Architects’ intellectual property rights in
their designs: an introduction
9 November 2011
Robert Stevenson
Partner, BLM London
Introduction
1
Architects, when performing their role as designers, create designs in the course of their
appointments (as do other construction professionals who undertake a design role).
Those designs can have commercial value which can be exploited. Questions can arise
as to what rights exist and who owns the designs. What rights does the party who is
paying for the designs have? If the architect was engaged to prepare planning drawings
and planning permission was granted, can the client appoint another architect to use
the drawings with planning approval in the detailed design and construction stages?
What if the design was created by the architect on a speculative project on the promise
of being appointed, only to see another architect appointed and using the design? Or if
the design was created for a competition but is now being used without appointing the
architect who created the design? What if the design was the result of a collaboration
between various consultants and possibly even with input from the client? Who owns
the rights then? Can the client use the design for other projects or to carry out
refurbishment or extension works in the future? Are the architect’s rights limited to any
rights he may have in the design plans or do they extend to rights in the building itself
as a three dimensional object completed to the design? What about the creative
concepts? Are they protected? Can the architect prevent use of his design if he has not
been paid for it or has only been paid part of his fee? What about use by the architect of
proprietary designs created by others? Is he at risk by using them? What about
databases and other documents created during the course of running his business?
Can these be protected from copying or use by others? The purpose of this paper is to
introduce architects to their rights as designers in the UK and to identify how those
rights can be protected. The law is only stated where it is relevant to those rights; this
paper does not attempt to introduce the law applicable to intellectual property generally,
which is a much broader topic.
What rights exist?
2
Potentially, architects may have a number of intellectual property rights in their designs.
‘Intellectual property’ refers to those creative ideas of the human mind which have
commercial value and which receive legal protection. The forms of protection include
copyright, design rights, rights in respect of confidential information, database rights,
patents and trademarks. Some of these rights are only effective upon registration.
Others apply automatically upon creation of the design. Some are national rights and
some are European Community rights. Disputes in the construction context arise most
frequently in respect of copyright claims, on which this paper will concentrate, however,
reference will be made to the other rights as well. You are particularly directed to the
sections on copyright, design rights, the relationship between copyright and design
rights, rights in respect of confidential information and database rights.
Copyright
The nature of copyright
3
Copyright is a national, statutory right. By virtue of section 1 of the Copyright Designs
and Patents Act 1988 [‘CDPA’], copyright exists in literary, dramatic, musical or artistic
works, sound recordings, films, broadcasts and typographical arrangements. As the
right exists in the specified ‘works’, sound recordings, films, broadcasts and
typographical arrangements, it does not protect the ideas contained in the works, but
only the work itself. In the words of Lord Justice Buckley in Catnic Components Ltd &
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
1
Anor v Hill & Smith Ltd [1982] RPC 183 at page 373: “What is protected is the artistic
work and not any ideas or information which it may be designed to convey…What
is protected is the skill and labour devoted to making the artistic work itself, not the skill
and labour devoted to developing some idea or invention communicated or depicted by
the artistic work”.
4
This concept of protecting works and not ideas is helpfully explained in the architectural
context in the Australian case of Murray & Woolley Pty Limited & Ors v Hooker Homes
Pty Limited [1971] 2 NSWLR 278 at page 284 (per Street, J): "There is undoubted force
in the contention that the field of architecture is traditionally one in which new ideas are
constantly evolving and being developed. Applications of new architectural ideas and
concepts by those who follow the leaders in their profession are legitimate, and will not
be restrained by the copyright laws. There is a clear distinction between the protection
which the law will afford to an architect's plans on the one hand, and, on the other hand,
the absence of any protection to the architectural idea or concept which may happen to
be expressed in a given set of plans. The same distinction applies in the case of a
completed house.
The copyright law will prevent the building of another house which reproduces a
substantial part of the original house where such reproduction comes about as a
result of a copying of the physical object itself. But the law does not restrict the
application and development of architectural concepts and styles: original
concepts and styles may, without risk of infringement, be applied and developed
by other architects in subsequent buildings. The law does not prevent one
architect from following in the footsteps of a colleague; it does prevent him from
copying the plans of his colleague so as to enable him to follow those footsteps;
and it does prevent him from physically reproducing those footsteps and thereby
following them.
I make these general observations to underline the importance that will attach in
this and in any other copyright suit to the question of how the alleged infringing
work came into existence. An architect may legitimately inspect an original plan
or house and then, having absorbed the architectural concept and appreciated
the architectural style represented therein, return to his own drawing board and
apply that concept and style to an original plan prepared by him and in due
course to a house built to such plan. There is a dividing line separating such a
legitimate process from an inspection followed by a later copying, of a substantial
part of the physical object inspected, even though the copying, be from memory;
the latter exercise does infringe. In many circumstances it will be difficult to state
categorically whether the dividing line has been crossed. Cases will not always
be black or white where the alleged copying is from memory. The borderline area
is clouded by a band of grey within which opinions and conclusions may differ.
Within this grey band conflicting answers could without error be given to the
questions - is that plan or house only a copy of the concept or style of the original
and hence legitimate?, or is it a copy of the author's manifestation of that concept
or style and hence an infringement?
In this grey band, in answering such questions as these, it can be of critical
importance to know how the architect who is said to have infringed went about
the preparation and drawing of his plan. It is only after making a finding, either on
direct evidence or by inference, of copying, that is to say, of unfair or
unconscientious use of the author's plan or building, that significance will attach
to the degree of similarity. In a practical sense, of course, the degree of similarity
is frequently a most telling element on the question of copying. To some extent
the two aspects overlap, but they are distinct in point of principle and they must
be considered with this distinction in mind."
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
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5
This approach was approved in Jones v Mayor & Burgesses of the London
Borough of Tower Hamlets & Anor [2001] RPC 23, where it was argued that a
local authority development had copied the “feel of Mr Jones’ original design”.
The court held that the ‘general feel‘ of the design was incapable of copyright
protection. The court could only consider whether the alleged infringing buildings
breached the copyright in Mr Jones’ design drawings.
6
Registration is not a requirement of copyright protection, so that no formal action needs
to be taken to secure the right. It comes into effect immediately upon the creation of a
copyright work. Nevertheless, the UK is a signatory to the Berne Convention 1886 and
the Universal Copyright Convention 1962 which provide that member states must have
certain minimum copyright provisions in their copyright laws and membership gives
authors of member states the benefit of the protection given to nationals in relation to
the prescribed minimum rights. The © symbol is a requirement of the Universal
Copyright Convention 1962 and maximises the protection which is available under the
1962 Convention. The symbol should be used.
7
To obtain copyright protection, a work must be original i.e. the author must have used
his own skill & effort to create the work. Is the work a copy of a previous work? If not, it
is an original work. Artistic quality is not needed, unless that is additionally required for
protection [see para 8].
What architectural works may be subject to copyright?
8
9
‘Artistic works’ are defined to mean:
(a)
A ‘graphic work… irrespective of artistic quality’ [s4(1)(a) CDPA]. Graphic works
are defined to include any drawing, diagram or plan. It is well established that
an architect’s design plans or drawings are graphic works. They do not need to
have artistic quality to qualify for protection.
(b)
A ‘ work of architecture being a building or a model for a building’ [s4(1)(b)] i.e.
a building as a three dimensional structure is capable of protection, as is a
model of it. ‘Building’ is defined [s4(2)] to include ‘any fixed structure, and a part
of a building or fixed structure’. The courts have held bridges, steelwork for a
sports stadium, a garden with a pond, steps and a wall all to be ‘structures’ for
this purpose. The London Eye is a contemporary example of a ‘structure’.
Works of architecture or models must have some artistic quality to qualify. The
threshold is low i.e. a building or structure must demonstrate at least ‘something
apart from the common stock of ideas’ to demonstrate artistic quality.
(c)
A ‘photograph, sculpture or collage, irrespective of artistic quality’ [s4(1) (a)
CPDA].
(d)
A ‘work of artistic craftsmanship’ [s4(1)(c) CPDA] (e.g. a Faberge egg).
The definition of a ‘literary’ work means any work which is written, spoken or sung and
includes a ‘table or compilation’, ‘a computer program’ or a database (providing the
database constitutes the author’s own intellectual creation) and may apply to some
works created by architect in the course of their work.
What rights exist?
10
Copyright gives rise to both economic and moral rights.
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
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11
In relation to the economic rights, subject to certain exceptions [e.g. see paragraphs 32
to 34 below], the owner of the copyright in a work has the exclusive right to do the
following acts in the UK [s16 CPDA] (although the scope of the Berne Convention may
provide similar protection in the jurisdictions of the signatories to the Convention):
(a)
(b)
(c)
(d)
(e)
(f)
12
to copy the work;
to issue copies of the work to the public;
to rent or lend the work to the public;
to perform, show or play the work in public;
to broadcast the work; and
to make an adaptation of the work or do any of the above in relation to an
adaptation.
Subject to certain limited exceptions, the following moral rights exist:
Right to be identified as the author of a work (subject to assertion of the right)
(a)
the author of a work of architecture in the form of a building has the right to be
identified on the building as constructed or, where more than one building is
constructed to the design, on the first to be constructed [s77(5) CPDA], by
appropriate means visible to persons entering or approaching the building
[s77(7)(b) CPDA];
(b)
the author of an artistic work has the right to be identified, in the case of a work
of architecture in the form of a building or a model for a building, a sculpture or
a work of artistic craftsmanship, when copies of a graphic work representing it,
or a photograph of it, are issued to the public [s77(4)(c) CPDA];
(c)
the author of an artistic work (e.g. a design plan) has the right to be identified
(in or on each copy) whenever the work is published commercially or exhibited
in public, or a visual image of it is broadcast [s77(4)(a) CPDA];
Right to object to derogatory treatment (not subject to assertion of the right)
(d)
not to have the work subjected to derogatory treatment [s80(1) CPDA];
Right to object to false attribution of authorship (not subject to assertion of the
right)
(e)
not to have an artistic or literary work falsely attributed to him as the author
[s84(1)(a) CPDA]; and
Right to privacy of domestic photographs or films (not subject to assertion of the
right)
(f)
13
a right to privacy of photographs or a film commissioned for private and
domestic purposes [s85 CPDA].
