Circular Architects and Intellectual Property: Protecting Your

NSW

Architects

Registration

Board

NSW

Architects Registration Board

Level 2, 156 Gloucester Street

Sydney NSW 2000

T. +61 2 9241 4033 architects.nsw.gov.au

mail@architects.nsw.gov.au

Twitter: @ArchInsights ABN 63 092 847

Circular

Architects and Intellectual Property:

Protecting Your Building Plans and

Designs

Introduction

Architects are engaged to provide a wide range of

services including preparing drawings, designs, plans

and/or models of buildings to enable development

approvals to be obtained, and construction to occur.

One issue that arises from time to time is what are the

parties respective rights when the architect’s retainer

is terminated prior to completion of the services. It is

important to understand who rightfully owns copy-

right and moral rights which are referred to as the in-

tellectual property in the work produced by the archi-

tect prior to termination, and the protections aorded

an architect to protect his or her work. The purpose of

this paper is to examine architects’ intellectual prop-

erty rights in relation to their works. In doing so, it

will consider copyright law under the Copyright Act

1968 (Cth) (Act) and moral rights under the Copy-

right Amendment (Moral Rights) Act 2000 (Cth). The

paper will also address the issue of a clients’ implied

licence to use the product of the works they commis-

sion, and provide guidance to architects on how they

can appropriately protect their rights so as to prevent

unauthorised use of their works.

In Australia, intellectual property protection is derived

from the Act and the various court determinations

which have interpreted and applied the Act. Whilst

the Act relates to copyright and the protection of a

broad range of criteria, this paper will focus on copy-

right protection in relation to architectural works, in

particular, building plans and designs.

tural works?

Prior to 1968, copyright in buildings and other struc-

tures subsisted only in “architectural works of art”,

which were deﬁned as buildings or structures hav-

ing artistic character or design. This protection was

quite restricted, and led to many disputes regarding

interpretation. With the passing of the Act, copyright

was found to subsist in a broader range of architec-

tural works. By virtue of section 10, “artistic work” (to

which copyright is aorded) is deﬁned to mean:

(a) a painting, sculpture, drawing (which is deﬁned to

include diagrams, maps, charts or plans), engraving

or photograph, where the work is of artistic quality

or not;

(b) a building or model of a building, whether the

building or model is of artistic quality or not; or

the last two preceding paragraphs apply. Therefore, a

wide range of architectural works, including drawings,

sketches and models of buildings, as well as the ac-

tual building itself, are now aorded protection under

the deﬁnition of copyright. Copyright protection will

be aorded regardless of whether the item is hand

drawn or created by software.

cepts, nor does it extend to all features of architec-

tural works which are generic to all buildings, such

as doors, windows and roofs. Rather, it is the form of

expression whether it be an idea, style or information

which copyright protection is given. For example, if

an architect formulates an idea of a open plan house

with high ceilings, arched doorways and a ﬂat roof,

the idea is not in itself protected by copyright. How-

ever, a drawing or model which incorporates these

features of the idea will be protected.

In the case of Beck v Montana Constructions Pty Ltd

(1963) 80 WN (NSW) 1578 (Beck Case), Justice Ja-

cobs considered the scope of protection aorded

by the law of copyright with respect to architectural

plans, noting:

It is clear I think that the degree of protection of an ar-

chitectural plan must of its nature be very limited and

it seems to me that one of the reasons for the severe

limitation in the degree of protection under the law

of copyright is that in an architectural plan more than

any other form of literary or artistic production there

is a greater element which may be described as com-

mon to all plans and that the particular portion of the

plan which may be regarded as belonging to the own-

er of the copyright, the particular features of it and

of the expression must consequently be more limited.

It was determined in Inform Design and Construction

Pty Ltd v Boutique Homes Melbourne Pty Ltd [2008]

FCA 912, following the Beck Case that copyright law

does not extend to protect any philosophy or design

principle - they are viewed as just mere ideas.

