Copyright in Construction Drawings

COPYRIGHT IN CONSTRUCTION DRAWINGS

 H. Lane

  1. Technical drawings, diagrams, plans, computer programmes and similar items enjoy copyright protection.

 

  1. Copyright protects creativity in the choice and arrangements of words, musical notes, shapes (including technical drawings and diagrams) etc., i.e. only the manner or form in which ideas, concepts and information are expressed, but not the ideas, concepts and information itself. It primarily protects against those who copy original works of authorship, i.e. who take and use the form in which the original work was expressed by the author.  It is regulated by the Copyright Act, 1978.

 

  1. Generally copyright is the right which vests in the author of an original ‘work’ (or a person having acquired rights from or through him) the exclusive right to do, or to authorise others to do, or to prevent others from doing, certain acts designated as the monopoly of the copyright owner in respect of that work. This enables him to prevent unauthorised copying or reproduction of that work.  By definition an ‘artistic work’ includes (amongst others), irrespective of the artistic quality thereof, paintings, sculptures, drawings of a technical nature, diagrams, maps, charts and plans, ‘works of architecture’ in the form of buildings or models of buildings, and ‘works of craftsmanship’ – for example the prototype of a motor car silencer and a wooden model of a kitchen appliance (i.e. visual representations of ideas or of the result of intellectual effort).

 

  1. In relation to an artistic work ‘reproduction’ includes a version produced by converting the work into a three-dimensional form, or, if it is in three dimensions, by converting it into a two-dimensional form, and includes a reproduction made from a reproduction of that work. Thus copyright in a drawing can be infringed by copying an article made from that drawing (i.e. ‘reverse engineering’), subject to the exemption in terms of section 15(3A) in respect of reverse engineered reproductions of articles having a utilitarian purpose and made by an industrial process (e.g. spare parts).  However, until the three-dimensional reproduction of the article has been made available to the public by or with the consent of the copyright owner, or thereafter, infringement of copyright in the drawing, or a two-dimensional reproduction of it, can be restrained.

 

  1. The ‘author’ of a literary or artistic work is the person who creates the work in its material form – not necessarily who conceived the idea or ideas embodied in the material work. The work must be original, not in the sense of being unique or inventive, but merely that it is the product of the author’s own independent mental effort, skill and labour and must not be copied from other sources.  The author of a drawing is the maker or creator thereof, but in the case of a computer-generated drawing it is the person by whom the arrangements necessary for the creation of that drawing are undertaken.

 

  1. Unlike patents, designs and trademarks, registration of copyright is not required to obtain copyright in a work. In the case of a drawing copyright generally lasts for 50 years from the end of the year in which the author dies, or if the state owns the copyright, 50 years from when it is first published.

 

  1. The author of the work is the initial owner of the copyright except (1) where a work is made by the author in the course of his employment by another person under a contract of service (i.e. employment in the sense of an employer-employee relationship) or apprenticeship, or (2) where the work is made for publication in a newspaper, magazine and the like by an employee thereof, or (3) where a person commissions the taking of a photograph for consideration – in which case that other person, proprietor of the publication or the person commissioning the taking of the photograph is respectively the owner. These exceptions are variable by written agreement between the author and the exceptional owner.  In terms of section 5 where the work is made under the direction or control of the state ownership vests initially in the state (represented by the Government Printer for administrative purposes) and not in the author.

 

  1. The written agreement of ‘contract’ or ’casual’ personnel that copyright will not vest in them as author of the works created by them within the course of their duties, but in the firm on whose behalf they create the works, should be obtained.

 

  1. Thus, contrary to widespread belief, it usually does not follow that because the client pays for the creation of a drawing the client will own the copyright in that drawing. Usually the client would obtain only a licence to use that drawing, leaving its author free to licence its use to others (including the client’s competitors).  For this reason, if the client wishes to own the copyright it should expect to pay for it as the previous owner would no longer be entitled to exploit it.  Whether taking ‘assignment’ (i.e. becoming the owner) of the copyright or licensing it, the client should ensure that it contracts with the copyright owner.  Be vigilant in this regard.  If a sub-contractor or independent professional creates a drawing or diagram, he must be a contracting party so as to transfer to, or confer upon, the client the right which the client requires.

 

  1. If no such agreement is expressly entered into, and an architect is engaged to draw plans only, the client would probably have an implied licence to reproduce those plans in the form of a building upon the intended site, but not where the architect has been paid only for preparing a planning application.

 

  1. Although the purchaser of a drawing may become the owner of the (physical) drawing upon its delivery to him, without a formal assignment of copyright he would not become the owner of the (intangible) copyright therein as ownership and copyright are separate and distinct rights.