However, a person does not infringe any of the moral rights to be identified as the
author conferred by section 77 CPDA (i.e. (a) to (c) above) unless the right has been
asserted in any of the following ways:
(a)
in writing, signed by the author [s78(2)(b) CPDA] – anyone to whose attention
the notice is brought is bound;
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
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(b)
on an assignment of copyright in the work, by including in the assignment a
statement that the author asserts in relation to that work his right to be identified
[s78(2)(a) CPDA] – the assignee and anyone claiming though him is bound,
whether or not he has notice of the assignment;
(c)
by securing that when the author or other first owner of copyright parts with
possession of the original, or of a copy made by him or under his direction or
control, the author is identified on the original or copy, or on a frame, mount or other
thing to which it is attached [s78(3)(a)] – anyone into whose hands that original or
copy comes is bound, whether or not the identification is still present or visible; or
(d)
by including in a licence by which the author or other first owner of copyright
authorises the making of copies of the work a statement signed by or on behalf of
the person granting the licence, that the author asserts his right to be identified in
the event of the public exhibition of a copy made pursuant to the licence [s78(3)(b)]
– the licensee and anyone into whose hands a copy made in pursuance of the
licence comes is bound, whether or not he has notice of the assertion.
14
Furthermore, there are various circumstances in which it is not an infringement of the
moral right not to have an artistic work subjected to derogatory treatment. In the case of
a work of architecture in the form of a model for a building, a sculpture or a work of
artistic craftsmanship, it is not an infringement to issue to the public copies of a graphic
work or photograph representing a derogatory treatment of the model, sculpture or work
of artistic craftsmanship. It is an infringement to subject a building (rather than a model
of it) to derogatory treatment. In that event, the author has the right to have any
identification of him on the building removed.
15
The moral rights to be identified as the author should be asserted in the architect’s
contract of appointment, so that a separate assertion is not required later. For example,
clause A6.1.1 of the RIBA Standard Conditions of Appointment (forming part of the
Standard Agreement for the appointment of an Architect S-Con-07-A) provides that
“The Architect owns the copyright in the original work produced in the performance of
the Services and generally asserts the Architect’s moral rights to be identified as the
author of such work”.
16
There are exceptions to the right to be identified as author conferred by section 77
CPDA. The most important exceptions for the purposes of this paper are:
17
(a)
the right does not apply to anything done by, or with the authority of, the
copyright owner, where copyright in the work originally vested in the author’s
employer as a work produced in the course of employment; and
(b)
the right is not infringed by any of the acts which the CPDA permits to be done
without infringing copyright in the work.
Furthermore, it is not an infringement of any of the moral rights to do any act which the
person entitled to the right has consented. It is not unusual for bespoke appointments
on larger projects to contain terms amounting to a waiver of the author’s right to assert
his moral rights. For example, “The Consultant hereby waives any rights it may have
pursuant to sections 77, 80 or 84 of the Copyright Designs and Patents Act 1988 or any
other legislation which may supplement that Act”. (Note that this waiver includes moral
rights which do not have to be asserted.) Developers often argue that a development
has more value for sale if the architect has waived his right to assert his moral rights
and there is a wide licence in respect of the use of the copyright in the architect’s works,
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
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especially if the development is being sold with planning permission. Whether the
author agrees to waive his moral rights on a particular project is a matter for him, but
the value of what he is giving away and any payment being received for that should be
carefully considered.
18
Moral rights are not assignable [section 94 CPDA], however, the author’s right to
identification, the right to object to derogatory treatment of work and the right of privacy
of certain photographs and films transmits on death in accordance with a will or to the
estate (i.e. as property of the estate).
19
As the moral rights are personal, if the author wants his firm or company to be identified
as author instead of him, then he will have to ensure that his appointment with his client
contains a provision agreeing to this. The agreement should also be binding upon any
assignees or transferees from the client.
Who owns the rights?
20
The author of a work is the first owner of any copyright in it, except where a literary or
artistic work is made by an employee in the course of his employment, in which case
the employer is the first owner of any copyright (subject to any agreement to the
contrary – s 11(2) CPDA).
21
There are a number of points to note:
(a)
Unless the relationship between a commissioner and author is also that of an
employer and employee, the author, not the commissioner, owns the copyright.
(b)
The ‘course of employment’ may not cover some workers (e.g. freelance
workers), so if you are an employer, you should ensure that anyone working on
a copyright work assigns any copyright in the work they create at your request.
You should also seek an indemnity from them in respect of any losses suffered
as a result of their designs infringing the rights of third parties (i.e. by copying
the protected works of third parties). This should be done in their contract of
engagement before any protected works are created.
(c)
There may be more than one author of a work, in which case there will be joint
ownership.
22
As to what degree of authorship is necessary for joint ownership to arise, in Cala
Homes (South) Ltd & Ors v Alfred McAlpine Homes east Ltd [1995] EWHC 7 (Ch) the
court stated that authorship is about more than who actually did the drawing or ‘put pen
to paper’. Where two or more people collaborate in the creation of a work and each
contributes a significant part of the skill and labour protected by copyright, then they are
joint authors. It is an issue of fact to be determined in any case where joint authorship is
alleged.
23
Clauses in appointments transferring the ownership of the copyright to the client should
not be agreed (e.g. “The Architect’s Documents and the copyright and other rights
contained therein shall be and shall remain the exclusive property of the Client and shall
vest in the Client at the time they are created” ). An example of an acceptable clause is
the RIBA clause quoted in paragraph 15, subject to granting the client a licence in
appropriate terms.
24
Proving ownership and a right to sue can be complicated. In Tayplan Ltd v D&A
Contracts [2005] Scott CS CSOH 17, there was a dispute as to who owned the
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
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copyright in architectural plans. Tayplan was a property developer of a residential
development at West Kilbride. D&A Contracts was developing a residential
development at Dreghorn. Tayplan sought to restrain D&A from using certain drawings
for the purposes of the development, on the basis that they had copyright in the
drawings. Copyright in the drawings originally belonged to Murray Watt, a partner of
Classic Design Partnership, an architectural practice. The drawings were prepared
upon the instructions of Alan Smith, then a director of Braid Homes Limited [‘BHL’], in or
around April 1999.
25
Tayplan claimed that copyright in the drawings had passed to BHL by a number of
developments. Initially, Mr Watt (signing as a partner), wrote to BHL stating "Further to
our meeting of 11 May 1999 and our subsequent conversation of 18 May regarding the
above proposal, I can confirm the following as requested...". There was a proposal as to
fees and the scope of the services. The letter ended with a request for instructions to
proceed. BHL responded by confirming acceptance of the proposals and stating, "Once
completed the copyright to all designs, drawings, perspectives, layouts and art work
relating to the above development will become the sole property of Braid Homes
Limited". The services were provided. On 10 April 2003 Mr Watt signed a document (as
Ronald W Watt, Chartered Architects) which assigned the copyright to BHL. BHL had
then executed an assignment of the copyright in the drawings in favour of Tayplan.
26
It is not clear from the judgment on what basis D&A Contracts claimed to have been
entitled to use the drawings. The court had to decide whether Tayplan owned the
copyright in the drawings and therefore had title to bring the proceedings. It was held
that Tayplan had a clear and unqualified personal right to demand an immediate
assignment of the copyright from Mr Watt and this was sufficient to raise proceedings
especially as there was nothing to suggest that Mr Watt would refuse to complete the
assignment. There was no evidence that the assignment had been completed by the
assignment from Mr Watt as a partner at Ronald W Watt, Chartered Architects, since it
was not clear that Classic Design Partnership had assigned ownership to Ronald W
Watt, Chartered Architects. Tayplan was allowed to proceed to trial, subject to the
completion of the assignment. Had the issue of ownership been clearly resolved at the
outset, these issues would not have arisen.
What is the duration of the right?
27
Copyright subsists for 70 years from the end of the year in which the author dies for
artistic works (i.e. which includes plans and buildings as copyright works).
28
However, where an artistic work has been exploited, by or with the licence of the
copyright owner, by making articles by an industrial process which are covered by
design right [para 73] and by marketing such articles in the UK or elsewhere, then at the
end of the period of 25 years from the end of the calendar year in which the articles are
first marketed, the work may be copied by making articles of any description or
otherwise exploited without infringing copyright in the work.
Acts infringing copyright
29
The CPDA defines primary and secondary acts of infringement. Infringement does not
depend upon an intention to cause harm to the copyright owner to be proven, nor any
commercial advantage to have been obtained. The fact of infringement is sufficient.
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
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30
31
32
Primary acts of infringement include:
(a)
A person performs one of the 6 acts referred to in para 11 above, which the
owner has the right to do, without permission; or
(b)
a person authorises a third party to perform one of the 6 acts which the owner
has the right to do, without permission.
Subject to the infringer either knowing or having reason to believe that the copy is an
infringing copy, secondary acts of infringement include:
(a)
importing infringing copies;
(b)
possessing or dealing with infringing copies;
(c)
providing means for making infringing copies;
(d)
permitting use of premises for infringing performances.
However, copyright in
-
buildings, or
-
sculptures, models for buildings and works of artistic craftsmanship, if
permanently situated in a public place or in premises open to the public
is not infringed by making a graphic work representing it or by making a photograph or
film of it or by broadcasting a visual image of it [s62(1) CPDA]. Nor is the copyright
infringed by issuing to the public copies of, or broadcasting, anything whose making
was, by virtue of section 62 CPDA, not an infringement of the copyright.
33.
If the author of an artistic work has relinquished the copyright, he does not infringe that
copyright, by copying the work in making another artistic work, provided he does not
repeat or imitate the main design of the early work Section 64 CPDA.
34
Furthermore, anything done for the purposes of reconstructing a building does not
infringe any copyright in the building or in any drawings or plans in accordance with
which the building was, by or with the licence of the copyright owner, constructed
[section 65 CPDA].
35
The following acts are also permitted, or may be a defence to a claim of infringement:
(a)
fair dealing for the purpose of research & private study;
(b)
fair dealing for the purpose of criticism or review;
(c)
fair dealing for the purpose of reporting current events;
(d)
incidental inclusion;
(e)
public interest;
(f)
miscellaneous other defences.
Copying
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8
36
Copying is the most significant form of infringement likely to affect architects. There is a
primary infringement if a person copies the whole of the work, or a substantial part of it,
without permission.
37
The courts consider substantiality by reference to the significance of what is
reproduced, as well as the physical amount of what is produced. Lord Hoffman
confirmed in Designer Guild Limited v. Russell Williams (Textiles) Limited (Trading as
Washington DC) (2001) 1 All ER 700 that “substantiality depends upon quality rather
than quantity…”. In Stovin-Bradford v Volpoint Properties Limited [1971] Ch 1007, the
defendant copied parts of an architect’s plans, including a distinctive diamond shaped
feature. The court held this was sufficient to amount to copying a substantial part of the
design.
38
Joint owners can only lawfully copy with permission of all of the owners.
