“Copyright Law in Construction During the Electronic Era” by Richard B. Maltby

At a recent Construction Specifications Institute meeting, I had the occasion to discuss with its Southwest Missouri Chapter members, some of the legal aspects of conducting business through electronic media and converting to electronic record keeping, i.e., “going paperless.” While we covered a number of topics, including the validity of electronic signatures and documents, making a contract that protects a firm in an electronic transaction, and best practices for electronic project documentation and records retention, another area requiring attention in the electronic era is architectural and engineering design copyright law.
Two basic types of design copyrights are recognized by the Copyright Act. A design professional can copyright the physical building, which includes the shape of any two or three dimensional works. The architect may also protect the actual plans and drawings that are used to construct the building. It is this latter category that has been the subject of controversy as it pertains to electronic information. Plans, drawings, and specifications are now routinely maintained electronically as CADD drawings, and 3D modeling, or building information modeling (BIM), is becoming more prevalent in the electronic age.
Copyright infringement generally occurs when a person had access to copyrighted work, which is work that is considered sufficiently original, and the allegedly infringing work is substantially similar to the copyrighted work. There are three common scenarios where copyright infringement issues arise in construction as it pertains to electronically stored information. The owners or developers who construct or operate multiple stores, chains, or facilities that are similar in design sometimes run into issues passing along designs from one project team to the next. During the recession, problems have also frequently occurred when a project is halted due to an owner’s insolvency and the project is purchased by a subsequent owner who “borrows” the same or similar design concept. Further, in the homebuilder context, a common copyright situation arises when the buyer asks a developer or design professional for a particular design, but then decides not to retain that developer or design professional yet retains the design drawings and provides them to someone else to build the exact same house.
Whether you are an owner, developer, contractor, subcontractor, or design professional, a sound contract can minimize your exposure and prevent problems as they pertain to electronic copyright infringement issues. For instance, while the default rule is that the designer typically owns the copyright, the parties can spell this out in their contract so that there is no uncertainty among the parties. The standard form agreements prepared by the American Institute of Architects reflect the industry standard of designating the designer as the owner of the design. However, certain owners (such as chain restaurants or hotel owners) find it valuable to have ownership rights with respect to designs of their architects and engineers and are willing to bargain for these rights. Further, if someone other than the designer will have ownership rights, the parties must decide whether that person merely will have a license to use the design in a limited capacity or whether that person will possess exclusive ownership rights.
In addition, the parties should address how various sets of drawings should be handled during and after a project. While it is not unusual for a contractor to provide the owner with a set of as-built drawings upon final completion, the parties should address the usage rights under which the drawings are being provided since even the as-builts, particularly if existing in electronic form, can be fairly easily converted to design documents. The owner and/or the design professional may also require the contractor to maintain only one set of design drawings (or at least limited sets), which must be returned at the end of the project.
If the owner of the design intends to protect its copyright and retain control over it, then the contract can include language to make this known to all parties. It should include language that, even if publication of the design is necessary to comply with governmental regulations, such publication is not a waiver of copyright interests.
The owner of a copyright should also provide formal notification of copyright by simply indicating “copy 2011 by John Doe” or “© 2011 John Doe” on the drawings and specifications. In addition, the copyright owner should register the copyright with the U.S. Copyright Office. These precautionary steps provide additional proof of copyright, including the date and content, and establish the basis for filing a lawsuit in the event infringement occurs.
These are several of the basic concepts to help minimize risk and uncertainty concerning infringement of electronic information on construction projects. However, there are other copyright issues that can arise as it pertains to usage of electronic design documents in construction. Please contact a member of the litigation group at Carnahan, Evans, Cantwell & Brown, P.C. if you would like to further discuss these matters or have any questions.