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Did You Intend to Let Others Complete Your Work Without You?

11.01.11  |  By Paula M. Gart

This article was published November, 2011 in Podium, a publication of AIA Long Island, a Chapter of the American Institute of Architects.

Most design professionals understand that they are protected by United States copyright law when they create their design drawings, since copyright protection attaches automatically to original authorship expressed in drawings. A designer should take comfort in knowing that under this law, he or she is the initial owner of those drawings' copyright. The concern arises when a contractual provision attempts to transfer ownership of that copyright to a client.

A transfer of copyright ownership rights may only be made in writing, so any written attempt to transfer ownership to one's client should prompt discussion of the permitted use of the drawings. The design professional's retention of copyright protection, while permitting the client's use of the drawings after receipt of at least all compensation due, should be addressed. After all, there are only so many times one can be burned by the client's completion of the project with another design professional before some self preservation instincts prevail.

While the transfer of copyright ownership in drawings must be written, the right to simply use them for the project does not have to be. The unintended consequence of providing a client the right, or "license", to use design documents without having to use their creator takes most design professionals by surprise. From a legal perspective, telling a design professional faced with these facts that the cards aren't in his or her favor, and that they actually dealt the hand being played, is an unpleasant prospect.

Why this unintended result occurs, and how it may be avoided, is found in the copyright law itself. Embodied in copyright ownership of work product is the right to control its use by others, and copyright owners may give others the right to use their documents through a license, without actually transferring copyright ownership. While not as broad as a transfer of copyright ownership, this license permits the client to use the work in a particular manner − such as to complete and construct the project. When a license to use is purposely given, or just simply found to exist (known as "implied"), the design professional cannot claim damages for copyright infringement.

Whether a license to use the documents is implied depends on the design professional's and the client's own conduct. An implied license to use design documents may arise when the designer gives drawings to the client without any cautionary language that they may not be used without retaining that designer. Providing the client with schematic or preliminary design documents, for free or even for a reduced fee set in the hopes of getting the full commission, without any warning against the client's continued use of the documents beyond those stages, may have also provided the client with a license to use them to fully design and construct the project with somebody else!

In determining whether an implied license was given, courts look to the terms of the designer's agreement with its client and whether the delivery of the documents was accompanied by any provision that the client's further use of them constitutes copyright infringement unless the designer is retained to complete the full design.

Design professionals often prepare and provide design drawings to demonstrate his or her talents, but fail to accompany those "pitch" documents with the terms of their permitted use, conditioning their use on retention as designer for the remainder of the project. Without any terms, conditions, or warnings against such use, designers may be found to have impliedly permitted their client's continued use of the drawings without them. A finding of this implied license is more certain if the small fee often charged for those preliminary documents is paid by the client, who is usually pleased to do so since fees for early design pitches are often discounted in anticipation of being awarded the full design commission.

You can avoid the unintended result of giving your clients and their new designer the right or license to complete the project you envisioned. Do not simply give a client your drawings, even if just as a "pitch", without a proposed contract conditioning their use on your retention as the project's architect. Make it clear you are giving your client the right to use your documents only if your client complies with all of the obligations in your agreement, meaning you must be retained and fully compensated.

Since the client's failure to pay fees often has no impact in a copyright infringement action, be sure to provide that any termination of the agreement prior to the project's completion will terminate any right to use your documents. This way, if you are not paid and you terminate your services as a result, the client's continued right to use your documents will be revoked as well. Using these tools should have you controlling the scope and duration of any implied license that you did not intend to give your client.

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