39
The following cases demonstrate some of these principles in operation:
(a)
Cala Homes (South) Ltd & Ors v Alfred McAlpine Homes east Ltd [1995] EWHC
7 (Ch): In 1987, Cala Homes pooled the design expertise available within the
group and developed a standard range of designs known as the New Standard
House Range. Cala Homes employed Crawley Hodgson, then a firm of
technical draughtsmen, to produce most of the drawings and floor plans for the
new range. One of the directors who was involved in the development of the
new range left Cala Homes. It was not an amicable split. He went to work for
McAlpine. There he introduced a range of national house designs, in the same
way that he had contributed to the work previously done at Cala Homes.
McAlpine then employed Crawley Hodgson (who had merged with a firm of
architects). It was not disputed that at a meeting, Mr Hodgson produced some
drawings from the Cala Homes range, with manuscript amendments suggesting
adjustments to meet the McAlpine brief. Crawley Hodgson also provided
assistance in designing the layout of the houses to be constructed on a Higgs &
Hill site. On two occasions, Crawley Hodgson used Cala Homes’ house
footprints, referred to by the names by which Cala Homes had styled them,
although McAlpine’s case was that it was unaware that these were Cala Homes
footprints. The marked up drawings which had been produced at the meeting
were analysed in detail by McAlpine, who produced full working drawings after
some further adjustment. Houses were built to the designs, which received
flattering press.
Cala Homes claimed that the drawings had been substantially copied, in breach
of copyright. Cala Homes claimed that the drawings were jointly owned by Cala
Homes and Crawley Hodgson. Alternatively, Cala Homes claimed that it was an
implied term of its retainer with Crawley Hodgson that the copyright would be
held on trust for Cala Homes, as equitable owner of the copyright. Cala Homes
also claimed that McAlpine had induced Crawley Hodgson to breach its
contract with Cala Homes in two respects (i) by inducing Crawley Hodgson to
breach a term that Crawley Hodgson would not use the Cala Homes’ designs
for any third party and (ii) there was evidence that Mr Hodgson had queried his
right to modify the Cala Homes’ designs and that McAlpine’s representative had
assured him that he was doing nothing wrong.
McAlpine denied that Cala Homes had proven that its drawings had ‘originality’,
saying that Cala Homes had just copied existing drawings. Alternatively,
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
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McAlpine argued that no substantial part of what gave the drawings originality
had been copied in McAlpine’s drawings. McAlpine argued that, in any event,
the copyright in the drawings was owned by Crawley Hodgson in the same way
that the copyright in an architect’s drawings are owned by the architect.
McAlpine raised other technical legal arguments as well and argued that Cala
Homes had to identify the precise drawings which had been copied, bearing in
mind that the various drawings for the house types had evolved over time.
The court held that copying a substantial part of the design in a drawing, even if
the drawing is a derivative of the original drawing, will infringe the copyright in
the original drawing. As to originality, the court held that normally an architect
will try to produce a design which is coherent. Even though he may utilise
features from preceding designs, if he has put significant effort and skill into
producing a new design with a new combination of features, that new design
will be the subject of copyright. In relation to the substantiality of the copying,
the judge compared the drawings for similarities and held that there had been
substantial copying. As to who owned the copyright in Cala Homes’ drawings,
the court confirmed that authorship is about more than who actually did the
drawing. Where two or more people collaborate in the creation of a work and
each contributes a significant part of the skill and labour protected by copyright,
then they are joint authors. The judge viewed Cala Homes’ employee Roger
Date as the main author of the drawings. As he was an employee of Cala
Homes, Cala Homes owned the copyright jointly with Crawley Hodgson, who
had collaborated on the designs and had actually drawn the drawings.
The judge held that McAlpine had infringed Cala Homes’ copyright. He
concluded that the breach was a flagrant one and awarded additional damages
under section 97(2) CDPA. Additional damages are not intended to be
compensatory but to allow the court to impose a financial penalty to register the
level of its disapproval of the behaviour of the infringer. The issue of damages
was reserved to a further hearing and it is not know what damages were
awarded.
(b)
In Jones v Mayor & Burgesses of the London Borough of Tower Hamlets &
Anor [2001] RPC 23, Assured Developments Limited had been given a building
licence by Tower Hamlets to purchase a site for £2.75 million in order to build
about 80 houses on it. Tower Hamlets were to use the capital receipt from the
sale of the site to purchase 24 properties for rent. Assured began work on the
first 24 houses and engaged George Jones as its architect to prepare drawings
for planning permission purposes. Mr Jones did so and planning permission
was granted for the construction of 81 houses. Assured Developments got into
dispute with Tower Hamlets. Following a slump in the housing market, Assured
Developments went into liquidation, owing Mr Jones approximately £220,000 in
fees.
Assured Development’s licence was revoked and Tower Hamlets considered its
options, which included engaging Mr Jones directly and paying his outstanding
fees or proceeding with the development without his involvement. Tower
Hamlets chose to proceed without Mr Jones.
Mr Jones claimed that Tower Hamlets breached his copyright by copying the
“feel” of his original design, as well as 9 of his drawings, when completing the
scheme. He claimed damages in excess of £100,000. Tower Hamlets defended
the claim, firstly, on the basis that it had devised a scheme for the development
which was different from the scheme on which Mr Jones had prepared
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
10
drawings. Secondly, Tower Hamlets claimed that comparison of Mr Jones’
drawings and what Tower Hamlets had actually built demonstrated that there
were substantial differences between them. Thirdly, Tower Hamlets accepted
that there were similarities between the schemes, but claimed this was due to
the geographical constraints of the site, the fact that one block of 24 houses
was already partially built and there were design constraints placed upon any
person developing this area by the surrounding houses, the height of the
surrounding buildings, the common stock of architectural ideas in the
neighbourhood and also the instructions given by Tower Hamlets to its
architectural team.
The judge concluded that the ‘general feel of Mr Jones’ original design’ was not
capable of copyright protection; he said that the proper approach was to take
each drawing (i.e. copyright work) in turn and consider whether the alleged
infringing buildings were copies of the whole, or a substantial part, of the
drawing in question. As part of that enquiry, he heard evidence about how
copies of the drawings may have come to the knowledge of Tower Hamlet’s
architect, concluding that only some of the drawings were available through the
planning process. Tower Hamlets’ architect may have seen the drawings when
they were presented during a meeting but he was adamant that he did not have
copies and had not studied them. The judge was impressed by him as a
witness and by his frank admission that he had copied the width of the partially
built block for consistency. Ultimately, out of a long list of allegedly copied
designs, the court concluded that only an “ingenious and quite unusual solution”
for a wrap around bath had been copied. The judge accepted that Tower
Hamlets’ architect denied conscious copying of Mr Jones’ drawing for that
feature, but found that he had copied the feature nonetheless and that Mr
Jones’ copyright had been infringed. The measure of damages was assessed
as the equivalent of a reasonable fee for the drawing for that feature. The other
claims failed because Mr Jones could not prove copying, the court accepting
that the similarities between the two schemes were due to the matters relied
upon by Tower Hamlets.
(c)
In Gareth Pearce v (1) Ove Arup Partnership Ltd (2) Rem Koolhaas (3) Office
for Metropolitan Architecture (4) City of Rotterdam [2001] EWHC Ch 481, Mr
Pearce was an architect who undertook a project as part of his diploma
between 1985 and 1986 in which he produced drawings, detailed plans and
paintings for a design for a town hall for the Docklands development in London.
He claimed to be the owner of the UK and Dutch copyright in the Docklands
plans. Between 1990 and 1993, the City of Rotterdam constructed the
Kunsthal, a public building. Rem Koolhaus designed the building and Ove Arup
(represented in the claim by Berrymans Lace Mawer) were the civil engineers
for the project.
Mr Pearce visited the project during construction while visiting Rotterdam and
believed that features of the design had been copied from his plans for the town
hall in the Docklands. Ultimately Mr Peace only pursued his claim against Mr
Koolhaus and the Office for Metropolitan Architecture [‘OMA’].
As copying was central to liability, it was agreed that the court would decide the
extent of copying as a preliminary issue. Mr Pearce’s case was that there were
such similarities between the Kunsthal designs and his plans that there was an
inference of copying. Mr Pearce also gave evidence of having worked in the
London office of OMA (of which Mr Koolhaus had been a partner and still
visited at material times) and of his plans appearing to have been copied over
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
11
the weekend and then having been carelessly rolled up “as they could have
been had they been returned from a dyeline printer office”. Mr Pearce alleged
that Mr Koolhaus had covertly copied his plans and then denied this in the
proceedings i.e. that he had perjured himself.
Of 52 alleged similarities pleaded, some were abandoned by Mr Pearce’s
expert, although the judge said that why some were retained and others
abandoned did not make sense to him. Similarity was alleged on various bases.
The judge accepted that if you laid some of the Kunsthal drawings over Mr
Pearce’s drawings, there was a near exact fit, however, there was a degree of
distortion of Mr Pearce’s drawings which the judge held was more than could
be attributed to photocopying, so that the near exact fit by overlaying gave a
false impression. Mr Pearce also argued that his design, in 2 dimensional
terms, was based on the use of a square, a triangle and a rectangle and that
these shapes had been copied in the Kunsthal, although the triangle had been
turned over, moved laterally and truncated. The judge dismissed this alleged
similarity, noting that Mr Pearce’s expert had failed to explain how this 2
dimensional process could begin to lead to the complex 3-ramp structure of the
Kunsthal.
After considering further alleged similarities, the judge stated:
“62
I conclude therefore and without the slightest hesitation, that a mere
comparison of the DTH and the Kunsthal or any of the drawings for it does not
give the slightest reason to suppose copying. On top of that, however, both Mr
Koolhaas and Mr Hoshino gave detailed and clear explanations of what they
did. Those explanations were principally by reference to the models A-I. They
show a process of trial and error, which was entirely credible. Nothing in the
cross-examination of either witness began to touch their credibility. They were
both honest and reliable. I do not propose to go through the detail of the
various design attempts. The use of a ramp from dyke to park featured fairly
early. In a number of models it was covered over by a roof running directly over
it. The crucial stage was the idea of twisting the overhead ramp to let in light
(model H). It was that twisting which created, in part, the trapezoidal area
alleged to have come from Mr Pearce. It had nothing whatsoever to do with
him.
63
Since it was particularly relied upon I should also mention Similarity 31 - the
support pillars. Mr Hoshino explained exactly how he first put the 4 columns in,
using a grid. He subsequently moved them for engineering reasons: ultimately
those reasons dictated 5 rather than 4, columns.
64
The only other point worthy of separate mention is the slab containing the liftgear. It does not appear on any of the models - but then there is no reason why
it should have done. The models were made to design the fundamental
architectural structure of the building. They were not concerned with detail such
as the services. Originally Mr Koolhaas wanted as far as possible to put the
services in a basement. But a basement turned out to be too costly because
the land was already below sea level and the cost of keeping water out would
have been too much. So the gear had to go elsewhere. It was a neat solution to
the problem to put it in a slab at the top rather than try and spread it around the
roof - particularly since it was intended to bring in light through much of the roof.
