Madison Marcus | When does an implied licence exist? - Madison Marcus Law Firm

Architectural Plans: When does an “implied licence” to use exist?

In the Building and Construction industry a common and little understood issue relates to retaining an Architect to prepare plans. Upon providing the plans to the client, does the Architect forgo the usual legal protection under the laws of Copyright?

The economic rights associated with Copyright are vested in the author of a created work. These rights give the author a monopoly to:

  • a) use;
  • b) reproduce;
  • c) sell;
  • d) assign;
  • e) communicate; or

otherwise profit from the work (Section 31 of the Copyright Act). An Architect is the author of the plans they draw. Any person who is not the owner of Copyright in a work and who attempts to exercise any of these rights, ordinarily, will infringe the rights of the Copyright holder. As such they will be liable to infringement proceedings and Court Orders by way of injunctions, damages or account profits (Section 115 Copyright Act).

Frequently a problem arises after the drawings have been provided to the client? The question is whether the Architect, on providing the copies, has vested in the client an “implied licence” to use the plans for its intended purpose. The simple answer to this question is Yes.

A common myth is that the right to use plans only vests when payment for the Architect’s services has been made. Payment for services rendered is irrelevant to the issues of creating an “implied licence”.

The leading legal authority is the case of Concrete Pty Ltd v Parramatta Design and Development [2006] HCA 55.  This case was recently applied in Vartzokas Architects Pty Ltd v Nazero Group SA Pty Ltd and Anor [2017] FCCA 1019.

In deciding if an implied licence has been provided, the questions to ask are:

  1. 1. Is any reference to ownership of Copyright made in the engagement letter, with the client, or on the drawings supplied?
  2. 2. Has the architect preserved Copyright, subject to full payment?
  3. 3. Has the Architect contracted out of the implied licence?
  4. 4. Is the Architect anticipating an engagement by the client, beyond the preparation of plans in the management of the project or other contract administration?

Also one should be aware that the implied licence will travel with the property to any subsequent owners and builders.

At Madison Marcus, our expertise in the building and construction industry makes us uniquely placed to provide guidance and clarity around this issue before it becomes a problem. If you need any guidance or assistance you can contact Stephen Jenkins, Partner – Intellectual Property at Madison Marcus Law Firm.

stephen-jenkins-Partner-intellectual-property
Stephen Jenkins
Partner – Intellectual Property
+61 437 008 253
stephen.jenkins@madisonmarcus.co

 

Madison Marcus Law Firm produced this article. It is intended to provide general information in summary form on legal topics, current at the time of first publication. The contents do not constitute legal advice and should not be relied upon as such. Formal legal advice should be sought in particular matters.

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