how best to take action to protect themselves, or if they suspect a breach is already occurring, they should seek prompt assistance from construction lawyers.
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© Lovegrove Smith & Cotton 2014