Mr Pearce's 6-storey glass office block on piloti had nothing to do with the slab
of the Kunsthal.
65
I should briefly also mention some non-structural items said to be evidence of
copying, albeit not of the "graphical" kind which, from time to time, was said to
be the heart of the case. The Kunsthal has some stonework facing on its front
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
12
and across the entire back wall. The former (but not the latter) is said to have
been copied from Mr Pearce. He proposed some stonework of a quite different
shape on the left-hand front of the DTH. Mr Wilkey accepted that the use of a
stone-faced wall is common. But then said there was an "element of graphical
copying as illustrated by the position of this element in relation to the entrance
and elevational treatment." It is true that both stoneworks are on the left-hand
side of the respective buildings and so broadly on the left of the entrance. I do
not know what Mr Wilkey meant by "elevational treatment" for Mr Pearce's
stonework is above the piloti whereas the stone of the Kunsthal runs from
ground level to the roof. Mr Wilkey never explained why there was an "element"
of copying.
66
Then there were various items in the park said to be copied from Mr Pearce's
work. Mr Koolhaas did not design the park in which the Kunsthal stands at all.
The design was by a Mr Yves Brunier who has since died. So he too is
implicated in the fantastic allegations made in this case. The supposition is that
Mr Koolhaas gave him Mr Pearce's plans or something derived from them.
Nothing in the "similarities" relied remotely suggests this. I say no more than to
point out another claimant-biased blunder by Mr Wilkey. He seemed to think
that the Kunsthal drawings showed some picnic tables which he alleged were
copied from Mr Pearce. If he had read the Kunsthal drawings properly, as he
should have done, he would have seen that the objects depicted could not be
picnic tables. Instead of abandoning the point, as he would have done if he had
been fair, he clung on, saying: "there is a similarity in the size of a shape within
the landscaping.”
67
I therefore unhesitatingly dismiss this action and will hear counsel as to the
appropriate order.”
40
In deference to Michael Wilkey (the expert witness who appeared on behalf of Mr
Pearce and who was heavily criticised by the judge for his apparent lack of
independence and lack of scrutiny), the Architect’s Registration Board was
subsequently required to consider whether Mr Wilkey’s performance as an expert
witness fell below the standard of conduct and competence required of an architect
when acting as an expert witness and whether there was a breach of the Standards of
Conduct. The Board concluded that Mr Wilkey was not guilty of any unacceptable
professional conduct or serious professional misconduct. Indeed, a report of Ian
Salisbury was served on his behalf which supported the methodology which Mr Wilkey
had used in arriving at his conclusions and was critical of the court’s approach to Mr
Wilkey in his role as an expert witness.
41
These cases demonstrate some of the difficulties inherent in proving copying as an
infringement.
Licences
42
Assuming that the architect, as first author or employer of the first author, has retained
ownership of the copyright in the protected works (e.g. design plans), the question is
what rights does the client have to use such plans?
43
At the outset, it is important to understand the distinction between the ownership of the
physical documents and the ownership of the copyright in the works, as they will not
usually be the same (depending upon the nature of the documents). Generally:
(a)
The ownership of plans and drawings prepared for, and used in a project, will
pass to the client upon payment of the architect for his services. Subject to any
express term to the contrary, if the architect has not been paid, he will be
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
13
entitled to exercise a lien over the documents until payment of the sum due has
been received. Whether the physical property in a design created for a client
stored in an architect’s computer systems belongs to the client will depend
upon the agreement between the parties and the nature of what is stored.
(b)
Property in documents prepared as the client’s agent (e.g. communications
between the architect and a contractor generated during the architect’s role as
contract administrator) belong to the client as principal. The client can demand
that they be delivered to him (subject to the architect’s lien for non-payment).
(c)
Documents prepared by the architect for his own benefit in carrying out his work
(e.g. draft plans, calculations, internal housekeeping records, memoranda, etc)
are not prepared as the agent of the client but as a professional person and
these belong to the architect (absent agreement to the contrary). The client
cannot demand that these be handed over. (However, if the client has been
charged for their preparation that will tend to indicate that they were intended to
belong to the client ultimately.)
44
It is common in bespoke appointments (e.g. seen in many local authority appointments)
for clients to require architects to agree that all documents created in connection with a
project (covering categories (a), (b) and (c) above) are owned by the client (including
CAD files and other electronic records). This is contrary to the common law position,
which gives adequate protection to both parties. Furthermore, the architect may
inadvertently be giving ownership of valuable know-how to the client and/or stock-intrade of the architect’s business, which it is essential to own to carry on business. This
approach in bespoke appointments is often coupled with the removal of the architect’s
lien in the event of non-payment, so that the architect is considerably disadvantaged if
the client is in default. Giving the client the ownership of the documents prepared by
the architect for his own benefit in carrying out his work is also likely to be
disadvantageous in the event of a claim against the architect for alleged negligence.
45
Having made the distinction between the physical property in documents (including
design plans) and the property in the copyright in copyright works (such as design plans
which may be the physical property of the client), the question remains as to what use
the client can make of copyright works? If the appointment provides for the client to use
the copyright works pursuant to a licence, then the terms of that licence will be enforced
[see para 47 regarding agreed licences].
46
Licences may be implied, if none has been expressly agreed. If agreed, they may be
exclusive (i.e. only the person who has been given the licence can use the copyright
work, even to the exclusion of the copyright owner), sole (the person who has been
given the licence can use the copyright work, but not to the exclusion of the copyright
owner) or non-exclusive (the persons to whom a licence has been granted may use the
copyright work, but not to the exclusion of the copyright owner). Exclusive licences have
to be in writing signed by the copyright owner to be effective.
47
If no licence has been agreed, a licence will be implied to the extent necessary to
achieve the intentions of the parties at the time the work was commissioned, but the
answer in any particular case will depend upon the facts of the matter. The cases
provide some guidance:
(a)
If the architect charges a nominal fee, the court will only imply a licence to use
the copyright works for the precise purpose for which the work was created. For
example, in Stovin-Bradford v Volpoint Properties Limited [1971] Ch 1007
(Court of Appeal), the defendant owned a factory building and appointed an
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
14
architect to prepare drawings for the modification and extension of the building.
The architect undertook the work and applied for planning permission. The
agreed fee was nominal (i.e. 100 guineas, rather than the scale fee of £900).
Both parties knew that at the time. The architect sent his invoice and confirmed
on it that the copyright remained his and that the drawings could not be
reproduced without his consent (in fact he had been warned by another
architect that the defendant had previously employed them to get their ideas
and had then completed the work itself). Planning permission was not granted
due to the lack of an industrial development certificate and the architect
withdrew from the project. However, the defendant subsequently obtained
planning permission using the architect’s drawings and then modified and
extended the building in accordance with the architect’s design. This included
incorporating a distinctive diamond shaped feature which was particularly
pleasing. The architect sought damages for infringement of his copyright in his
design plans. The court accepted that the defendant had not used much from
the design plan, but it had used the diamond shaped feature. The court held
that the client paid a nominal fee for a licence to use the plans for no purpose
beyond the application for planning permission. There was no licence to use the
drawings to construct the building or make the modifications and therefore there
was an infringement.
(b)
That situation is to be distinguished from the usual situation which applies
where a client pays a full RIBA scale fee or equivalent substantive fee for the
architect to prepare drawings for planning permission. In that event, it is likely
that the court will imply a licence to use the drawings for the construction of the
building, as well as to obtain planning permission. The rationale for this is
explained in Blair v Osborne & Tomkins [1971] 1 All ER 468. An architect had
been employed under RIBA Conditions of Engagement 1962 to prepare
drawings for planning permission and permission had been granted. His client
sold the land and handed over the architect’s plans as part of the sale. The
purchaser used its own surveyors to obtain building regulation approval. The
architect claimed that this was a breach of copyright in his drawings.
In the Court of Appeal, Lord Denning MR delivered the judgment of the court,
stating ‘…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 so as to avail the purchaser also... Applying
this principle, it seems to me that the payment of £70 to Mr. Blair covered the
use of the drawings, not only by Mr. Underwood and Mr. Norris themselves, but
also by the people to whom they sold the plot, and by the surveyors and
workmen of the purchasers, so that they might make copies of them and
otherwise use them in the accustomed way for building a house on this site. I
think that the claim for infringement of copyright fails.”
(c)
Can the second architect modify the original architect’s designs? In Hunter v
(1) Fitzroy Robinson & Partners (2) Garden House Hotel (Cambridge) Limited
(3) Redbush Securities Ltd [1978] 10 BLR 84, an architect was engaged on
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
15
RIBA conditions of engagement to prepare plans for the reconstruction of a
hotel. He prepared the plans and many detailed drawings. The works were to
be completed in two stages. The first stage involved the addition of a new
accommodation block to the existing hotel. That work was carried out. Stage
two was to involve the face-lifting of the original hotel and its enlargement,
however, there was a serious fire which destroyed the hotel. A modified scheme
was then prepared in two stages. Stage one – the construction of a river suite –
was carried out. Stage two involved the laying of a ground floor slab, on which a
80 bedroom, 4 storey structure was to be constructed. Before the stage two
work was carried out, the client was put into receivership and the site was sold
to Redbush Securities Ltd, which formed Garden House Hotel (Cambridge)
Limited to operate the hotel (which had continued to trade during the works). At
that time, the architect had been paid £66,000 in fees but was still owed
£46,000. Redbush appointed new architects to undertake the completion of the
scheme. The original architect sought undertakings from the defendants that his
plans and drawings would not be used in the erection of any buildings on the
site. The defendants refused to give the undertakings. The original architect
applied to the court to restrain the defendants from using any part of his
drawings, on the basis that use of his drawings would infringe his copyright i.e.
this was an application for an interim injunction, with a full trial to follow as to
whether the injunction should be made permanent. The court accepted that the
grant of an injunction at that stage would prevent any work being carried out
until new plans were prepared. The court compared the drawings prepared by
the original architect and the drawings prepared by Redbush’s architects and
concluded that it was impossible to say there had been any copying. They
appeared quite dissimilar, although the court accepted that at a full trial, the
original architect might still be able to establish copying. Nevertheless, the
defendants admitted having seen, and to some extent, having copied from the
original architect’s plans. Importantly, Oliver J. did not decide the copyright
infringement issue, as his duty was to decide whether an interim injunction
should be granted at that stage. He had to decide whether, on the balance of
convenience, an injunction should be granted or not (i.e. not whether there was
an infringement). He held that the balance of convenience was in favour of the
defendants, since damages would adequately compensate the original architect
if he established an infringement of copyright after a full trial, whereas the new
owners would suffer losses of £12,500 weekly (in 1977) if the work was
restrained. Nevertheless, Oliver J noted that “there is a very strongly arguable
case that there was an implied licence to the defendants’ predecessor to utilise
the plans in any way that predecessor thought right for the erection of a building
on the site, including if necessary the engagement of another architect to modify
them”. This is generally accepted as authority for the proposition that the
second architect modify the original architect’s designs (even though it is was
not part of the actual reasons for the decision and therefore is not binding).