Original author:

Michael Bampton,

Partner,

Henry Davis York

NSW

Architects Registration Board

Level 2, 156 Gloucester Street

Sydney NSW 2000

T. +61 2 9241 4033 architects.nsw.gov.au

mail@architects.nsw.gov.au

Twitter: @ArchInsights ABN 63 092 847

Under the Act, copyright owners have exclusive rights

to use their works in certain ways, including:

(a) to reproduce the work in a material form (includ-

ing photocopying, scanning or printing the work);

(b) to publish the work; and

ple, emailing or posting the work on the internet or

social media). There is no formal registration process

that an architect must follow in order to gain the ben-

eﬁt of copyright. Rather, copyright protection arises

automatically from the time the architectural work is

given “material form” (an architectural work is given

“material form” when an architect creates a sketch

or model, or saves a design as a digital ﬁle), on the

premise that the work is “original”. Copyright owners

may also utilise the symbol © to notify others that the

work is protected by copyright although the work re-

mains protected by copyright regardless of whether

or not there is notice by the placement of this symbol.

The owner of copyright will generally be the person

who created the copyright work. Therefore, an archi-

tect who “creates”, owns the copyright of the work,

unless the architect is an employee, in which case

(and depending on the employment contract) his or

her employer will own the copyright of the work; or

the architect has entered into an agreement, the

terms of which require the architect to assign copy-

right to the person who has commissioned the work.

Additionally, where architects prepare plans based

on the ideas of their client, despite the client having

formulated the ideas, it is the architect who owns the

the plans “material form”. If there is no term of the

agreement which provides for an assignment of the

protection and can prevent people from using or re-

producing his or her works.

However, the retainer agreement may expressly pro-

vide that copyright rests with the person who has

commissioned the services and copyright is licenced

back to the architect. An agreement may provide for

an express licence in two forms. An exclusive licence

or a non-exclusive licence. An exclusive licence en-

ables the licensee to exercise the rights granted to

the exclusion of all others. This enables the licensee

to take action against others infringing copyright, in-

cluding the former copyright owner. An exclusive li-

cence can only be granted in writing and requires a

signature from the original copyright owner.

A non-exclusive licence allows the licensee to use the

work in a way that is negotiated between the copy-

right owner and the licensee. Under a non-exclusive

licence, the copyright owner may continue to use the

works and has the ability to grant others a non-exclu-

sive licence to the works. Non-exclusive rights need

not be in writing (although it is advisable that they

are) and can be implied (see below - the exception:

implied licence).

The exception: implied licence

Architects own the copyright in building plans and ar-

chitectural works that they create. However, circum-

stances arise where there is an implied licence to use

the works to which copyright has attached. As a gen-

eral rule, regardless of whether a client has paid an

architect or not, a client may have an implied licence

to use the architect’s work for the purposes for which

the client commissioned the preparation of the works

by the architect, unless there is a written agreement,

that expressly states the contrary position between

the architect and the client.

The implication of an implied licence is that in the

event the relationship between an architect and a cli-

ent ceases, no matter what the reason, a client subject

to the terms of the agreement may retain the right to

take the architect’s work and complete construction

based on the architect’s design (even if the work is

completed by another architect or builder).

The notion that a client has an implied licence to use

the work of an architect they have commissioned, is

set out in the judgment in Gruzman Pty Ltd v Percy

Marks Pty Ltd (1989) 16 IPR 87 where Justice McLel-

land held that:

When an architect contracts with a building owner to

produce plans for the purpose of being used to carry

out construction work at a particular site, there arises,

subject to any contractual provisions to the contrary,

an implied licence from the architect for the use of the

plans for that purpose.

