In early 2000 and late 2001, Victorian based Barnett Property Group opened two display homes in the Melbourne outer eastern suburbs of Beaconsfield and Rowville respectively through its Porter Davis homes brand.
One feature was the ‘alfresco quadrant,’ comprising the combination of the rumpus, family, kitchen and meals areas around the alfresco, all under a single roof-line, but also having regard to the location and relative dimensions of rooms in this part of the house design.
Between May 2002 and October 2004, another builder Metricon built four display homes at Craigieburn, Point Cook and Keysborough. Each contained features similar to the alfresco quadrant in the Porter Davis homes.
Three years later, the Federal Court found that Metricon had committed copyright infringement in respect of a substantial part of the Porter Davis home. The court found that what was copied was both qualitatively and quantitatively a substantial part of the Barrett Property Group’s plans, and that the objective similarities between those plans and a prototype used to derive Metricon Homes’ plans were indicative of copying.
The managing director of Metricon, who knew the designs were derived from the Barrett Group’s plans, was found to have authorised copyright infringement. Likewise, the product development manager was held personally liable for authorising infringement.
For architects, this highlights the importance of both protecting designs through copyright and ensuring that designs do not infringe on the copyright of others. Such issues were explored by Greg Pieris, a senior associate at law firm K&L Gates, at the recent Design Build conference in Melbourne.
Copyright is an exclusive legal right given to an author of a work of art to print, publish, record, perform or reproduce a work of art. If an architect creates an original design for a home, office or shopping centre, the Copyright Act dictates that no one else is allowed to copy all or substantial parts of that design without prior permission.
Activity categories capable of copyright protection are set out in the Act. Most important to architects are ‘artistic works’, which can include buildings, architectural plans (written or electronic), physical models, 3D CAD models and BIM files.
This, Pieris says, is the most powerful and important right for designers.
Unlike trademarks, copyright does not have to be registered and is established automatically as soon as you create an artwork in its material form. Whilst you could use the © symbol to document creation of materials, this is optional and the existence of copyright protection does not depend upon this.
For copyright to be in effect, the main requirement is that the work be original. This does not mean it has to be novel or new, only that you applied skill and judgement in deciding what form the work would take. This can include mechanical decisions as well as artistic decisions or a combination of both.
Whilst copyright is created automatically, an important question surrounds ownership. Where those who created it are employees, the Act deems copyright to vest not with them individually but with their employer. Where, however, the work is created by independent contractors or freelancers, the Act those people to be the copyright owners rather than their client.
A further issue surrounds the licensing or assigning of rights to copyright material.
To enable clients to use their designs, architects usually license their clients to use the works. Under this scenario, architects retain ownership of the copyright but grant the client permission to use the design on their project. As owner of the copyright, architects are free to apply those same designs on other projects should they so choose. Clients, on the other hand, would need to seek permission before using the design on their own future projects.
Less usually, architects can assign copyright ownership to the client. Where this happens, legal ownership of the copyright for that design is transferred from the architect to the client. Unless he or she is subsequently licensed to do so by the client, the architect would not be able to use that design on future projects.
As a result, architects are generally better licensing rather than assigning their copyright.
Copyright infringement occurs where someone reproduces your work without permission. Where there is direct evidence of reference to your work (for instance, if an architect who had your plan A on their desk subsequently came out with a very similar Plan B), inferences that the material was copied can potentially be drawn.
This, Pieris says, is a point where architects need to be wary. Under a legal process of discovery, any architect suspected of having breached the copyright of others can be required to produce any documents in their possession. If your filing cabinet contains plans or brochures from competitors sitting in design files, inference that you have copied could be drawn even where you had not in fact done so.
Pieris recommends action in three areas.
First, be wary about client requests to change plans or to use specific designs. In such case, the clients may have had reference to somebody else’s plans. By using them, you could be unwittingly infringing upon that party’s copyright.
Second, it is important to maintain complete and accurate design files. This includes saving, dating an initialling every version. If you have CAD files, different versions should be saved.
The larger the design file, Pieris says, the easier it is to demonstrate that your designs have been individually created.
Third, ensure that you own copyright and that you retain a copyright license which is documented in the contract. This includes when you engage freelances having a standard assignment copyright form. Or, if you engage contractors, making sure that they have signed assignment forms.
Finally, each person who creates or contributes to a work has moral rights. These include the right to be recognised as the author of the work, to avoid having the work falsely attributed to others and not to have the work treated in a way which damages the author’s honour or reputation.
Unlike copyright, moral rights rest with individual authors and cannot be transferred.
For architects, protecting intellectual property is crucial.
Just as important is not infringing the IP of others.