(d)
Can a client use plans to extend an existing building without payment of a
further licence fee? In Miekle & Ors v Maufe & Ors [1941] 3 All ER 144, an
architect was engaged in 1912 to prepare plans and drawings for the
construction of building. At that time, the client discussed the possibility of
extending the building southwards. In 1935, the client engaged another
architect to design the southward extension. In doing so, the architect copied
the design of the façade of the original building, with minor alterations. The
interior of the original building was reproduced to a substantial degree. The
original architect sought damages for infringement of its copyright. The client
argued in its defence that it was an implied term of the original architect’s
appointment that the client would have a licence to reproduce the plans of the
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
16
original building in the extension so that both buildings would form one
architectural unit. The court held that it was unnecessary to imply such a term
and the implied licence did not extend to reproducing the designs for the
purposes of an extension.
This decision is reflected in the licences incorporated in standard form
consultants’ appointments drafted by bodies such as RIBA. For example, clause
A6.2 of the RIBA Standard Conditions of Appointment (CA-S-07-A) provides in
part: “The client has a licence to copy and use and allow Other Persons
providing services to the Project to copy and use drawings, documents,
bespoke software and all other such work produced by or on behalf of the
Architect in performing the Services, hereinafter called the ‘Material’, but the
Architect is not liable for any use of the Material other than for the purposes for
which it was prepared. Where the Material relates to a design prepared by or on
behalf of the Architect, such purposes include operation, maintenance, repair,
reinstatement, alteration, promotion, leasing and/or sale of the Project but
exclude the reproduction of the design for any part of the extension of the
Project, and/or for any other project except on payment of a licence fee
specified in the Agreement or subsequently agreed”.
(e)
Can a client use the drawings to reconstruct the building? Anything done for the
purposes of reconstructing a building does not infringe any copyright in the
building or in any drawings or plans in accordance with which the building was,
by or with the licence of the copyright owner, constructed [section 65 CPDA].
Agreed licences
48
It is preferable for the parties to agree the terms of the licence which are to govern the
use of the copyright works. The terms of the licence need to be carefully considered.
The licences referred to in the current RIBA forms of appointment are drafted with the
protection of the architects’ interests in mind and should be used where possible.
49
When bespoke terms are proposed, factors to be considered include:
(a)
The precise ambit of the licence will depend upon what has been agreed,
however, the scope of the licence should not be wider than the scope of the
licence which would be implied at common law, unless that is your intention.
Nevertheless, licences are frequently drafted to achieve a commercial balance
between the client’s and architect’s interests. Clients on large commercial
developments usually demand a wide licence (e.g. “for any purpose whatsoever
connected with the Project including, but without limitation, the execution,
completion, maintenance, letting, advertisement, extension, reinstatement and
repair thereof. Such licence shall carry the right to grant sub-licences and shall
be transferable to third parties”). Beware that “for any purpose whatsoever
connected with the Project including…” is wider than “for the execution,
completion, maintenance, letting, advertisement, extension, reinstatement and
repair of the Project or any part thereof”.
(b)
Any licence fee which is agreed should reflect the wider scope of the licence if
you agree to grant a licence which is wider in scope than would be implied.
(c)
Delete clauses which are too wide. For example, “Copyright in all Consultant’s
Materials prepared by the Consultant in connection with the Project shall,
unless otherwise agreed, remain the property of the Consultant but the Client
shall have a non-exclusive, irrevocable, royalty free, transferable licence to
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
17
copy, use and publish such Consultant’s Materials (including copies thereof)
and the right to grant sublicenses in respect of the same for any purpose and
the Consultant agrees not to assert any moral rights in such Consultant’s
Materials or the Project granted pursuant to the Copyright Designs and Patents
Act 1988 or any statutory re-enactment or modification thereof”. A licence to use
copyright works for any purpose should always be deleted. The scope of the
licence should be restricted to using the copyright work for defined purposes for
the particular project. The architect’s position should be protected by a further
provision providing that the consultant is not liable for use of the copyright works
for any purpose other than that for which they were created (e.g. “The
Consultant shall not be liable for any use of any of the Proprietary Material for
any purpose other than that for which the same were prepared by or on behalf
of the Consultant”).
(d)
An exclusive licence should never be unintentionally granted, as an exclusive
licence is just that – exclusive to the person receiving the benefit of the licence,
even to the exclusion of the architect as the owner of the copyright. That would
give the person with the benefit of the licence the exclusive licence to do the
licensed acts and the architect would not be able to exploit his copyright in the
copyright work to do anything covered by the exclusive licence or inconsistent
with it. A sole licence will achieve the purpose of granting a licence to the client
without limiting the architect’s right to exploit his own copyright.
(e)
Clients frequently demand that licences be ‘royalty free’ i.e. no additional
licence fee is payable. This is usually coupled with a right to grant sub-licences
on the same terms, to enable the client to achieve the purposes for which the
licence is required for the particular development.
(f)
Is the licence to last for the duration that copyright subsists (i.e. to be
irrevocable) or is it to be restricted as to time?
(g)
The effectiveness of any licence should be subject to payment of any monies
properly due to the architect (although this is routinely resisted by clients in
bespoke appointments).
(h)
Moral rights are personal to the author and are not assignable nor an
appropriate subject matter to be licensed. A waiver of moral rights is often
included as part of the licence clause. Do not waive moral rights unless you
intend to do so.
Necessity for a licence to use copyright works created by sub-consultants
50
It is important that the architect obtains an express licence from sub-consultants which
licenses the architect to use the sub-consultants’ copyright works for the purposes for
which they are required by the architect’s client (rather than for any purpose which the
sub-consultants may put forward). Obviously those purposes should be provided for in
the sub-consultancy appointment, so that the architect is not left facing a claim by the
sub-consultant that the client or the architect has infringed its copyright by the client
using the copyright works for purposes outside the scope of any express licence in the
sub-consultant’s appointment or the client, on the other hand, claiming an indemnity or
contribution from the architect on the basis that the client used the sub-consultant’s
copyright works on the basis that the consultant provided them for such use.
51
It is common for bespoke appointments (and some standard forms of appointment
which attempt to strike a balance catering for the interests of developers on large
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
18
projects e.g. the NEC Professional Services Contract PSC3) to contain an obligation on
the consultant to indemnify the client in the event of an infringement of the rights of
sub-consultants or others who have provided proprietary designs in fulfilment of the
architect’s obligations, unless the infringement arose out of the use by the consultant of
copyright works provided by the client. Agreements to indemnify are excluded from
professional indemnity insurance cover and should not be agreed in principle. The
better approach is to ensure that appropriate licences are obtained from subconsultants or specialist contractors whose copyright works are being used by the
architect, although architects should not agree as a term of their appointment to procure
such licences for the benefit of a client, since that will in itself amount to a strict
obligation which the architect has to comply with in order not to be in breach.
Is the licence effective if the fees have not been paid?
52
Generally, an implied licence to use copyright work will not become effective until
payment of the fee for it has been made. The fee is the consideration paid for the right
to use the copyright works. The architect may exercise his lien over any copyright works
he has produced until he has received payment for them. The problem is that if the
drawings have been handed over during the course of the works, a lien will not assist
(because the drawings have been handed over). Non-payment can still be relied upon
to establish that no licence to use the copyright works has become effective.
53
If fees are part paid, the client may argue that he has paid the fees agreed for the use of
the copyright work, albeit not other amounts due. Well drafted licence provisions make
express provision to avoid this type of argument. For instance, clause A6.2 of the RIBA
Standard Conditions of Appointment (CA-S-07-A) provides in part (proviso A6.2.2):
“Provided that:…if at any time the Client is in default of payment of any fees or other
amounts properly due, the Architect may suspend further use of the licence on giving 7
days notice of the intention of doing so. Use of the licence may be resumed on receipt
of such outstanding amounts”. (There may then be an argument as to whether the
amounts claimed by the architect are ‘properly due’ – fees can only become due in
accordance with the terms agreed between the parties, or as may be implied by law.)
Similarly, at Clause 6.2.4, the ACA Standard Form of Agreement (ACA SFA/08)
provides that “In the event of the client being in default of payment of any Fees, or other
amounts due, the Architect may suspend further use of the Licence on giving 7 days
notice of the intention of doing so. Use of the Licence may be resumed upon receipt of
its outstanding amounts”.
54
In reality, part payment may not prevent use of the drawings, subject to a right to claim
damages for infringement. For example, in Hunter v (1) Fitzroy Robinson & Partners (2)
Garden House Hotel (Cambridge) Limited (3) Redbush Securities Ltd [1978] 10 BLR 84
[see paragraph 46(c)], the architect was owed £46,000 in fees. Nevertheless, the court
was unwilling to restrain the use of his drawings on the development, even though the
defendants had admitted some copying. The architect applied for an injunction. The test
as to whether an injunction should be granted is one as to the balance of convenience
after weighing the competing interests. On the balance of convenience, the court held
that damages would adequately compensate the architect if he established an
infringement of copyright after a full trial, whereas the new owners would suffer losses
of £12,500 weekly if the use of the drawings was restrained. Therefore the injunction
was not granted. The approach taken in an Australian case of NG v Clyde Securities
Limited (1976) 1NSWLR 443 which was approved in Deakin & Anor (trading as Faith
Image Source) v Card Rax Limited & Others (2011) EWPCC 3.
In the NG case the question arose as to whether an architect could revoke the licence
to use his design drawings when his client was unable to pay his fees as he rendered
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
19
them, and the building under construction was taken over by a third party who wanted
to use the architect’s work in order to complete the building. The Judge in the case
Wootten J said
“But is that licence a consent given once and for all in return for a promise of payment,
or is it given conditionally upon actual payment being made in terms of the contract so
that it may be revoked if payment is not forthcoming or, as in this case, forthcoming only
in part? There is nothing in the contract in this case that casts any light upon the
problem…In my view it is not reasonable to imply a term that the licence once granted
and acted upon may be revoked in the event of subsequently non-payment. This is
particularly so when as here, a licence for the immediate use of the copyright is granted
in return for promises of payments at the date of future events contingent on its use.