It is often dicult to establish the precise terms and

scope of an implied licence. This is because the con-

tent of an implied licence is determined by the par-

ticular circumstances surrounding the relationship

between the architect and the client, including docu-

ments that have been exchanged and the discussions

that have taken place between the architect and the

client. A common issue that arises is that often the cli-

ent’s recollection of a conversation will not align with

the architect’s recollection, thereby making it dicult

to determine how the implied licence should operate.

However, as a general rule, implied licences are nar-

row in scope and do not extend beyond what is nec-

essary to give the agreement between the architect

and the client business ecacy. This was armed

in Acohs Pty Ltd v R A Bashford Consulting Pty Ltd

(1997) 37 IPR 542, where it was held that the scope of

an implied licence is delineated by:

the purpose of the original commission, which is to be

determined objectively by reference to the contract

and the parties’ circumstances at the time architectur-

al or other consultancy services were commissioned.

Generally, a client has an implied licence to use the

plans to build the building only once, unless an agree-

ment authorises the repeated use of the architect’s

design. Also, the implied licence will not extend to the

client using the plans that have been commissioned

for the construction of the building on another site.

This reﬂects the decision in the Beck Case where the

Court held that:

…the engagement for reward of a person to produce

material of a nature which is capable of being the

subject of copyright implied a permission or consent

or licence in the person making the engagement to

use the material in the manner and for the purpose

in which and for which it was contemplated between

the parties that it would be used at the time of the

engagement.

Based upon the above, it is unlikely that a client would

be able to rely upon an implied licence if the client has

built a replica of the architect’s design on the same

site unless the construction of a replica building was

originally contemplated.

Can the implied licence be revoked?

The implied licence may be revoked or terminated

pursuant to an agreement between the client and

the architect. An example would be a speciﬁc clause

in the architect/client agreement stating that any li-

cence - express or implied - will terminate if the client

fails to pay the architect for his or her services and

as a consequence the agreement can be terminated.

In the absence of a speciﬁc contractual right, the

ability to revoke or terminate the implied licence is

available to the client but it is a right which is only

temporary. This temporary right is because, following

natural progression, there comes a stage where the

objective has been achieved and the entitlement has

passed. This was demonstrated in the case of Con-

crete Pty Ltd v Parramatta Design & Developments

Pty Ltd [2006] HCA 55 (Concrete), where it was held

that an implied licence may become irrevocable:

…once the development consent has been granted,

the implied licence or consent to the owners must be

irrevocable, because one of the purposes for which

the plans and drawings were prepared has been

achieved.

In that case the High Court of Australia held that the

irrevocability of an implied licence to use copyright

plans runs with the land. It was determined that an

owner who sells land with the beneﬁt of development

consent, can be taken to have passed on the beneﬁt

of the implied consent to the purchaser. To further ex-

plain this concept, if a client commissions an architect

to design renovations and obtains approval from the

Council for those renovations and the client subse-

quently decides to sell the house, the house can be

sold with an entitlement to use the plans (subject, of

course, to the provisions of the architect/client agree-

ment).

However, the High Court of Australia did note that all

of the circumstances relating to each event must be

taken into account when determining whether an im-

plied licence exists and can be applied. Whether an

implied licence applies will depend on the particular

facts and circumstances of each individual case. Ac-

cording to the decision in Gruzman Pty Ltd v Percy

Marks Pty Ltd (1989) 16 IPR 87, once a licence is grant-

ed and acted upon by the commencement of work,

the licence becomes irrevocable notwithstanding any

subsequent failure by the client to pay the architect’s

fee.

