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15/12/2021 – Follow up from ‘Creators v Copycats’ webinar

It was a pleasure presenting on protecting intellectual property law.

We received quite a few questions in relation to:

  1. clients copying designs for unrelated projects; and
  2. clients using partly completed designs and engaging a third party consultant to finalise the designs.

As such, we thought it would be helpful to summarise the position in a few short paragraphs below.

What is the position where there is no agreement?

Where there is no written agreement between architect and client, subject to some exceptions, copyright in the designs (as ‘artistic works’) will usually be owned by the ‘author’ i.e. the person who created the designs. This means that a client can do very little with the designs without the author’s permission, other than for the purpose for which they were created. In this scenario, a client will not be in a position to copy the designs for other projects or engage a third party to finalise the designs, unless this was specifically contemplated by the parties. That is, where there is no written agreement, there may be an implied licence in favour of the client to use the designs for the particular purpose contemplated by the parties.

The scope of any implied licence will depend on what was communicated between the parties and each party’s intention.  An implied licence will not usually extend to the client using it for an unrelated project but, again, it will depend on the circumstances of the arrangement between the parties. This potential lack of certainty emphasises the need for architect and client to enter into a written agreement where the parties’ intentions are clear, particularly in relation to the intended scope of use by the client.

If a third party consultant borrows an ‘idea’ only from a partly finished design and creates a new design that uses the same idea, this may not amount to a copyright infringement. This is especially the case where the idea is functional or common place (for example, a dining room adjacent to a kitchen). If however the consultant takes a ‘substantial part’ of the partly completed design (i.e. the material expression of the idea), finalises the new design and, in doing so, reproduces a substantial part of the original design, this may amount to copyright infringement. As discussed in our presentation, whether referencing another’s work will amount to copyright infringement or not will be a question of impression and degree and will depend on the particular circumstances of the case. The following quote from Ancher v Hooker Homes [1971] 2 NSWLR 278 illustrates the point:

…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.

What about where there is an agreement?

Where there is a written agreement between architect and client, however, it is important to check the provisions dealing with IP assignment or licensing. Where the author has assigned or transferred the copyright in his or her designs to a client, the client as the owner of the copyright will be free to reproduce (i.e. copy) those designs and use them for other purposes. If, however, the author has retained copyright in his or her design, the author will be in a position to provide a licence to the client only to use the work for certain purposes. It is important, therefore, that the written agreement sets out the precise scope of the licence provided to the client including what the client can and can’t do with the designs.

Moral rights

There is also the issue of moral rights. As mentioned in our presentation, moral rights are rights that are personal to the author, and cannot be assigned or transferred. Although an author can agree to acts or omissions by another person that will infringe their moral rights, in the absence of this consent, if, for example an architect creates a design and someone publishes or reproduces that design, the architect also has a right to be credited as the author of the design even where they no longer own copyright in the work. If the author is not credited, this may amount to an infringement of the author’s moral rights.  Further, if a third party materially changes that design in a way (or subjects it to some other treatment) that is prejudicial to the architect’s honour or reputation as the author, this may also infringe the architect’s moral rights.

Peter Carstairs
Senior Associate

Caroline Foley

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