Copyright extends to many types of original works, such as written documents, drawings and software code. Many of these forms of expression converge in the construction industry, starting with the earliest sketches, through to powerful software tools to help bring projects to life. The owner of the copyright has the exclusive right to reproduce and publish the copyrighted work. It is a copyright infringement to reproduce the entirety, or a substantial portion, of a copyrighted work without permission. This article will review key copyright issues in the construction industry.
1. Copyright in plans, drawings, and models
- Does copyright exist?
Copyright can exist in many different types of original works in construction. For example, copyright can exist in architectural design, structural design, mechanical design, electrical design, 3D models, plans, and drawings.1
For copyright to exist in a work, the work must be "original", meaning the work must be a product of the author's skill and judgment.2 In most cases this is a low threshold in Canada. The exercise of skill and judgement must not be so trivial that it can be characterized as a purely mechanical exercise.
In construction, the issue of originality is complicated by physical limitations and budgetary constraints. This raises questions of whether a building that is a "compilation of structural elements", many of which are off-the-shelf components, can meet the originality threshold.3 In the 2017 Federal Court decision Lainco inc. c. Commission scolaire des Bois-Francs, the court found that a building design that results from compiling structural elements can be original, as long as the arrangement stems from the author's skill and judgement.4 The plaintiff's soccer complex design was a compilation of trusses, beams, and columns, but the components were arranged using skill and judgement – the arrangement was not a purely mechanical effort. The design was therefore original and met the standard for copyright to exist. The court also clarified that in Canada, an architectural work does not have to possess an artistic element to be protected by copyright. Additionally, new modelling software that tracks the designer engaging in trial-and-error work can be evidence of skill and judgment.5
- Who owns the copyright?
Determining ownership starts by identifying the author of the work. The copyright owner should always mark copyright works with a copyright notice. The author of architectural drawings is the copyright owner, not the builder. Ownership can be modified by agreements, and it is best practice to have an agreement in place. A waiver of the author's moral rights in the copyrighted work should also be obtained. If the author is an employee, the employer likely owns the copyright for works made in the course of employment. As with other types of IP, copyright owners may assign or license their copyright to a third party, such as a client or customer. Persons hiring a service provider to do design work cannot assume that they are in the clear to freely use the design work. A contractor may retain copyright in AUTOCAD files, and a client, such as a homeowner, may be infringing that copyright by modifying the design.6 The client needs to get an assignment or licence of the copyright and a waiver of moral rights. In some cases, there may be "joint ownership" of copyright in designs, drawings or models, either due to multiple authors or agreement.
- Copyright infringement
Copyright cases may be brought in either federal or provincial courts. There is a two-part test for infringement:
- The Copyright owner must prove that the defendant had access to the work (usually a relatively easy burden); and
- The Owner must prove the defendant copied a "substantial part" of the work.This is a more complex issue. A "substantial part" is determined in relation to the "originality" of the work. It must be a substantial part of the author's skill and judgement.7 Canadian courts have generally adopted a qualitative and holistic approach. They will not focus on individual elements, but on the two works as a whole – the cumulative effect of the features copied.8
In building design, courts have generally defined a "substantial part" quite broadly. Using existing plans as the basis for drafting new plans with only minor modifications may constitute copyright infringement.9 Modifying elements like the roof, aspects of the façade, and dimensions of a building may not be enough to avoid infringement.10
There are limits on copyright protection. For example, in the 2019 case Proline Pipe Equipment Inc v Provincial Rentals Ltd., the court found that a manufacturer did not infringe copyright in machine plans by producing a machine based on the plans.11 The manufacturer did not reproduce the plans themselves. The inventive structural and functional aspects of devices are best protected by patents and industrial design registrations, where applicable. Canada has recently extended industrial design protection to buildings and structures, providing improved IP protection for architects and designers.
Given the numerous applications of copyright law in construction, it is important for those in the industry to ensure that their work is neither infringing nor infringed by others. In particular, as the industry adopts new methods and technologies, such as new modelling software, it will be increasingly important for those involved in the design process to be aware of potential copyright issues that can arise.
Footnotes
1. Copyright Act, RSC 1985, c C-42, s 2, s, 5(1), copyright exists in every original "artistic work", which includes "architectural works" (building, structure, or model) as well as drawings and plans.
2. CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13.
3. Lainco inc. c. Commission scolaire des Bois-Francs, 2017 FC 825. [Lainco]
4. Lainco at para 84.
5. Lainco at paras 96, 97.
6. Evans and Hong v. Upward Construction, 2017 BCPC 247.
7. Robinson c. Films Cinar inc., 2013 SCC 73.
8. Robinson c. Films Cinar inc., 2013 SCC 73.
9. Webb & Knapp (Canada) Ltd. v. Edmonton (City), [1970] SCR 588.
10. Randall Homes Ltd. v. Harwood Homes Ltd., [1987] CLD 916.
11. Proline Pipe Equipment Inc v Provincial Rentals Ltd., 2019 ABQB 983.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