The withdrawal of the licence would not merely affect the future activities of the
licensee, but by preventing the completion of a building would render valueless what
might be an enormous past investment in the building. Looking at the matter in terms of
business efficacy, I find it unthinkable that an owner would agree to a licence revocable
if a possibly temporary difficulty prevented him from paying his architect at the agreed
time…It is more reasonable to regard him as giving the licence in return for a debt
recoverable, if unpaid, by ordinary litigious processes. He is essentially selling
something. A further difficulty in implying a right of revocation in the present case is
how the right could be fairly framed in its application when the plaintiffs have already
received a substantial part of the payment which is undifferentiated consideration for
their labours and the licence.”
These cases highlight the importance of ensuring that the consultant’s appointment
contains express provision entitling the consultant to suspend or revoke the licence at
any time that monies are due have not been paid.
55
Furthermore, if a developer becomes insolvent during a project, owing his architect
fees, as a matter of public policy the court may be unwilling to prevent the use of the
copyright works for the purpose for which they were prepared, if that would stultify the
liquidator’s attempts to sell the assets.
56
Where the services have not been completed and fees are overdue, there may be a
right to suspend the performance of the services until all monies due have been paid.
This will depend upon whether the architect’s contract is one to which the Housing
Grants, Construction and Regeneration Act 1996 (‘HGCRA’) applies. Prior to the
coming into force of the HGCRA on 1 May 1998, it was generally accepted that there
was no right to suspend the performance of the works or the services for non-payment,
unless an express term had been agreed. The innocent party could treat non-payment
as a repudiatory breach of contract, if the breach was sufficiently serious so as to
amount to a repudiation of the contract. (It will often be difficult to demonstrate that such
a breach is sufficiently serious.) That remains the law which applies to building
contracts and professional appointments to which the HGCRA does not apply.
57
However, where the appointment satisfies the requirements for a ‘construction contract’
for the purposes of the HGCRA, section 112(1) HGCRA provides a right to suspend.
Where a sum due under a construction contract is not paid in full by the final date for
payment and no effective notice to withhold payment has been given, the person to
whom the sum is due has the right (without prejudice to any other right or remedy) to
suspend performance of his obligations under the contract to the party by whom
payment ought to have been made. The right cannot be exercised without first giving to
the party in default at least 7 days' notice of intention to suspend performance, stating
the grounds on which it is intended to suspend performance. The right to suspend
performance ceases when the party in default makes payment in full of the amount due.
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
20
Any period during which performance is suspended in pursuance of the right conferred
by section 112(1) is to be disregarded in computing for the purposes of any contractual
time limit the time taken by the party exercising the right, or by a third party, to complete
any work directly or indirectly affected by the exercise of the right. The right can be
exercised as soon as a sum due under a construction contract is not paid in full by the
final date for payment and no effective notice to withhold payment has been given. If
services have not been suspended, suspending them after obtaining a favourable
adjudication decision may increase the pressure on the losing party to comply with the
decision.
58
Therefore, while a suspension of services will not affect the efficacy of a licence to use
copyright works one way or the other, it is a right which may be used with an assertion
of the failure of consideration for the licence, in appropriate cases, to attempt to obtain
payment of fees or other monies which are outstanding.
Remedies for infringement of economic rights
59
There are criminal and civil remedies. This paper concentrates on the civil remedies.
60
Infringement is actionable by the copyright owner, exclusive licensee or non-exclusive
licensee (but see paragraphs 45 and 48(d)).
61
The relief available is any relief which is available to any claimant for infringement of a
property right. This includes damages or an account of profits and the right to seek an
injunction to restrain and deal with infringements.
62
The right to damages depends upon whether the infringement was innocent or
deliberate. A claimant is not entitled to damages (without prejudice to any other remedy
e.g. an injunction) if the defendant can prove that, at the time of the infringement, he did
not know, and had no reason to believe, that copyright subsisted in the work the subject
of the action [CPDA section 97].
63
Damages are in the discretion of the judge i.e. he is not limited to awarding a sum
equivalent to a pecuniary loss which is proved. However, the usual starting point for
measuring damages in a case involving copying of copyright architectural designs is the
sum that might reasonably have been charged as a licence fee assuming a willing
licensor and a willing licensee.
64
In an extreme case, the court may, after having regard to all the circumstances and in
particular to the flagrancy of the infringement and any benefit which the defendant has
obtained by reason of the infringement, award additional damages as the justice of the
case requires.
65
As to seeking an injunction, in principle the court has the power to restrain the
completion of a building being constructed to an infringing design. It would be very
unlikely to do so, unless damages would not an adequate remedy.
66
As to an account of profits, both damages and an account of profits cannot be sought;
an election has to be made if an account of profits is to be sought. In Redrow Homes
Limited & Ors v Bett Brothers Plc & Ors House of Lords, 22 January 1998, Redrow
Homes sought an account of profits from Bett Bros, together with additional damages
under section 97(2) CPDA. The House of Lords held that an award of additional
damages was intended to be an enhancement of ordinary damages, but could not be
claimed alongside an account of profits.
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
21
67
The court may order delivery up of infringing copies of a copyright work and the
copyright owner may apply to seize infringing copies.
68
An exclusive licensee has, except against the owner, the same rights and remedies
after the grant of the licence, as if the licence had been an assignment. A defendant
may raise any defence which would have been available had the action been bought by
the copyright owner [section 101 CPDA].
69
A non-exclusive licensee may bring an action for infringement (a) if the infringing act
was directly connected to a prior licensed act of the licensee and (b) the licence is in
writing and signed by or on behalf of the copyright owner and expressly grants the nonexclusive licensee a right of action under section 101A CPDA. The non-exclusive
licensee has the same rights as the owner in an action brought under the section. A
defendant may raise any defence which would have been available had the action been
bought by the copyright owner [section 101A CPDA]. Agreeing to this type of provision
is unwise since it will give the client the right to bring an action with the same rights and
remedies as the architect as copyright owner. The owner would not have control of the
litigation. If the provision is coupled with a provision that the architect warrants that they
are the sole owner of the copyright and the architect has indemnified the client against
any loss which it suffers as a result of a breach of that warranty, there is a risk that the
client may lose the action and claim its costs back against the architect, when the
architect has not been involved in the action and able to protect its position.
70
Examples of the approaches taken to granting relief in a construction context are as
follows:
(a)
In Miekle v Maufe [1941] 3 All ER 1244, the court held that the implied licence
to use the copyright drawings did not extend to reproducing the designs for the
purposes of an extension. Nevertheless, only a comparatively small sum was
awarded as damages on the basis that the only market for the original design
was a repetition of it in an extension of the original building. Furthermore, the
owner of the copyright was not personally responsible for the design.
Furthermore, the defendant had written to the claimant before commencing the
work, informing him of his intention to do the work and the claimant replied by
wishing him well. (The court held that wishing the defendant well did not amount
to a licence, but a free hand as far as the artistic necessities of the building
required him to follow the original design.)
(b)
In Blair v Osborne & Tomkins [1971] 1 All ER 468, while the primary claim of
copyright infringement failed, Lord Denning held that when the second firm of
architects put their detailed plans to the local authority, they put their name on it
as if it was their own work, when in fact part of it was the work of the original
architect, Mr Blair. The implied licence did not entitle them to put forward part of
his work as their own. To that extent it was not licensed, however, the judge
held that no damage was caused by that misdescription. The evidence of the
local authority was that the name on the document did not influence them. For
the “technical infringement” the trial judge had awarded nominal damages of 40
shillings and Lord Denning thought that was quite correct.
(c)
In Hunter v (1) Fitzroy Robinson & Partners (2) Garden House Hotel
(Cambridge) Limited (3) Redbush Securities Ltd [1978] 10 BLR 84, Oliver J had
to decide whether to grant an injunction restraining the use of the copyright
drawings. He held that the balance of convenience was in favour of the
defendants, since damages would adequately compensate the original architect
if he established an infringement of copyright after a full trial, whereas the new
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
22
owners would suffer losses of £12,500 weekly (in 1977) if the work was
restrained. Therefore the injunction was not granted.
(d)
In Cala Homes (South) Ltd & Ors v Alfred McAlpine Homes East Ltd [1995]
EWHC 7 (Ch) the judge held that McAlpine had infringed Cala Homes’
copyright. The court concluded that the breach was a flagrant one and awarded
additional damages under section 97(2) CDPA. The court pointed out that
additional damages were not intended to be compensatory but to allow the
court to impose a financial penalty to register the level of its disapproval of the
behaviour of the infringer. Damages were reserved to a further hearing, at the
claimant’s request. Details are not available of the outcome.
(e)
In Jones v Mayor & Burgesses of the London Borough of Tower Hamlets &
Anor [2001] RPC 23, the architect was only successful in proving copying of the
design for a wrap around bath partition. Damages equivalent to a reasonable
fee for the drawing of that feature were awarded (in the order of £600 only).
Remedies for infringement of moral rights
71
An infringement of a moral right is actionable as a breach of statutory duty by the
person entitled to the right [section 103(1) CPDA]. The architect may be entitled to an
injunction to restrain the breach or to damages. Damages are likely to be assessed on
the basis of the damage to the goodwill and reputation enjoyed by the author. An
injunction or damages will not be awarded where a moral right pursuant to section 77
CPDA which must be asserted, has not been asserted.
72
In proceedings where an author’s work has been subjected to derogatory treatment, the
court may grant an injunction prohibiting the doing of any act unless a disclaimer is
made, dissociating the author from the treatment of the work.
Practical steps which may minimise disputes
73
Steps which can be taken to protect an architect’s copyright include:
(a)
On completion of a copyright work, put your name on it and date it. Use the ©
symbol to maximise the protection. Have a system in place to ensure that the
process or creation, and date when the work was created, can be proven to the
court, if challenged.
(b)
While an employer becomes the owner of the copyright in a copyright work
produced by an employee in the course of the employment, to avoid disputes as
to whether the person who created the work is an ‘employee’ or some other
form of worker who is not covered by the legal concept of an ‘employee’, the
employer should ensure that there is a written contract with the worker before
the work commences, which includes an assignment of the copyright and any
other intellectual property rights which the worker may have in any works
created by the worker and which waives any moral rights the work may have.
(c)
Ensure that appointments contain an appropriate provision which confirms the
architect’s ownership of the copyright in any works which are to be created and
which grants an appropriate licence (but no more) to the client to use the
copyright works for a particular project, having regard to the purpose for which
they have been created. Expressly confirm that the architect is not liable for the
use of the copyright works for any purpose other than the purpose for which
they were created. Limit the licence to copyright works such as design plans.
