If you build it … you better make sure you have copyright over the design

If you ask an architect to draw designs for you, you might think you are then free to use those drawings however you please. However, it's not necessarily that simple.

The right to construct a building pursuant to an architectural drawing is one of the rights provided to the owner of the copyright in that drawing, pursuant to the Copyright, Designs and Patents Act 1988.

Here, we look at the rights of a party who has commissioned architectural drawings to use, amend or reproduce those drawings for the purposes of construction, where there is no written agreement between the commissioning party and the architect responsible for the creation of those drawings.

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Copyright ownership – the basics

The copyright in a work of architecture will vest, in the first instance, in the person who has been the author of the artistic design. The period of copyright protection for architectural works lasts from creation to 50 years after death of the author.

Ownership of copyright in any architectural drawings in commissioned works will usually be determined by the contractual agreement between the parties. Ideally the contract will outline whether the copyright is assigned to the commissioning party and/or to what extent use was permitted under licence.

In the absence of an agreement indicating otherwise, the first owner of copyright in an architectural drawing will, in the case where a work is commissioned from an architect, generally be that architect (provided the architect is not an employee of the commissioning party).

Transfers of copyright are implied, generally, only where it is necessary to give business efficacy to the contract and the implied term satisfies the officious bystander test. In other words where it would be so obvious to all parties involved, it goes without saying.

There may be limited circumstances where it might be argued that a transfer of copyright could be implied, where the commissioned work is unique - on the basis that the architect could have no other conceivable use for that commissioned work. The courts have provided some guidance as to how this may be established, including consideration of the price paid or requirement to pay royalties to indicate an exclusive licence. Of course, it will depend on the individual facts and circumstances of each case.

Rights of use – reproduction

Where an architectural drawing has been commissioned from an architect, the commissioning party will generally have an implied right to use that drawing for the purposes of constructing a building to that drawing specification in the absence of an agreement indicating otherwise. The engagement of a person to produce material of a nature which is capable of being the subject of copyright for reward implies a permission, or consent, or licence in the person giving the engagement to use the material in the manner and for the purpose in which and for which it was contemplated between the parties that it would be used at the time of the engagement.

In Blair v Osborne & Tomkins [1971] 2 Q.B. 78 , CA, it held:

“when the owner of a building plot employs an architect to prepare plans for a house on that site, the architect impliedly promises that, in return for his fee, he will give a licence to the owner to use the plans for the building on that site. The copyright remains in the architect, so that he can stop anyone else copying his plans, or making a house from them; but he cannot stop the owner, who employed him, from doing work on that very site in accordance with the plans. If the owner employs a builder or another architect, the implied licence extends so as to enable them to make copies of the plans and to use them for that very building on that site: but for no other purpose. If the owner should sell the site, the implied licence extends to as to avail the purchaser also”.

However, key to the presence of the right to use will be whether payment has been made, and the amount of that payment.

Where a discounted payment has been made, then the right to reuse the relevant drawings will be limited. For example if the amount of the payment is below Royal Institute of British Architects (RIBA) standard rates the right to use the drawings has been found to be limited only to their submission for planning consents and not for the purposes of construction.

A Scottish consideration

The Outer House of the Court of Session in the opinion of Lord Kingarth in Muir Dorrans v The Shand Partnership and Others [2004] E.C.D.R. 21 considered the rights of use of persons other than the original commissioning party, as subsequent proprietors of the relevant site.

His Lordship indicates the presence of an implied licence between the architect and the commissioning party, although there may be issues as regards the transfer of that licence (or grant of right of use under that licence) to others where such transfer or grant was not within the contemplation of the parties at the time of contracting.

Differentiation between reproduced and amended drawings

The copying of a work is an act restricted to the copyright holders and the re-use of the drawings may be considered unauthorised use in the absence of express terms.

Where drawings have been amended the position is different. A key point here is whether the amended drawings are new artistic designs capable of their own copyright. Separate copyright subsists in each "original" work. "Originality" in essence means "not copied". It does not depend upon the exercise of original or independent thought but on the author having expended sufficient independent skill, labour and judgement to justify copyright protection for the result.

Therefore, if a new drawing has been created, albeit based on a previous drawing, and sufficient skill, labour and effort has been expended so as to make that drawing original, then it would be a new copyright work. There may still be the argument with respect to any new amended drawings that use of the original drawings was not permitted, if a substantial part of the original drawings are being copied, however this risk is unavoidable.

Conclusion

When commissioning architectural drawings to use, amend or reproduce those drawings for the purposes of construction, ensure all parties are clear from the outset what the extent of your rights to use the drawings are, whether the architect is willing to transfer copyright outright or subject to licence, and whether this covers all intended use. Ideally this will be encapsulated in a written contract; otherwise you may only have limited implied rights which may be challengeable and prevent you from using the drawings for the purposes intended.

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