By Cheryl L. Davis
Whenever I make presentations about intellectual property to architects, I am invariably asked: “Why do I care about my copyright? I’m never going to build this building again.” Your ownership of your copyright has more than theoretical legal value. While your copyright is yours to keep or give away as you like, if you don’t understand the value of what you have, you can’t strike the best bargain.
Copyright owners' rights
As a copyright owner, you have the exclusive right to copy your work. This includes the right to create derivative works based upon your work – which in the design world, can mean a consultant’s ability to use your instruments of service to create their own work product. This is why many consultant agreements provide that an architect must give a consultant a license to use their designs.
It also means that a replacement architect who uses the work of another architect risks being sued for copyright infringement if that initial architect has not given the replacement architect a license; in that case, it is advisable for a replacement architect to get a representation from the Owner that the use is permitted. In addition, a replacement architect should also ask to be indemnified by the Owner if the initial architect disagrees and decides to sue; defending a copyright infringement lawsuit can be a risky and expensive enterprise.
Just like ownership of any other form of property, ownership of a copyright can be transferred. Although the architect generally owns all rights in their designs as a matter of law, many building owners used to assume (incorrectly) that by paying for the architect’s services, the designs, or intellectual property, were automatically transferred to them as well. Fortunately, the AIA’s B101 clearly states (and confirms) that: “[t]he Architect and the Architect’s consultants shall be deemed the authors and owners of their respective Instruments of Service, including the Drawings and Specifications, and shall retain all common law, statutory and other reserved rights, including copyrights.”
Rights for transfer of ownership versus license
It is important to remember that since copyright actually consists of several distinct rights – the right to copy, to authorize copying, or to create derivative work – any one of these rights can be transferred without the others. For example, as the B101 provides, you can give an Owner “a nonexclusive license to use the Architect’s Instruments of Service solely and exclusively for purposes of constructing, using, maintaining, altering and adding to the Project”. And, you can do this without permitting the Owner to use those same plans to create an identical building. That is your right as a copyright holder. If, on the other hand, you have transferred your copyright outright (as some Owners demand), you no longer have any control on how the Owner uses your work in the future.
The B101 goes on to state that this license is only granted “provided that the Owner substantially performs its obligations, including prompt payment of all sums when due, under this Agreement.” Here, your ownership of the copyright can be used as leverage to compel the Owner to pay your bills; otherwise, you can terminate the license. If, on the other hand, you transfer ownership of your copyright in your designs immediately to the Owner (as some contracts provide), you no longer have such leverage.
If the Owner terminates the B101 Agreement for convenience, or if you terminate the Agreement, the B101 provides that the Owner must pay you (again, as the copyright holder) a licensing fee for their continued use of your Instruments of Service. Since no licensing fee is specified in the Agreement, you and the Owner should negotiate and agree upon such fee just in case the Agreement is ultimately terminated. This is one of your rights as a copyright holder.
Conclusion
You need not use the AIA forms to protect and leverage your copyrights (although we do recommend them as a general matter). As long as you are aware of your intellectual property rights, you can craft your own license agreements, and even transfer your rights outright if necessary – and for proper compensation.
Note: Emphasis by italicizing and underlining text is added by article author, not the original source.
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Cheryl L. Davis is a litigator who concentrates in intellectual property matters (particularly copyright and trademark cases), employment, and real estate/construction related matters. Menaker & Herrmann LLP is a full-service law firm providing advice and counsel in many types of matters, including Construction Law, Employment Law, Real Estate and Intellectual Property. For more information on the firm, please see the firm’s website at www.mhjur.com.
(Return to the cover of the 2016 PM Digest: Intellectual Property)