As we mentioned in last week’s post, the owner of a copyright in a drawing is its author. There is an exception when the work is “made for hire”. A work made for hire typically occurs when an employee of a design firm prepares a drawing in the scope and course of his or her employment. In that instance, the employer steps into the shoes of the employee and is the “author” for copyright purposes. Thus, the copyright in a drawing prepared by a project architect working for a design firm will be owned by the design firm.
Since architects and engineers are not typically employees of a Project Owner, drawings are rarely found to be “works for hire” of an Owner and the design professional therefore retains ownership of the copyright. Although a work for hire also includes “a work specially ordered or commissioned for use as a contribution to a collective work”, architectural drawings are not included in that definition. As a result, courts have routinely found that designs are not works for hire, unless there is an employee/employer relationship between the designer and the owner.
However, an owner of the copyright can license the right to use the copyright to the Project Owner, either on an exclusive or nonexclusive basis and may impose restrictions in the license. For example, the design professional can issue a license to a Project Owner to use the drawings to construct the building and to maintain it, but restrict the Owner’s ability to reuse the drawings to build another identical facility. A license should always be issued in writing to make sure the intentions of the parties are clear and such license is typically included as part of the design contract with the Owner. A license can also be issued by implication. In those instances, the courts try to determine the intent of the parties during long and expensive litigation.
It is not surprising that the standard AIA contract provides that an architect will retain copyright protection for his drawings. Under AIA B101-2007, the Architect retains ownership of drawings, but the Owner is granted a license to use the drawings for constructing, maintaining and altering the project, provided, however, that the contract is not terminated. If the contract is terminated, the rights of the parties change depending upon which party terminated the contract. The EJCDC documents contain similar provisions providing that the Engineer owns the copyright to his designs and granting a limited license to the Owner to use the drawings, provided that the Owner is not in default.
Copyrights in design documents are valuable to both the designer and the project owner. To avoid disputes, project participants need to understand their rights under copyright law and ensure that their agreements are properly memorialized in the written contract and the copyright is properly protected.