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
23
Do not extend it to documents which the client would not normally own the
physical property in when the commission is completed (e.g. the category (c)
documents referred to in paragraph 42)).
(d)
Licences should always be subject to payment of all amounts properly due to
the architect, with an express provision permitting the architect to suspend or
revoke the licence in the event of a failure to pay in full.
(e)
Ensure that there is an appropriate licence to use any sub-consultants’ designs
which are used (or other proprietary designs) for the purposes of the client’s
requirements for the project).
(f)
Procure indemnities from sub-consultants and external designers against
infringement of intellectual property rights which reliance upon a licence to use
their protected works and/or designs may give rise to.
(g)
Do not copy the copyright works of others!
Overview of protection of designs
74
Confusingly, apart from copyright, there are four regimes governing designs: (a) UK
registered design (b) UK unregistered design (referred to in this paper as ‘design right’)
(c) EU registered design and (d) EU unregistered design. Except for UK unregistered
design, the rights are fairly similar.
75
In summary:
Design right (i.e. UK unregistered design)
(a)
Section 213 CPDA establishes an unregistered UK design right in an original
design, which is recorded in some way i.e. the design right arises automatically
when the design is created. The right is exceptional, as unregistered designs
are not protected by a special right in most other countries (except for New
Zealand).
(b)
Like copyright, the right is created automatically and is not a monopoly right but
a right to prevent copying.
(c)
The right lasts until 10 years after first marketing products made to the design,
subject to an overall limit of 15 years from creation of the design. The right is
exclusive for 5 years after first marketing. Then the right is subject to licences of
right for the remaining 5 years i.e. anyone will be entitled to make and sell
products copying the design, but the owner of the rights will not be obliged to
provide the design drawings or know-how to the copier.
(d)
Where the design was commissioned for money’s worth, the commissioner is
the first owner of any design in it. Where the design was not commissioned for
money’s worth the designer is the first owner. Where the design was created in
the course of employment (and not commissioned), the employer is the first
owner. However, if the design right accrues by virtue of first marketing of the
articles made to the design (and not by reference to the designer, commissioner
or employer), then the person by whom the articles is marketed is the first
owner.
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
24
(e)
'Design' means the design of any aspect of the shape or configuration (whether
internal or external) of the whole of part of an ‘article’. Therefore a two
dimensional design (e.g. a wallpaper design) will not qualify. The right applies to
designs generally, however, it was first created with the intention of protecting
spare parts for motor vehicles (which had ceased to be protected by copyright).
(f)
Design right does not subsist in:
(i)
a method or principle of construction;
(ii)
the features of shape or configuration of an article which –
(iii)
(A)
enable the article to be connected to, or placed in, around or
against, another article so that either article may perform its
function (i.e. so that things like competing designs for spare
parts are not kept out of the market), or
(B)
are dependent upon the appearance of another article of which
the article is intended by the designer to form an integral part,
or
surface decoration.
(g)
The design must be original. A design is not 'original' if it is commonplace in the
design field in question at the time of its creation. It is well settled that ‘original’
has the same meaning that it has in relation to copyright i.e the design must be
the creation of the designer, not copied from another. It need not be absolutely
‘new’.
(h)
There is a primary infringement by making an article to the design (i.e.
substantial copying), or by making a design document recording the design for
the purpose of enabling articles to be made.
(i)
Remedies are an injunction (except in the last 5 years), damages (including
additional damages) or an account of profits. If there is an undertaking given to
take a licence of right, damages are capped at the double royalty rate
determined by the copyright tribunal.
(j)
Caution has to be exercised when threatening infringement proceedings.
Pursuant to section 253 CPDA, where unjustifiable threats of infringement are
made, the person aggrieved by them may apply to the court for a declaration
that the threats are unjustified, seek an injunction that they be discontinued and
damages in respect of any loss which has been sustained as a result of the
threats.
(k)
Protection of the right may be enhanced by marking the protected work “UK
Design Right 20...” and stating the author’s full name.
UK registered design
(l)
The scope of the law is restricted to within the UK but is harmonised with EU
law under the Designs Directive (Directive 98/71/EC), by amendment of the
Registered Designs Act 1949.
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
25
(m)
UK registered design protects the design of a product i.e. the appearance of
the whole or any part of a product resulting from features (in particular) lines,
contours, colours, shape, texture and/or materials of a product and/or its
ornamentation. A product means any industrial or handcraft item (including
parts intended to be assembled into a more complex product), packaging, getup, graphic symbols and typographic typefaces. Therefore it is appearance, not
function, which is protected.
(n)
Registration takes place at the UK Intellectual Property Office.
(o)
To be eligible for registration, the design must be (a) new i.e. not made
available to the public ) (b) of individual character (i.e. “overall impression it
produces on the informed user differs from the overall impression produced on
such a user”) by previous designs. The design of a complex product is only
registrable if, in normal use, it remains visible and the appearance of the visible
part is new and of individual character.
(p)
Designs where the appearance is solely dictated by technical function and
interconnections are not protected.
(q)
In assessing novelty and individual character, any disclosure by the owner
within the 12 months prior to the priority date is ignored.
(r)
The rights obtained on registration can be renewed for up to 25 years, subject
to the registration being renewed every five years.
(s)
Where the design was commissioned for money’s worth, the commissioner is
the first owner of any design in it (unlike EC registered design). Where the
design was not commissioned for money’s worth the designer is the first owner.
Where the design was created in the course of employment, the employer is
the first owner.
(t)
Infringement occurs by use of the design in any product and making, offering,
putting on the market or importing or exporting any product to the design. A
design infringes if it does not produce a different overall impression on the
informed user.
(u)
Remedies are an injunction, damages or an account of profits.
(v)
The threats provisions apply to registered, as well as unregistered, design right
[see paragraph 71(j)].
EU Community registered design
(w)
The Community Design Regulation (Council Regulation (EC) No 6/2002 of 12
December 2001 on Community designs) came into effect on 6 March 2002.
(x)
Registration is obtained through an application to the OHIM (Office for the
Harmonisation in the Internal Market) in Alicante, Spain. Subject to payment of
renewal fees, registration can last up to 25 years.
(y)
As with UK registered design, the right protects the design of a product i.e. the
appearance of the whole or any part of a product resulting from features (in
particular) lines, contours, colours, shape, texture and/or materials of the
product and/or its ornamentation.
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
26
(z)
OHIM’s Examination Practice Notes states that building plans are not
considered to be designs for the purposes of registration, however, in principle,
there is no reason why a qualifying product constructed for, or as part of, a
building could not be registered.
(aa)
Component parts are only protected if they remain visible once the component
has been incorporated as part of the whole. The features remaining visible are
those which must satisfy the requirements for registration.
(bb)
The protection of registration is not limited to the product in respect of which the
design was developed.
(cc)
To be eligible for registration, the design must be (a) new (b) of individual
character. Disclosures made during the year prior to registration are not taken
into account when determining these matters.
(dd)
The right to protection does not subsist in features of the appearance of a
product which are dictated solely by technical function and interconnections.
(ee)
Unlike UK registered design, the first owner is the designer, even when
commissioned, unless the designer is an employee, in which case ownership
vests in the employer.
(ff)
The right is infringed by use of the design in any product and making, offering,
putting on the market or importing or exporting any product to the design. A
design infringes if it does not produce a different overall impression on the
informed user.
(gg)
Remedies are an injunction, damages or an account of profits.
(hh)
Pursuant to the Community Design Regulations 2005 SI 2005/2339, the
unjustified threats provisions which apply to the UK apply to EU registered
designs as well [see paragraph 71(j)] .
Community unregistered design
(ii)
The substantive requirements for Community registered design apply to
Community unregistered design. Novelty is judged on the date when the design
is first made available to the public.
(jj)
Protection applies automatically for 3 years from the date of the first sale or
marketing of the design in the EU.
(kk)
The first owner is the designer, even when commissioned, unless the designer
is an employee, in which case ownership vests in the employer. Where there
are joint owners from different EU countries, the default law is the law of Spain.
(ll)
The right is infringed by use of the design in any product and making, offering,
putting on the market or importing or exporting any product to the design. A
design infringes if it does not produce a different overall impression on the
informed user. However, the owner must prove copying from his design in
order to establish liability.
(mm)
Remedies are an injunction, damages or an account of profits.
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
27
Relationship between copyright and design right and UK
registered design
76
Pursuant to section 51(1) CPDA, making or copying an article to a design may infringe
copyright if the design is for an artistic work. Under section 236 CPDA, if making the
copy infringes copyright, then it will not also be an infringement of the design right i.e. in
those circumstances the copyright overrides the design right. Where the work is not an
artistic work, it is intended that the UK unregistered resign right will provide a remedy,
although the provisions of copyright and unregistered design right law are not seamless.
77
However, pursuant to section 52 CPDA, if an artistic work has been exploited with the
licence of the copyright owner by making articles by an industrial process (i.e. copies of
the artistic work) and marketing those articles in the UK or elsewhere, then the work
may be copied by making articles of any description, without infringing copyright in the
work, after only 25 years from the end of the calendar year in which the articles were
first marketed.
78
In relation to UK registered design, it is possible to register the design for a product in
which copyright also subsists. Absent express agreement, if the design was
commissioned for money’s worth, then the commissioner is the first owner of the
registrable design right. Express agreement ought to be reached at the outset (i.e. when
the commission is agreed) as to who will own the rights and who may exploit them.
Rights in respect of confidential information
79
Confidential information (e.g. innovations to a product or process that are not
protectable by other means such as a patent or commercial details such as customer
lists) may be capable of protection. Unlike copyright, it is the information which is
protected and not the work in which it is expressed.
80
A claimant must prove that (a) the information had the requisite degree of confidence
attached to it (b) the information was given in circumstances in which the defendant
ought to have known there was a duty of confidence & (c) there must have been an
unauthorised use of the information: per Megarry J in Coco v A.N. Clark (Engineers) Ltd
[1968] FSR 415.
81
In employment situations, the courts will usually distinguish between trade secrets and
information confidential to the employer (which will be protectable) and know-how which
forms part of the employee’s common stock of knowledge (which will generally not be
protectable, unless there is express agreement).
82
Article 8 of the Human Rights Act 1998 extends the scope for an action for breach of
confidence: everyone has the right to respect of his private & family life, his home and
his correspondence.
83
Article 10 of the Human Rights Act 1998 enshrines the right to freedom of expression
and therefore may be pleaded to restrict the remedies available for a breach of
confidence.
84
The action is brought by the owner of the confidential information. Infringement occurs
by unauthorised use of the confidential information.
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
28
85
The available remedies include seeking an injunction to restrain the use of the
information. An account of profits may also be sought or damages, delivery up or
destruction of the property which contains the confidential information.
