Articles

By Justin Cotton, Director, Lovegrove & Cotton

A common conundrum for architects and draftspersons is how best to preserve one’s rights in your plans and designs, particularly where a client has not proceeded with your services or the retainer has been aborted.

As practitioners providing design services, architects need to ensure they have security for payment for their services, but how do they best protect their rights in their own design?

Intellectual property in an architect’s work can fall into two categories. The law of copyright is the most prevalent category, and it protects the owner of copyright design.

On the other hand, moral rights are personal legal rights pertaining to the creator of an original work. This creator may not be the same person that owns the copyright. Rather, the owner of the moral rights can assign or license the copyright in the work they created to a third party.

What is copyright?

For a particular design to be considered copyright work, it needs to feature more than just common or generic elements. Instead, it must contain some individual or unique aspect.

Copyrighted architectural works can encompass a broad field, including not only the finished building works themselves, but also the drawings/plans, sketches and models. In intellectual property disputation, one finds in building law that the most common source of copyright dispute is over building plans.

If there is copyright protection available to an architect, it will be afforded automatically to him or her as the original designer, regardless of whether the copyright © symbol has been noted on the document, and regardless of whether the document is hand drawn or electronically created.

Therefore, there is no formal registration requirement because copyright protection can arise automatically from the time of creation of the drawing, sketch or model in ‘material form.’

While the © symbol notation is not strictly necessary for copyright to apply to a design, it does assist in giving notice to others about who the owner of the copyright is.

However, copyright is generally more limited in building designs when compared with say, works of art such as paintings, because there will be at least some elements in a building design that contain generic features. Architectural copyright therefore is more limited in scope than more general artistic creativity.

Furthermore, in the case of Inform Design and Construction Pty Ltd v Boutique Homes Melbourne Pty Ltd [2008] FCA 912, it was decided that copyright will not apply to protect design “ideas.” It is the actual material form that counts.

That said, in arguments over breaches of copyright in plans, it is unnecessary for a plan to be copied in its entirety for a breach to be substantiated. Even if only a small part has been reproduced, if that part contains an important or unique element of the original, then this could be seen as a copyright infringement.

Licenses in Designs

There is a general principle that an owner or client can be given an “implied license” by an architect to use that architect’s design strictly for the purposes for which the client commissioned the architect’s services.

Therefore, even if the architect is the copyright holder in the design (as is likely the case) and even if they have not been properly paid by the client, that client may potentially still have an implied license to use the design.

This license by its nature will be limited in scope, and only extend to what is necessary to give effect to the original retainer between the architect and their client. This means the client will have an implied license to use plans only once and only for the particular project and site to which the retainer originally applied.

The notion of a license for architectural design is also heavily affected by the retainer agreement between the parties. That agreement can even govern the law of copyright itself. For example, a retainer agreement can provide that copyright is to reside with the client who has commissioned the services from the architect. From there, the copyright in the plans is actually licensed back from the owner to the architect.

One way for architects to get around the principle of the implied license is to include in the retainer agreement particular provisions protecting their copyright, and revoking any right to an implied license in the client’s favour.

For instance, the clause in the agreement could state words to the effect that any license (express or implied) in the architect’s copyright or moral rights in the architect’s design works will be terminated or rendered null and void if (for example):

• The client does not pay the architect fully in accordance with the payment terms in the agreement; or
• The agreement is otherwise terminated as a result of the client’s breach of the agreement or before the architectural services are completed.

Careful consideration needs to be given to tailoring your architect retainer agreement, whether by special conditions or otherwise, to ensure the doctrine of implied license does not work against you as the architect. If you do not do this, and where the client does not pay you but decides to use your plans regardless, the only remedy could be to sue for debt recovery rather than arguing over breach of copyright.

Of course, any such clause included in a retainer agreement should probably refer to both copyright and moral rights to ensure the full breadth of architectural intellectual property is included in the provision’s coverage.

It would also be best practice for Architects to use the copyright symbol © where practicable on design documents. Even though this is not strictly necessary for such IP rights to be generated, it is a useful reminder to other parties (such as clients or builders with whom you regularly deal) of those rights.

Lovegrove & Cotton Lawyers to the building industry
For thirty years, Lovegrove & Cotton have represented builders, building surveyors and building practitioners in Melbourne, Canberra, Sydney and Queensland. Doyles Guide ranks Kim Lovegrove as one of the leading construction lawyers in Australia. Justin Cotton, likewise, is a leading Australian construction lawyer and widely respected in the building fraternity as evidenced by his recent elevation to Chairperson of the HIA Industrial Relations and Legal Services Committee, and member of the Regional Executive Committee, for HIA Victorian Chapter. Lovegrove & Cotton can help practitioners resolve any type of building dispute and are preeminent in the area of building practitioner advocacy. If you wish to engage the firm, feel free to contact us via our website or by emailing enquiries@lclawyers.com.au.

Disclaimer

This article is not legal advice rather a discussion of the topic in only general terms. Should you be in need of legal advice, please contact a construction law firm. Lovegrove & Cotton Lawyers and our experienced lawyers will assist you based on the facts and circumstances of your case.