Knowledge & News

Intellectual Property & Architecture – Copyright Protection in Focus

9 October 2020

Intellectual property (IP) is increasingly important in today’s economy. In the architectural and construction industries, IP is a valuable asset that can be monetized and licensed, with exclusive rights providing a competitive edge. Considering IP issues early can also help mitigate risks and avoid costly disputes. There are different types of IP that are relevant to the architectural and construction industries, including patents, industrial designs, trade secrets and trademarks. This article focuses on copyrights. Architectural works enjoy the same protections as any other copyrighted work. However, the nature of architectural works makes copyright considerations somewhat more nuanced. This article sets out important principles to keep in mind.

Original Architectural Works

Canada’s Copyright Act protects a myriad of works involved in architectural projects. “Architectural works” are protected as artistic works, which are defined as any building or structure or any model thereof. In Canada, architectural works include, for example, commercial buildings, single and row houses, the design and layout of a store, a store façade, interior design, a telecommunications tower, a railroad loading dock, a tennis court, landscaping, and a squash centre.  Recently, a Canadian Court found copyright protected the steel structure of the former Civic Centre in Ottawa. Copyright protection also extends to architectural drawings, plans, blueprints, building information modelling (BIM) models, as well as computer programs involved in the creation of architectural works. Similarly, property descriptions and the like may be protected as literary works. Compilations of such works are also protected. Also, foreign architectural works are often also protected in Canada (though there can be nuances on this front).

A key to copyright protection is that the work must be “original”. Original does not mean creative, novel or unique. Nor is an artistic character or design required (which was a requirement for architectural works before 1988). Instead, to be “original”, the work must result from an architect and/or other author(s) exercising skill and judgment, which involves intellectual effort. The exercise must not be so trivial that it could be characterized as a purely mechanical exercise.

A combination of known design elements can be subject to copyright. Compilations or arrangements of existing designs or ordinary elements may still attract copyright so long as they are a result of the author’s exercise of skill and judgment. A design that is a combination of well-known structural elements can be protected, if for example, it was designed with the objective of offering a distinctive look to stand out from the competition and to create a niche in a competitive market, while still meeting safety, performance and sustainability standards specific to structural engineering. For example, a combination of master trusses, Gerber secondary chords, and columns on the periphery of a building, an indoor sports stadium, was held to be copyrightable as a compilation. What is subject to copyright is not the various elements from which the compilation is created, but the overall arrangement of them which the architect and/or other author has produced using skill and judgment. That said, copyright generally is unlikely to extend to a style, common design features, or the “gestalt” or “feeling” of a body of work.

Copyright protection arises automatically when an original work is created. In Canada, protection typically lasts for 50 years after the last architect or other author dies. (Canada has committed to extending the general term of protection to life plus 70 years, and our laws are expected to be updated soon.) Copyright can be registered in Canada, and while there are many benefits to registering copyright and doing so is relatively inexpensive, registration is not required.

Ownership

In Canada, the author is the first owner of copyright in a given work, unless the work is made in the course of employment, in which case, the employer is the first owner. For architectural works, the author is typically the architect (the author of the plans), since the architect is generally responsible for the expression of the ideas giving rise to the three-dimensional object. Builders and others involved in construction are less likely to be considered an author. That said, there are circumstances where others may be sufficiently involved in the design to be considered an author, either of a separate and distinct work, or of a “work of joint authorship” (a work produced by the collaboration of two or more authors in which the contribution of one author is not distinct from the contribution of the other author).

The technological evolution of architectural processes and the use of increasingly sophisticated design software has changed the manner in which architectural works are created. It remains to be seen to what extent these changes may impact copyright protection in Canada. For example, the use of a draftsperson, including one using computer aided design (CAD), has been held not to remove or transfer the architect’s copyright or the originality of their work. That said, if the use of software removes skill and judgment involved in, say, designing a building, then copyright may be put into question. Also, depending on the skill and judgment exercised by the draftsperson or 3D artist, they may be considered authors of a new original work and be the first owner of copyright in it, unless there is an agreement to the contrary. It remains to be seen what degree of skill and judgment would transform and elevate, for example, a CAD reproduction or artistic rendering of an architect’s design to a new original work. This is certain to become a more prominent issue with further advancements in, and reliance upon, CAD and the evolution of this artform.

The owner or builder of a building, home or other physical structure may own a copy of the plans or the physical building itself, but may not own copyright in the work. So, a builder, homeowner, etc. most often needs a license from the architect to copy an architect’s plans or build or otherwise make a copy of the building, home, etc. Only the author can permit others to copy the same architectural design. That said, Courts have implied a license to permit use of plans to make repairs.  