86
In Inline Logistics v UCI Logistics [2001] EWCA Civ 1613, Inline provided design and
build construction services for warehousing and handling systems for goods. In 1995
Kenneth Lockren was appointed warehouse development manager of UCI. He had
previously worked with Graham Smith of Inline. UCI had used the services of Inline in
other warehouse development projects so that Mr Lockren was aware of Mr Smith's
particular expertise which UCI lacked. UCI lacked among their staff a skilled operator of
CAD equipment for the production of drawings and designs. Early in 1997 UCI became
interested in developing their warehouse at Castleford as a dedicated warehouse for a
particular customer. This was part of a move by UCI into a new sector of the market,
which involved adapting warehouses to the requirements of particular customers.
Tenders were sought by Kimberley-Clark Ltd for warehousing facilities.
87
In May 1997 Mr Lockren contacted Mr Smith to assist with UCI’s tender. They had had
discussions about it. Earlier in the year Inline had made measurements of the
dimensions of the Castleford warehouse. Mr Smith submitted various drawings to Mr
Lockren, the essence of which were contained in drawing no. 113. UCI concluded that
Inline's proposals were inadequate to meet KC's requirements. They decided that much
further work needed to be done before the tender could be submitted.
88
Arrangements were made with Dexion, a major supplier of warehouse racking for a
CAD draftsman to be made available for use by UCI. The UCI team continued to carry
out work, but without reference to Inline's drawings. These were not available to them
because Mr Lockren had taken them home with him. Mr Yates collected the drawings
from Mr Lockren after an unsuccessful prior attempt to obtain copies of them from
Inline. UCI took material prepared by the UCI team to Dexion, but not any of Inline's
drawings. Revisions were made to the warehouse design which resulted in drawing no.
118. This drawing had a number of similarities to the Inline drawing no. 113, but there
were also a number of substantial differences. The UCI tender was submitted to
Kimberley-Clark in time; it was 90 pages long (including drawing no. 118). There was a
considerable amount of material in addition to the design. UCI was successful in
winning the tender and ultimately engaged another firm to carry out a fresh survey,
which resulted in further changes to the design. Inline was not paid for the work done by
Mr Smith or the Inline CAD operator. Inline did not share in the profits won by the
acceptance of the tender by Kimberley-Clark. Inline did not claim for the price of the
work done, but contended that drawing 113 contained relevant confidential information
which it alleged had been used by UCI without their licence.
89
The trial judge held that the only confidentiality which existed was in a particular
combination of six features or concepts relating to the design of a warehouse, as
contained in drawing no. 113. The judge rejected Inline's wider claim that they were
entitled to protect as confidential information 11 individual items consisting of design
features or concepts in connection with the design of the warehouse.
90
On appeal, the Court of Appeal held that, as a matter of law, a particular combination of
individual design features - themselves not confidential because they are common
knowledge, obvious or commonplace - may be protected as confidential information.
Although this was a borderline case on the facts, the trial judge was entitled to conclude
that Inline was entitled to a very limited extent of confidentiality in the particular form in
which the items 1 to 6 were combined in drawing no. 113.
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
29
91
As to mis-use, the trial judge was entitled to conclude that the particular combination of
items 1 to 6 in drawing no. 113 was not used in drawing 118. Drawing 113 did not
appear on drawing 118.
92
As to consent to use the information, based on what use was required in order to give
business efficacy to the arrangements between the parties, the Court of Appeal
concluded the drawings must have been made solely for the purposes of UCI to use in
the tender. If the tender was accepted the drawings made by Inline could be used by
UCI and Kimberley-Clark in doing the necessary work, either directly by them or by
other persons nominated by them, in connection with the warehouse. That person did
not have to be Inline, if there was no joint venture agreement or other contract requiring
the contractual involvement of Inline post tender. It is unlikely to have been the common
intention of Inline and UCI that Inline could unilaterally object at any time before the
submission of the tender and prevent the tender from proceeding by reason of the fact
that another person was involved without their agreement in the preparation of the
tender. There was no express or implied agreement that Inline would be the only person
involved by UCI in the preparation of the tender.
93
A claim is subject to any limitation defences which may be available (i.e. commencing
proceedings more than 6 years from the date of breach).
94
It is usual and prudent for parties to agree the terms on which information will be kept
confidential e.g. “The Consultant shall not, during his engagement hereunder (save in
the proper course of his duties) or at any time after its expiry or termination for any
reason, disclose to any person or otherwise to make use of any confidential information
(including, but without limitation, information relating to methods and techniques of
construction for the Project proposed by the Client and the contents of any documents,
including the brief and any legal agreements, prepared by or on behalf of the Client)
which he has or may in the course of his engagement hereunder become possessed
relating to the Client, the Project or otherwise, nor shall he disclose to any person
whatsoever anything contained in this Agreement, without the prior written authority of
the Client. The restriction shall continue to apply, without limitation in point of time,
unless and until such information comes properly into the public domain through no fault
of the Consultant”. Clients should (but often resist) giving a reciprocal undertaking in
respect of the consultant’s confidential information which comes within their knowledge
as a result of the appointment or project.
95
A well drafted confidentiality provision will potentially protect a much broader range of
confidential or commercially sensitive information than the law may protect otherwise.
Restrictive covenants may also be used (subject to enforceability) to prevent an
employee from doing various activities during and post employment which make use of
commercially sensitive information or which compete with the employer.
96
If a former partner, director or employee seeks to suggest a connection between his
current business and your practice, in order to trade off your name or sells goods or
services on that basis, an action for ‘passing off’ may be available.
Database rights
97
A database right came into force on 1 January 1998 when the UK implemented the
provisions of the 1996 EC Council Directive on the legal protection of databases by
enacting the Copyright and Rights In Databases Regulations 1997.
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98
The regulations define a “database” as “a collection of independent works, data or other
materials which are arranged in a systematic way and are individually accessible by
electronic or other means”. This definition covers such things as client mailing lists but
potentially extend to other databases created by architects.
99
A database will qualify for protection if there has been a ‘substantial investment’ in
obtaining, verifying or presenting the contents of the database. This includes ‘any
investment, whether of financial, human or technical resources’. It has been held that
investment refers to the resources used to seek out existing independent materials and
collect them in a database, not the costs of actually creating the database.
Substantiality is judged in terms of quantity or quality or a combination of both.
100
The right is created automatically as soon as the database exists in a recorded form.
The right lasts for 15 years from the end of the year in which the database was
completed in a recorded form or, if published during that period, 15 years from the end
of the year when it was first made available to the public. If the database is substantially
altered, the 15 years recommences. This includes a substantial new investment as a
result of successive additions, deletions or alterations.
101
The first owner of the database right is the maker of a database i.e. the person who
“takes the initiative in obtaining, verifying or presenting the contents of a database and
assumes the risk of investing in that obtaining, verification or presentation”. Therefore a
commissioner will usually be the first owner, where the database is commissioned.
Where the database is made by an employee, the employer will be the first owner.
102
The database right is infringed if a person extracts or utilises a substantial part of the
contents of a protected database, without the consent of the owner. There are
exceptions and a number of permitted acts (generally for non-commercial purposes).
The remedies include damages, injunctive relief and/or an account of profits.
103
Databases (including databases which do not qualify for protection under the
regulations) may qualify for copyright protection as literary works, providing the section
and/or arrangement of the contents of the database are original (i.e. by reason of the
selection or arrangement of the contents of the database the database constitutes the
author’s “own intellectual creation”).
Trade marks
104
Trade marks protect the property in marks or signs used to differentiate goods and
services from exploitation by competitors.
105
They may be registered or unregistered. There are 8 types of mark which are capable
of registration including words (e.g. brand names), designs (e.g. symbols or stylised
word designs), letters (e.g. abbreviations of brand names which may be more
distinctive), numerals (but only if distinctive of the goods or services), colours and colour
combinations (i.e. not defined by shape). Registration is available in the UK, nationally
in individual countries, across the EU under the Community Trade Mark system or
internationally under the Madrid Protocol. The comments below apply generally to UK
trade marks.
106
Any legal or natural person can apply to register a mark who has a bona fide intention
to use a mark for the goods or services specified in the application. The mark need not
have been used before. In Ball v The Eden Project Ltd & Ors [2002] FSR 42 Mr Ball, a
director of The Eden Project Limited, registered the name ‘The Eden Project’ as a
Robert Stevenson – Architects’ intellectual property rights in their designs : an introduction
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trademark in his own name. The court held that the trademark was fundamental to the
company operating the project and found that he had committed a breach of his
fiduciary duty as a director.
107
The right is a monopoly right to use the mark exclusively.
108
Infringement of a registered mark occurs by use of the registered trademark or a mark
deceptively similar to indicate the source of good or services, however, there may be a
defence if the use was for comparative advertising in accordance with honest practices
in commercial matters. Other defences are available.
109
If the mark is unregistered, infringement occurs by passing off goods or services as the
trade mark owner’s goods or services or misappropriating the claimant’s mark.
110
The duration of the right is potentially indefinite, providing the renewal fees are paid
every 10 years.
111
Trademarks are probably more relevant to clients than to architects. For instance, most
major developers now register trade marks for the names of their developments and
may protect the name of the building, associated logos and the outline or silhouette of
the building. It may be possible to obtain protection from unregistered trade marks (by
virtue of passing off) if the mark is particularly associated with the building owner.
Patents
112
UK registered patents protect new or novel inventions and processes capable of
industrial application.
113
The first owner is the inventor or someone who can establish a better right than the
inventor.
114
An employee will usually own the patent unless the invention was made during the
course of normal duties for an employer. Compensation may be available to an
employee if the invention is of outstanding benefit to the employer and it would be just
to award compensation.
115
The right is a monopoly right to commercially exploit the invention or process through
manufacturing or licensing. The right is a strong right since infringement occurs as long
as the infringing invention or process falls into one of the claims in the patent’s
specification. Patent protects against infringing use of the broader functional aspects of
an invention or process arising through copying or independent development.
116
Infringement occurs through someone exploiting the invention or patented process
without a right to do so.
117
The owner can claim damages for infringement from the date of publication of the
application, although he must wait until the patent is granted to sue.
118
A patent endures for 20 years from the date of filing. Annual renewal fees must be paid
starting of the 4th anniversary of the patent.
Further assistance
For further assistance, please contact the RIBA legal advice helpline on +44 207 638 2811.
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The information contained in this article is given for general information only and does not
constitute legal advice on any specific matter.
Robert Stevenson
Partner
Berrymans Lace Mawer LLP
Direct Line: 020 7865 3335
Email: robert.stevenson@blm-law.com
© Berrymans Lace Mawer, 2011
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