By Andrew Heaton, originally published by Sourceable online (access original).
Given the extent to which the value of what architects produce lies in the creativity behind the designs and drawings they provide, intellectual property is a key concept for those in the profession.
Accordingly, it is important for them to be aware about how copyright works and about some of strategies which they can put in place in order to protect their work.
Governed in Australia by the Copyright Act, copyright essentially grants architects exclusive rights to use the designs they create and prevents other from copying their work. When working with a client, there are two broad avenues by which the architect can enable the client in question to use and benefit from their work.
First, and most common, there is licensing. Under this type of arrangement, an architect retains ownership of the copyright to the work but provides the client with a right to use the work in question according to conditions to which the parties agree by virtue of the contract. Because the architect retains ownership of the copyright in question, they are generally free to apply those designs on other projects for other clients. The exception to this is where the architect agrees to provide the license to the client on an exclusive basis – for instance, when the client opts for a special form of bespoke design.
The alternative to licensing is for the architect to instead assign ownership of the copyright over to the client. Under this scenario, ownership of the copyright with respect of the work is transferred to the client, who is subsequently free to reuse the drawings in whatever way he or she wishes. Because they no longer own the work in question, the architect would have to obtain their client’s permission if they wished to reuse any of the drawings in any of their other projects. For this reason, assignment is generally not an attractive option for architects.
It should be noted that irrespective of whether or not the architect has licensed or assigned their work, individual architects still retain certain rights. These are referred to as moral rights, and they came into existence as a result of amendments to the Copyright Act by in 2000.
Moral rights include a right be attributed or accredited as authors of their designs, not to have their drawings or designs falsely attributed to anyone else and not to have their work treated in a derogatory way. They belong not to the firm itself but rather to individual people who contribute to the work, such as directors, employees and individual contractors or subcontractors. These rights cannot be transferred or assigned, and thus remain with the individual architect even in cases where the architect has transferred or assigned rights to the copyright of the work in question.
It should also be noted that unlike patent and trademark protection, copyright protection is granted automatically under the Act and architects do not have to undergo a formal registration process in order to protect their work. According to guidance notes from the Federal Attorney General’s department however, it is good practice for architects and others to include a copyright notice within a prominent position with regard to their work.
So what should architects do to protect their work? According to Peter Hallett, a director of intellectual property law firm Watermark, there are a number of important things to keep in mind.
First, Hallett says, it is important to maintain clear terms of engagement with clients. When licensing clients to use the work, Hallett says there are a number of issues which are in fact subject to negotiation. Along with who owns the copyright (whether it is assigned to the client or merely licensed to them) these include what the client can do with the plans, whether or not plans can be modified, when the client’s rights to use the plans can be terminated and whether or not the client can use the plans on multiple buildings or is restricted to using them on just one building. Without this being specified up front, Hallett says it is possible to end up with different expectations between what the client thought they were getting in terms of copyright usage and what the architect in fact understood that he was ceding. This, Hallett says, creates the groundwork for disputes.
“All of these issues are negotiable,” he noted.
“Where a lot of disputes have come from is where there hasn’t been clarity at the outset. So the client has gone in with one expectation and the architect has gone in with another and both have come away with different ideas about what the arrangement is.
“The best way to avoid disputes is to have clarity around these things.”
On a related note, Hallett says it is important for architects to ensure that the client understands the limitations associated with any copyright arrangement up front. Not doing so, he said, lays the groundwork for future disappointment on the part of the client if and when they find out down the track that their expectations were incorrect.
Third, Hallett says, it is critical to maintain detailed records about how plans are developed and the process which has been followed. This will not only help the architect in question prove their ownership of the copyright in question but will also assist them in terms of defending themselves against copyright claims from others when in fact their designs turn out to have similarities with those of other architects. Copyright does not protect against situations where one party merely comes up with designs which happen to be similar to those of another party but rather protects against one party engaging in purposeful efforts to copy the work of another. Thus an ability to demonstrate the design process which has been followed will help the architect in question to prove that they in fact did not merely copy the work of other designers.
Another area of concern revolves around clients simply taking initial sketches which architects have provided as part of their pitch to win work and simply passing these on to another designer or to a builder for use on their project without the architect’s permission. To help prevent this, Hallett says, it is good practice to mark these documents as being confidential and to make it clear that they cannot be disclosed to other parties.
Next, Hallett says it is important for architects to ensure that any contracts they have with any subcontractors, employees or work experience students clearly spells out that copyright ownership with regard to the work in question will be transferred to the firm. This avoids any situation where any of the above parties could have a claim that they (rather than the firm) owns the copyright.
Finally, Hallett says it is important to develop a reputation for enforcing your rights in this area. Reputation is critical, he says. Any known history of robust action in this area serves as a deterrent for others who may be thinking of taking their ideas; vice versa for others who may be less active in enforcing their rights.
As initiators of creative ideas, architects face a critical issue with regard to the protection or otherwise of their intellectual property.
With a few sensible strategies, they can go a long way toward protecting this crucial asset.
Contract review – assistance from Solicitor on your contract terms: members should note that advice on contract terms relating to intellectual property, patents and taxation or advice on the legality of particular company structures require specialised expertise and we are therefore not in a position to advise in these areas. Members with concerns in these areas should seek assistance from an external solicitor with expertise in these particular fields.