The Architectural Works Copyright Protection Act of 1990 granted architects copyright protection for their designs, but recent trends see ownership shifting.
The Architectural Works Copyright Protection Act, passed in 1990, provided copyright protection to original designs. Not only did it prevent designs from being copied by others, the act also provided architects with an avenue for ensuring payment was made for design services rendered, as they had the ability to withdraw their copyright.
Subsequently, the AIA standard agreements were adapted granting owners a limited license to use the documents, but the designer maintained the ownership and copyright. Even if another contract was used and not specifically recorded in writing, a license to the building owner and the contractors that gives them the right to use and copy drawings for the purpose of the construction project was granted; however, that license ended upon completion of the job.
Now, more than 30 years later, prospective contracts for design professional insureds more frequently contain provisions inserted that shift the design ownership and copyright from the architect to the owner.
While this new trend is perplexing, it may illustrate that those clients, or their lawyers, pushing for these contractual changes are moving farther away from understanding exactly what design professionals do and the value of their services. It muddies the distinction between providing services and providing work. These actions may also be a result of different project delivery methods taking hold, including contractual relationships among the parties, the use of Building Information Modeling, and questions that have been posed regarding who owns the model.
Irrespective of the reasons driving their insertion, these provisions should not be ignored. Start by having your lawyer review and edit them to make sure you are protecting your practice. By default, if the contract is silent as to ownership, the architect owns the copyright for their work, and the client’s fee, when paid, provides the client with permission to use the work to build the project as previously outlined.
If you see a provision that requires you to transfer your copyright to the owner or to the contractor in a design-build contract, it should be done thoughtfully – and with an eye to being sure you are giving yourself an avenue to be paid; that you are not giving away more than you intended to; and that you are not going to be responsible for the use or reuse of your design without your involvement.
Admittedly, many owners prefer to take ownership of various aspects related to their projects; however, one of the key issues associated with the transfer of design ownership is forfeiting your leverage to be paid in full. Retaining the copyright gives the design professional the right to terminate the license to use the documents if they are not being paid. This is a hammer you don’t want to put down. At minimum, if the owner requires you to give up ownership of your documents, then that should occur only after you have been fully paid for your services.
Additionally, if you give up the copyright to your documents, you are giving up the copyright to everything in those documents, including the standard details. You’ll want to retain ownership of those details so you can use them in future projects. Thus, there should be an exception in the contract related to standard details.
Further, there should likely be language related to use of the design documents for which you have transferred ownership. Typically, it is expected that the design documents will be used only on the project related to the contract; yet, unless the language specifically makes that point, it ultimately may not be the case. To protect your firm in the event the owner chooses to use the designs on another project, make sure there is appropriate language that your firm will be indemnified, including defense of any claims made in relation to projects that go forward without your involvement. There should also be a discussion upfront about the owner’s ability to finance the indemnity you are seeking.
If possible, architects should retain their copyright at the very least to dispel the perception that architects and engineers might be considered as merely another “contractor” on a construction project. However, in practice unless owners are willing to change their position, you may have no option. Remember to make certain that your consultants are aware of any ownership/copyright transfer and that they have signed on to it.
In summary, if you opt to transfer the copyright, then you should make sure you retain the ability to be paid; you want to be sure your standard details are retained, and that the owner is going to use the documents specifically and only on the specified project. The language in the ownership provisions is usually drafted very broadly and it should be narrowed. Does it include your BIM model? All the digital data used in the design? Conceivably, an owner could use earlier versions and try to rely on them. Before you sign a contract with one of these provisions, make sure you understand all the potential ramifications.
Lauren Martin is a risk manager and claims specialist at Ames & Gough. She can be reached at lmartin@amesgough.com.