 

  1. In terms of section 15(2) the copyright in a work of architecture, or in drawings from which a work of architecture is derived, is not infringed by the reconstruction of a building on the same site and in the same style as the original.

 

  1. Sections 12 and 13 provide a number of exemptions from copyright infringement. They generally amount to a restriction, in the public interest, on the monopoly of the copyright owner in certain circumstances.

 

  1. The copyright owner’s remedies for infringement are an award of damages (which at his option may be an amount calculated on the basis of a reasonable royalty which would have been payable by a licensee in respect of the work or type of work concerned), an interdict restraining the infringer from performing the restricted act or acts reserved to the copyright owner which constitute the infringement, and ‘delivery-up’ of infringing copies and ‘plates’ (i.e. moulds, negatives or any version of the work of whatsoever nature used to make a reproduction or adaptation of the work) used or intended to be used for the making of further infringing copies, plus such additional damages as the court deems fit in the circumstances.

 

  1. In terms of section 24(2) no damages may be awarded if at the time of infringement the infringer was not aware, and had no reasonable grounds for suspecting, that copyright subsisted in the work concerned, but the copyright owner’s other remedies remain available.

 

  1. Although it is not compulsory to mark works and reproductions of them to show that copyright subsists, it is advisable to do so to avoid innocent copying of them contemplated in section 24(2) by third parties. This is often done by applying the international copyright symbol © followed by the name of the copyright owner and the year in which the copyright came into existence, for example: © Brilliant Engineering (Pty) Ltd 2013.

 

  1. In terms of section 24(4) it is not possible to obtain an interdict or other order restraining the completion of a building after construction has begun, or requiring its demolition, where that building constitutes an infringement of the copyright in a work of architecture or the architectural plans on which it is based.

 

  1. Section 27 criminalises certain acts which infringe copyright.

 

  1. By ‘assignment’ the assignor (i.e. the transferor) divests himself entirely of his right or rights which become the property of the assignee. Section 22(3) requires an assignment and exclusive licence to be in writing and signed by or on behalf of the assignor or licensor otherwise it is invalid.

 

  1. To avoid being liable for design shortcomings where a design is (1) modified other than by, or with the written consent of, the original designer, or (2) re-used later by the client for another works or project not approved in writing by the original designer, the licensor or assignor should consider including in the agreement the exclusion of all liability on the part of the designer and the licensor or assignor (as the case may be) for any such modification or use and their being indemnified against any third party claims arising from such modification or use.

 

  1. In terms of section 22(5) a prospective owner of copyright in a future work can assign or licence the copyright in respect thereof, wholly or partially, to another.

 

  1. Someone who owns only some of the rights comprised in the copyright of a work cannot transfer greater rights to another person than those which he holds.

 

  1. Usually the professional owns the copyright in respect of drawings and other materials created by him unless this has been transferred (‘assigned’) to the client. This is reflected in many contracts which include a clause to the effect that the client and any other person in proper possession of the works is granted a non-terminable, transferable, non-exclusive, royalty-free licence to use, copy and communicate the professional’s drawings and other materials to complete, maintain, rectify, repair, modify, extend, operate and demolish the works, and to make and use modifications thereof for these purposes.

 

  1. The Copyright Tribunal is empowered to grant a compulsory licence where the copyright owner unreasonably refuses to do so, subject to the payment of a reasonable royalty and a right of appeal to the High Court.

 

  1. Section 20 confers upon the author so-called ‘moral rights’ i.e. the right (1) to claim authorship of his work, and (2) to object to any distortion, mutilation or other modification of his work which is or would be prejudicial to his honour or reputation. As these rights are separate and distinct from the copyright in the work and are not capable of being transferred to another person, an assignee (i.e. transferee) of the copyright in that work should procure that its author waives and abandons (ideally in writing) his moral rights to ensure that he has full control of that work.
  1. Lane

Legal Consultant:  Binnington Copeland & Associates (Pty) Ltd

(A Hill International Company)

08 April 2015

REFERENCES:

  • Loots ‘Construction Law and Related Issues’ (Chapter 18 by Owen Dean, Keith Brown, Charles Webster and Gavin Morley): Juta & Co: 1995
  • ‘The Law of South Africa’ (‘LAWSA’): Title on Copyright by AJ Copeling and AJ Smith (Volume 5, Part 2, 2nd Edition): LexisNexis Butterworths
  • ‘Intellectual Property’ by M von Seidel: Jonathan Ball Publishers

(Copyright © Hugh Lane)