This notion was followed in Concrete, where it was

held that where there is no express limitation to the

contrary, and an architect has prepared plans for the

purpose of an owner obtaining development consent,

the implied licence can be assigned to a new own-

er upon sale of the development without any further

permission or fee where the development has not yet

been completed. If there are no express provisions in

the architect/client agreement revoking the client’s

implied licence for speciﬁc reasons such as where the

client has failed to pay, the only remedy available for

an architect is to sue for debt and not for breach of

Additions or modiﬁcations to original

plans

Generally, making additions or modiﬁcations to a plan

or work will not avoid infringing copyright particularly

where distinctive or important elements of the orig-

inal plan or work are replicated in the “new” plan. All

features of the “new” plan will be taken into consid-

NSW

Architects Registration Board

Level 2, 156 Gloucester Street

Sydney NSW 2000

T. +61 2 9241 4033 architects.nsw.gov.au

mail@architects.nsw.gov.au

Twitter: @ArchInsights ABN 63 092 847

eration when determining whether or not a copyright

has been infringed. The plan need not be reproduced

in its entirety for it to infringe copyright - even if a

plan replicates a small part of a copyrighted plan, if

the small part contains an important feature or ele-

ment of the original plan, this may be viewed as in-

fringing copyright.

The Copyright Amendment (Moral Rights) Act 2000

(Cth) came into eect in 2000 and amended the Act

by recognising the moral rights of authors including

the works of architects. Moral rights are person-

al legal rights belonging to the creator of copyright

works. These rights apply to the creator of the work,

including where the creator of the work may not nec-

essarily be the copyright owner of the work.

Moral rights dier from copyright protection, in that

moral rights remain with the creator of the work even

though copyright may have been assigned or licenced.

Moral rights extend the law in relation to copyright to

make it a personal right. Moral rights cannot be trans-

ferred, assigned or sold. Architects can exercise moral

rights irrespective of who owns the copyright of the

works they created. Moral rights arise automatically

and continue until copyright ceases to subsist in the

particular works. Pursuant to Schedule 1 of the Act, a

moral right means that an architect who has created

artistic work has the right:

(a) to be attributed (or credited) for their work;

(b) not to have their work falsely attributed; and

Moral rights do not protect features of works which

are generic or common but protect features of works

which are individual, unique or artistic.

Right of attribution

Pursuant to sections 193 and 194 of the Act, an ar-

chitect who creates a work, has a right to attribution

of authorship, if the work is reproduced in material

form, published, exhibited in public or communicated

to the public. Section 195AA provides that a right of

attribution must be “clear and reasonably prominent”.

There are two exceptions to this moral right: if the

creator has consented in writing not to be identiﬁed

and if it is reasonable in all the circumstances not to

credit the creator.

Right not to have work falsely attributed

Pursuant to section 195AC, the creator of a work has a

right not to have authorship falsely attributed. Essen-

tially this means that a creator of copyright work has

a right to have their work credited to them as the cre-

ator and not to a person who did not create the work,

and in instances such as where a person has altered

a copyright work, that person has a right to be cred-

ited for their work in addition to the original creator

of the work. In accordance with section 195AE, it is

also an infringement of the moral rights to knowingly

deal with or transmit a falsely attributed work. The ex-

ception to this moral right is when the creator of the

the work to another.

Right of integrity or right not to have work

treated in a derogatory manner

Section 195AK of the Act deﬁnes derogatory treat-

ment in relation to artistic work to mean:

(a) the doing, in relation to the work, of anything that

results in a material distortion of, the destruction or

mutilation of, or a material alteration to, the work that

is prejudicial to the author’s honour or reputation; or

(b) an exhibition in public of the work that is prejudi-

cial to the author’s honour or reputation because of

the manner or place in which the exhibition occurs; or

that is prejudicial to the author’s honour or reputa-

tion.

According to the Australian Copyright Council, sim-

ply altering a work, or treating it in a way the cre-

ator is not happy with, will not necessarily infringe

the creator’s moral rights it is necessary to look to

the particular circumstances and determine whether

there has been some objective damage to the cre-

ator’s reputation or honour. There has been no case

in the courts which has considered what constitutes

behavior that is prejudicial to a creator’s reputation

or honour. Relevantly for architects, the Act provides

a special exception to infringement of the right of in-

tegrity in respect of building works.

