A.       Why This Matters To You

Construction design is a form of intellectual property.   After it is created, who owns it? The architect is usually the author of the design documents, although construction design often represents  a combined effort between the owner, architect, contractor, and others on a construction project.

Why, as a contractor, should you care who owns the design?  Because it may affect your ability to use the design to build the project, build additions to an existing structure, reuse the design for another project, and to use photographs or other images of the design or structure you have built.

For example, if you are hired to build a project, and the architect and owner disagree on an issue, and the owner terminates its contract with the architect, the architect can stop the owner from completing the project without paying an additional licensing fee.  If the owner refuses to pay an additional fee to the former project architect, and the architect sues the owner for using the design, you, as a contractor can be named in that suit if you are continuing to use the design, and liable for damages.

B.      Work For Hire Doctrine

When an employee creates intellectual property while working for an employer, the intellectual property is deemed to be created and owned by the employer, rather than the employee.  This is based on a legal doctrine called the “work for hire” doctrine.

C.      Architect as Independent Contractor Not Subject to Work For Hire Doctrine

However, the work of an architect, who is an independent contractor, not an employee of the owner, is not covered by the work for hire doctrine.  The owner and architect can agree to transfer ownership of the design to the project owner.  Lacking a transfer or assignment of the ownership of the design, ownership of the design remains with the architect.

D.      American Institute of Architects (AIA) Position on Ownership of Design

The AIA (American Institute of Architects) contract documents are construction form agreements that are widely used  for construction projects in California. Under the language of those agreements, the architect owns the design, not the project owner.  By hiring the architect and using AIA documents, the owner has only purchased the right to a limited use of the design documents to build that particular project, or for other purposes set out in the contract between the owner and the architect.  (See B101-2007, Sec. 7.2, 7.3; A201-2007 Sec. 1.5.1)

The AIA’s position on the architect retaining ownership of the construction design may be counter to the owner’s expectations.  The owner may believe it has purchased the design created by the architect, as well as the design documents for the project, when it bought and paid the architect for its design services.

E.       Rationale for Architect Owning the Design

The price an architect charges for design services may reflect the amount of use of the design.  Architects may also want to ensure that they have some control if the design is to be reused by some other party.  The architect created that design of a single use, for a certain parcel of land, and the design may not be suitable for other uses on other land.

The current version of the AIA language addressing ownership and use of the design gives the owner a non-exclusive license to use the design.  That non-exclusive license is terminated if the owner breaches its contract with the architect, such as failing to fully pay the architect.

Cases which discuss an owner’s implied right to use the design include Joseph J. Legat Architects v. United States, 625 F. Supp. 293 (N.D. Ill. 1985), and I.A.E. v. Shaver, 74 F.3d 768, 775 (7th Cir. 1996).

B101, Section 9.1 expressly makes nonpayment of the architect a ground for the architect to suspend performance of services under the agreement.

F.       Copyright Protection for Construction Design

Copyright law allows an author of ideas expressed in a fixed form to restrict use or duplication of the work, and a copyright is traditionally claimed by the owner of the work by putting a copyright notice on the work, usually a “C” in a circle, with the first year of distribution and name of the copyright holder.  This notice is no longer required, but is still seen on copyrighted works.  The architect may often have a copyright notice on his design documents.

There are some limitations on the copyright protection. It does not protect the functional features of a construction design, nor does it protect individual standard features, such as common windows and doors. Even if copyright exists in the design embodied in the structure, the owner of the copyright cannot prevent anyone from taking pictures of buildings so protected, if the buildings are ordinarily visible from a public place.  On the issue of infringement of the copyright of the structure itself, the statute states that the effective date of inclusion for protection of structures is December 1, 1990.

G.      Unauthorized Use of Construction Design

What if a contractor, subcontractor, or supplier wrongfully copies protected documents? This copying would infringe any statutory copyright, and may be a breach of contract if the contract specifically limits use of the construction design.

B101-2007, Section 7.4, prohibits certain uses of the construction design by the owner or others.  Similarly, A201-2007, subparagraph 1.5.1, prohibits use by the contractor, subcontractors, or suppliers, except as specifically authorized. B101-2007 would give the architect a claim against the owner for any wrongful use by the owner. If others copied the contract documents, a claim against the owner could be based upon an implied promise by the owner to police use under A201-2007, subparagraph 1.5.1, and to protect the architect.  The owner would then have an indemnification claim against the wrongful user.

