Darren Heath’s first article on architects’ copyright struck a chord with readers. Here he addresses your queries
When I wrote about the ownership of copyright in architects’ drawings earlier this year it elicited as many questions as it answered. These queries fell into a number of themes and here I try and address those.
What if the client subsequently sells the site to a third party or becomes insolvent?
This was the most common query, and naturally reflects a very typical state of affairs: is the licence of copyright the architect grants to the client personal to the client or is it transferable to a buyer or other successor in title to the property?
It will always depend on the particular facts of the case, but, as a general principle, where you, the architect, have been paid the full fee for production of the drawings, then you will have impliedly licensed (even if you haven’t explicitly licensed) the use of the plans:
- for all purposes connected with the erection of that building, on that site, in substantial accordance with your drawings;
- whether by the client or by the purchasers of the plot, and by their surveyors or other contractors.
This means not only your client but also a third party to whom your client sells the land may make copies of the plans and build out the building. However, the licence is restricted to the practical exercise of copying to effect building and would not, for instance, permit the removal of the architect’s name from the plans or allow the client or the client’s new architect to put the plans forward as her own. This licence ‘for all purposes connected with the building’ would also extend to reproducing the plans in marketing material to be shown to prospective purchasers.
Even if you’ve not been paid by your client, you may still be unable to stop the use of your plans. You will only be able to do so if payment was a condition precedent or if non-payment can be treated as a repudiatory act (meaning something that goes to the heart of the contract) allowing the architect to terminate the licence. The purpose of the architect retaining copyright is generally to prevent use by third parties who have paid no fee, so usually, particularly where payment is not expected to be made at the outset, the licence is given in return for a debt. This means you can recover the payment through the courts, but not terminate the licence. That remedy is therefore only as valuable as the solvency of your client, and if your client becomes insolvent, and the site passed into another’s hands, it’s effectively worthless.
What if your plans are used by a third party who has not bought the land from your client?
In this case a developer (Signature) exchanged contracts on a site and engaged architects to produce drawings. Signature obtained planning permission but was unable to complete, and so the site was subsequently sold to Fortis. Fortis then proceeded with the development, using the original architects’ drawings in order to comply with the planning permission granted. Those drawings were available on the planning authority’s website, but subject to a copyright notice and permission for limited uses (essentially consultation purposes).
When Signature discovered this it took an assignment of the copyright in the drawings from its architect (who had originally licensed the copyright in the drawings to Signature, in the usual way), so that it could bring an action against Fortis for breach of copyright. The High Court found that Fortis had infringed copyright in those original drawings by using them to construct the building and for marketing material.
Why did Fortis not have the benefit of the implied licence from the architects allowing it to use the drawings for ‘all purposes connected with the erection of that building’?
The answer is that any implied licence is granted to the architect’s client (in this case, Signature), and therefore the client is able to transfer that implied licence to a third party, along with the transfer of the land. But in this case Fortis had not bought the land from Signature, and therefore had no relationship with either Signature or the architects; it therefore did not have the benefit of the implied licence. Even if a licence is ‘implied’ and not express, it still exists as an intangible thing to be dealt with, and may only be relied on if passed to you from the original licensee.
In this case, had Fortis sought a licence from the architects at the outset – having seen the copyright notice on the drawings it downloaded from the planning portal – it would have avoided the issue entirely. Instead, as a result of the court case, it has to agree damages to be paid to Signature – or have the court impose damages.
If your client sells the land to a third party, must you supply drawings (including CAD drawings) to another architect appointed by the third party?
This was the situation in which another correspondent found himself, and the short answer is ‘no’.
You are obliged to deliver to your client all the materials you’ve contracted to deliver and for which you’ve been paid – if you’ve been paid for CAD drawings and not yet delivered them to your client then your client could call for them. If the client has assigned the contract to the new owner, who has thereby appointed you as architect, then you will owe the same obligation to the new owner. But otherwise you owe no contractual obligation to the new owner.
The new owner is not the ‘owner of the copyright in the drawings’, as was claimed in our correspondent’s case – under an RIBA contract, reflecting the position without any contract, the architect retains copyright in the drawings but licenses it to the client. However, even if it were the owner rather than licensee, it couldn’t rely on its right under copyright to demand drawings. Ownership of copyright is distinct from ownership of the property in which the copyright subsists. You only need to think of books, records/CDs (if you remember them), works of art and indeed buildings, to understand this.
So if you own materials in which you’ve licensed copyright there’s no obligation under copyright to provide them – any obligation to deliver the materials would have to be a contractual right.
If the client appoints another architect, is the new architect bound by copyright? Or is the question of copyright just a matter between the client and the original architect?
Another correspondent asks whether a new architect engaged by her erstwhile client may use her drawings with impunity, even though the client had failed to pay her for the drawings? Or is that new architect in breach of copyright? Further, is the new architect acting unprofessionally?
Well, unlike contractual obligations, which only bite on the parties to the contract, copyright places obligations on everyone. And it’s not a defence to copyright infringement that your client told you to use the copyright material. So that new architect is squarely infringing the original architect’s copyright if the licence of copyright to the client has properly terminated. And that new architect needs to pay attention to that.
If you take on another architect’s drawings you must check the copyright is cleared, if necessary with the first architect, and if a complaint is raised by the first architect you must cease using them.
If any professional were knowingly or recklessly acting in breach of copyright (ie against the law) then that would also constitute a breach of any professional code.
Darren Heath is a solicitor and the RIBA’s in-house lawyer.