The Royal Architectural Institute of Canada, for example, provides a Canadian Standard Form of Contract for Architectural Services, which contemplates some of the issues relating to copyright, such as the use of documents in which the architect owns copyright.

Infringement

Copyright is infringed when someone does something only the copyright owner has the right to do without the copyright owner’s consent (for example, constructing an architectural work, and otherwise copying an architectural work, including in another form). While there are exceptions to infringement, the exceptions are less common when it comes to architectural works. For example, user rights to fairly deal with copyrights don’t tend to arise as frequently when it comes to architectural works. Also, while the law may deem there to be no infringement when useful articles are copied, the regime is trigged only once the useful article is mass-produced (50 or more), and architectural works in the nature of a building or models of buildings are specifically exempted.

Infringement does not require exact copying, and includes copying a substantial part of the work, and colourable imitation of the work. For instance, using architectural plans to prepare a substantially similar version of a planned work, but in a modified form, can amount to infringement. That said, there is no infringement in independent creation. So, if an alleged infringer can prove that he or she arrived at a similar design based on his or her own skill and judgment, there will be no infringement. The courts will also consider whether there are other factors that lead to similarities between architectural works, such as design requirements imposed by by-laws and regulations.

Whether or not a work is substantially similar is a “holistic”, qualitative exercise, and the cumulative effects of the features reproduced will be considered.  There is no bright line, and there can be infringement even if certain reproduced features were changed or integrated into a substantially different work. That said, it is generally recognized that architects walk a “fine line”, and Courts are likely to take into account physical, economical and legal constraints, and stylistic, traditional, and aesthetic requirements of clients.

Copyright protection, though, has its limits, and there are special exceptions for architectural works. For example, taking a photo, making a drawing or filming an architectural work will not infringe copyright in the work, so long as the copy is not in the nature of an architectural drawing or plan. (Note, however, commercial uses of such photos, etc. may still carry risk and implicate trademark rights or other special protections.)

Architects and other authors of architectural works are also granted a separate set of rights, called moral rights, which include the architect’s right to be attributed, and to control the integrity of the architectural work. These rights belong to the author and cannot be transferred, but can be waived. If moral rights are not waived, moral rights may be infringed, for example, by modifying renovation plans without the designer’s consent, if the integrity of the work is altered and there would be prejudice to the architect’s reputation.

Remedies

The same remedies available in copyright generally are available in the case of infringement of architectural works, with one exception – an injunction or destruction/demolition order cannot be obtained to stop construction of a building. Generally, remedies for infringement of an architectural work are monetary – i.e. damages (including punitive) and accounting of profits. They can be significant. For example, a recent case ordered damages of over $720,000 CAD for infringement of an architectural work.

Remedies are available against multiple infringers, and defendants may be held jointly and severally liable. In one case, a school board, its architectural firm, engineering firm, and general contractor were all found to have infringed copyright for copying the structural design of a nearby soccer complex by copying the structural design itself, by supervising the construction of the infringing structure, and by authorizing the infringement.

Other Forms of Protection

As mentioned, copyright is not the only form of intellectual property protection available to architectural works or the architectural and construction industries. The Trademarks Act allows for the registration of three-dimensional shapes as trademarks. This includes architectural designs and buildings. For example, in Canada and the United States, there are trademark registrations for the design and layout of a retail store (Apple and Home Depot stores, for example). Similarly, the 3D shape of a distinctive building may also be registered as trademarks. In the United States, for example, the Empire State Building, the Flatiron Building, the Guggenheim museum, and the New York Stock Exchange are all subject to registrations. In Canada, public authorities may also seek official mark protection relating to architectural works.

To Sum Up …

Copyright protection is available for a wide range of architectural works in Canada. The bar for the subsistence of copyright is not high, requiring only an exercise of skill and judgment by the architect or other author. Copyright can provide a broad scope of protection and can be leveraged to create revenue streams. Likewise, failing to consider and clear copyrights before designing and/or constructing a building can carry material risks and costly liability. It is important to remember that, generally, copyright in an architectural work remains with the architect unless there is an agreement to the contrary, and, crucially, ownership of the plans or a building do not translate into ownership of copyright. It is also important to remember that even where an architect assigns copyright, the architect may still retain moral rights of attribution and to maintain the integrity of his/her architectural work. Given the many possible works related to an architectural work, it is important to understand the context and nuances of copyright in order to best protect the interests of architects, builders, and owners, and to avoid disputes.

Authors

Sebastian Beck-Watt

Sebastian Beck-Watt Associate Toronto (Canada) Barrister and Solicitor

Catherine Lovrics

Catherine Lovrics Partner Toronto (Canada) Canadian Trademark Agent, Barrister and Solicitor

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