A design-bid-build contractor has been invited to bid on the design of a new project and hire and pays an outside architect to help with the design. Who owns the design that is included in the contractor’s bid?
The Copyright Act of 1976 protects original works of authorship fixed in a tangible medium. Original works are independently created by the creator and possess some minimal degree of creativity. All creators of works are called “authors” under the Copyright Act. Abstract ideas, concepts and factual information are not protected under the Copyright Act. When the work is completed or fixed in a tangible medium, it is automatically protected, even if the © is not used. If the work is registered in the United States Copyright Office, the author obtains further protection, including the right to sue for infringement.
Several categories of copyrightable works are considered in the Copyright Act, including literary works and musical works as well as pictorial, graphic and sculptural works. Architectural drawings, such as engineering drawings, design plans and blueprints, have been protected under the category of “pictorial, graphic and sculptural works.” Buildings and structures were not initially protected under the Copyright Act.
The Architectural Works Copyright Protection Act of 1990 provides additional protection for copyrightable works that qualify as architectural works. Architectural works are defined as “the design of a building, architectural plans or drawings.” Architectural works include “the overall form as well as the arrangement and composition of spaces and elements in the design but does not include standard features.” The architectural work does not include individual standard features, such as doors and windows, or functional elements of the design. However, if the doors or windows have some unique feature, they may possibly be protected. Architectural works include any permanent habitable structures such as houses, office buildings, churches, museums and gazebos. Bridges, dams, tents, mobile homes, dog houses, recreational vehicles and boats are not subject to protection under this Act.
A copyrighted work is owned by the author of the design at the time it is completed in hard copy or digital form. Absent a written agreement to the contrary, the owner of the copyright is the engineer, architect or designer who produced the design. If this individual is employed and the design is created within the scope of their employment — such as an employee draftsman preparing the drawing for the architect employer — then the employer owns the rights to the copyright in the design. If the engineer, architect or designer is an independent contractor — absent a written agreement to the contrary — the rights stay with the engineer, architect or designer, even if the developer paid for the design.
When two or more individuals contribute in a material way to the development of a copyrightable work, with the intent that their contributions are merged, both individuals are owners in equal parts of the joint work. That means each has an undivided interest in the entire work. Joint owners are considered tenants-in-common. Each joint owner may only transfer his own interest in the copyright. That is, each joint owner can use or license the whole work with only a duty to account for profits to the other joint owner. The joint owner cannot, however, transfer all interest in the work by assigning or granting an exclusive license without the written consent of the other joint owners. Design concepts, general ideas or factual information given by the contractor or approvals by the contractor are not enough of a contribution to vest ownership to the contractor in the copyrightable work.
The owner of a copyrighted work holds, among other exclusive rights, the rights to reproduce, modify, prepare derivative works and distribute copies of the work. There are some limitations on rights of the owner of the copyright of an architectural work. For example, the building owner is allowed to make additions, alterations or destroy the building without the copyright owner’s consent. Also, the copyright owner cannot prevent the making, displaying or distributing of pictures or other pictorial representations of an architectural work which is visible from a public place.
If someone other than the copyright owner does any of the enumerated exclusive rights without the permission of the copyright owner, infringement may be found, and the owner could be entitled to actual damages or statutory damages as well as possibly attorney’s fees. Infringement is possible if there was access to the to the work and substantial similarity between the copyrighted work and the alleged infringing work.
It is important to understand the difference between having a copy of a work or owning the copyright in the work. With respect to blueprints, even though the contractor may have a copy of the blueprints, he or she may not own the copyright. the contractor legally obtained the copy, he or she can sell the blueprints or build a single structure. The contractor cannot, however, make copies of the plans, build multiple structures based on the blueprints or even use the blueprints as a basis of a new design.
A contractor retaining an independent architect who wants to make sure that he or she own the rights to the drawing or architectural work must obtain a signed writing that transfers all the rights the architect has, as the copyright holder, in the drawing or architectural work. Without such written transfer, the contractor may only have an implied license to use the drawings.
Original Article: https://www.constructionexec.com/article/who-owns-the-design