H.      Case Addressing Construction Design Ownership and Uses

In Foad Consulting Group, Inc. v. Musil Govan Azzalino, 270 F.3d 821, 2001 U.S. App. LEXIS 23402  (9th Cir. Cal. 2001), the Ninth Circuit ruled that an engineering firm had granted an implied non-exclusive license to a developer to have a later architect use and modify the plans and drawings prepared by the original engineering firm.

In Foad, a developer hired an engineering firm to prepare a preliminary plot plan for a shopping center.  The developer submitted these plans to the city for approval of the construction project.  The developer and the engineer then entered into a second contract to create final engineering drawings for the project.  The further work was to include a revised plot plan, and to obtain city approval for the project.  These design documents were prepared, and the city did approve the project based on these plans and drawings.

The developer transferred its right to develop the project to another company, which retained a different architectural and engineering firm.  The new firm obtained copies of the revised plot plan, and other documents from the city.  Using these documents, the new firm prepared final site plans.  It had traced the original firm’s plot plan onto an overlay.

The original engineer claimed that the new developer had infringed on the plaintiff’s copyright in the revised plot plan by copying and modifying it, by filing it with the city, by circulating it among prospective tenants, and by using it to build the project.  The district court granted summary judgment to the developer, denying the plaintiff's claim.

The Ninth Circuit affirmed the trial court’s grant of summary judgment to the developer.   The Ninth Circuit held that the contract between the original developer and the original engineering firm impliedly granted the developer a license to use the plans to complete the project.  This license included the right to hire the second design firm to creative derivative works of the plaintiff’s work for the purpose of completing the project, and to publish the finished work.

An owner of copyright has the exclusive right to reproduce, adapt, publish, perform and to display the work.  17 U.S.C. Sec. 106.  A transfer of these rights must be in writing.  17 U.S.C. Sec. 204(a).  A writing is not required, however, to transfer nonexclusive copyright licenses.  17 U.S.C. Sec. 101 excludes from transfer of copyright ownership  transfer of non-exclusive licenses. 

The contract between the original developer and the original design firm called for the firm to create maps, drawings and plans for the project and to submit these documents to the city for approval.  The parties did not intend, and the contract did not specify, that the developer be required to obtain the design firm’s permission before using the plans to build the project.

The plaintiff argued that the copyright legend on the plans created an obligation on the part of the developer to obtain permission before using the plans.   The legend stated: All ideas, designs, arrangements, and plans indicated or represented by this drawing are owned by, and the property of the [firm] and were created, evolved and developed for use on, and in connection with the specified project.  None of such ideas, designs, arrangements or plans shall be used without written permission of the [firm].

 The court held that the defendant developer did not exceed the scope of the license granted by the engineering firm by using the revised plot plan to create the final site plan, build the project, and publish the final site plan.

I.         Architect Reuse

If an architect seeks to reuse the drawings to build a similar project that will diminish the value of the original project, there is no express provision in B101-2007 limiting the architect's reuse. However, obligations of good faith and fair dealing might prohibit the architect from reusing the design in any way that would substantially reduce the value of the original project.

J.        Use and Distribution of Design Documents During Project

During construction, a number of parties other than the owner and the architect will need access to the documents.  Issues which arise as a result of this need for access include questions as to:

1.            The number of sets to be given the contractor

2.            The logistics of where they are to be kept and their accessibility

3.            Limitations on reuse

A201-2007, Section 2.2.5 states that the contractor will be furnished one copy of the contract documents for purposes of making reproductions pursuant to Section 1.5.2.

 A201-2007, Section 3.11.1, requires the contractor to maintain one copy of the Drawings, Specifications, Addenda, Change Orders, and other Modifications at the site for the owner. The sets must be in good order and marked currently to record changes. The sets are to be available to the architect, probably during working hours, and are to be delivered to the architect for submittal to the owner at completion

Conclusion

For contractors, obtaining and reviewing the design agreement will help the contractor to understand who owns the construction design, and how the contractor may use the design documents.  These restrictions on use may prevent the contractor from using photographic images,  other renderings of the finished project, or reusing the design on another project.

If a contractor uses the construction design in a way not permitted, it may be exposed to a lawsuit and damages for copyright infringement.  Being informed about who owns the construction design, and how it may be used by the contractor could prevent problems between you, the architect, and the owner, and potentially substantial liability.

This article is not intended to be legal advice, and is only general information concerning the subject matter of the article.  Consult an attorney before taking any steps based on information contained in this article.

Call Jonathan J. Sweet at (408) 291-1957, or email him at This email address is being protected from spambots. You need JavaScript enabled to view it. if you have questions about this article or other legal matters pertaining to construction.