Pursuant to section 195AT, a “change in, or the reloca-

tion, demolition or destruction of, a building” will not

be an infringement of the architect’s right of integrity

of authorship “in respect of the building, or in respect

of any plans or instructions used in the construction

of the building or a part of the building” if:

(a) the owner of the building, after making reasonable

inquiries, cannot discover the identity and location of

the author or a person representing the author; or

(b) if paragraph (a) does not apply - the own-

er complies with subsection (3A) in relation to the

change, relocation, demolition or destruction. Section

195AT(3A) goes on to say that the subsection will be

complied with if the owner has given written notice

to the author stating the owner’s intention to carry

out the change, relocation, demolition or destruction

and the notice stated that the person to whom the

notice was given could, within three weeks from the

NSW

Architects Registration Board

Level 2, 156 Gloucester Street

Sydney NSW 2000

T. +61 2 9241 4033 architects.nsw.gov.au

mail@architects.nsw.gov.au

Twitter: @ArchInsights ABN 63 092 847

date of the notice, seek to have access to the work for

the purposes of making a record of the artistic work

and consulting in good faith with the owner about the

change, relocation, demolition or destruction. Conse-

quently, moral rights are not infringed if the creator

has consented to something that would otherwise

infringe his or her rights. Architects may commence

proceedings seeking injunctive relief or damages

against a party where they have failed to recognise

his or her moral rights.

Summary

whether it be a person or a company, and moral rights

protect the creator of the copyright works.

For a particular work to be considered a copyright

work, it needs to feature more than common or ge-

neric ideas - there must be some individual or unique

feature to the works that requires protection. Whilst

ically protect the interest of creators such as archi-

tects, it is necessary for architects to be proactive in

order to maximise protection over their works.

When entering into an architect/client agreement

with a client, an architect should be mindful that a cli-

ent who commissions the architectural works is likely

to have an implied licence to use those works for the

purpose in which they were commissioned. In addi-

tion, architects should be aware that a client’s failure

to pay for the service does not disentitle a client from

relying on the implied licence.

The implied licence is irrevocable but only at partic-

ular stages.

In circumstances where a client has failed to pay for

an architect’s services, the architect retains the right

to recover the fee under the contract by pursuing a

claim in court. Architects should be aware of the po-

tential issues surrounding the ownership of the copy-

right of their works and may consider practical steps

to balance appropriate access to electronic ﬁles,

while protecting their rights over their works when

preparing a written agreement with a client.

Practical tips

To ensure architects balance appropriate access

for clients, with protection of their rights over their

works, consideration should be given to the following:

• A written agreement between the architect and

the client must at all times be entered into which

clearly outlines each party’s obligations. This

agreement should comply with Section 7 of the

NSW Architects Code of Professional Conduct.

• The agreement should contain express terms

that deal with copyright and moral rights of the

works.

• The agreement may also state the conditions un-

der which a licence is granted or implied under

the agreement, and that any licence granted by

the architect may be revoked in circumstances

where the client has refused to pay or, in the

event that there is a change in the client’s owner-

ship or legal interest in the site.

• Changes to the original agreement that arise af-

ter the parties have entered into the agreement

should always be properly documented as a vari-

ation to the agreement so as to minimise the risk

of later disputes.

• Although notice is not required, it is good prac-

tice for architects to use the copyright symbol,

owns the copyright for the works. Architects

should use the symbol on documents, plans,

sketches, photographs and designs, especially

where they are supplied to other persons such

as clients or builders. This may be located in the

titleblock where the architects name, contact de-

tails and Architects Registration Number are also

found (see Part 6, Section 17 of the NSW Archi-

tects Code of Professional Conduct).

NSW

Architects Registration Board

Level 2, 156 Gloucester Street

Sydney NSW 2000

T. +61 2 9241 4033 architects.nsw.gov.au

mail@architects.nsw.gov.au

Twitter: @ArchInsights ABN 63 092 847