Canadian Consulting Engineer

Protecting Your Designs

August 1, 2007
By Owen Pawson & Robert Tomkowicz, Miller Thomson, LLP

Engineers typically enter into standard form contracts such as the model agreement published by the Association of Consulting Engineers of Canada (ACEC-31). Article 7 of that agreement contains provis...

Engineers typically enter into standard form contracts such as the model agreement published by the Association of Consulting Engineers of Canada (ACEC-31). Article 7 of that agreement contains provisions that expressly preserve the engineer’s copyrights, patent and trade-mark rights, while permitting use of the drawings and other work produced by the engineer for the purpose of constructing the structure. For certain situations, however, those provisions may be altered or supplemented.

Copyright is a powerful tool for protecting intellectual creations. These can take many forms, from the design of ornate buildings to drawings of a doghouse. Although most engineers know that they may have copyright rights, few appreciate how the protection is obtained, who owns copyright or what their clients can do with their works.

Architectural designs and engineers

Copyright is a form of protection provided to authors of “every original literary, dramatic, musical and artistic work” under the Copyright Act. A definition of “artistic work” includes charts, plans, architectural works and the compilation of artistic works.

“Architectural work” is defined broadly as “any building or structure, or any model of a building or structure.” Since 1993, architectural works do not need to have artistic qualities to qualify for copyright protection, but in any case, many of the works consulting engineers create, like bridges or other structures, will qualify for copyright protection as artistic works.

The copyright holder has the right to control the display, publication, production and reproduction of his or her creation. Copyright arises automatically upon the creation of a copyrightable work and lasts for 50 years from the end of the year when the author dies. There is no requirement to file an application or other formalities. However, as noted below, registering a copyright is an option.

A work must be “original” to be protected by copyright. In other words, it has to originate from the author, and it must be the product of the author’s skill and judgment (i.e. be something more than a pure mechanical reproduction).

Copyrights protect original expressions, not ideas. Consequently, it is possible for two authors to have separate copyrights in similar or even identical works, provided the works were created independently. Further, copyrights will not protect the functional aspects of engineers’ works. Functional aspects are protected by patents.

Copyright and employees

While the author of a copyrighted work is generally the first owner of the copyright, a notable exception is when the work is created by someone while they are employed by someone else. In that case, unless there is an agreement to the contrary, the author’s employer will be the first owner of the copyright. Consequently, if an engineer creates the work as an employee of a consulting engineering firm, he or she will not have copyright in that work.

As owner of the copyright, an engineer may assign it to someone else, in whole or part, by a written agreement. An engineer may want such an assignment from sub-consultants or independent engineers who have contributed to the engineer’s design so that he remains the sole owner of the copyright in that work.

In addition to copyright, engineers have “moral rights” in their creations. Moral rights consist of the right to be associated with the work and the right to the integrity of the work. The latter right is violated when, to the prejudice of the honour or reputation of the author, the work is distorted, mutilated or otherwise modified or used in association with a product, service, cause or institution.

For example, in the federal court case of Cardinal v. Parish of the Immaculate Conception in 1995, a well known architect who originally designed St. Mary’s Church claimed infringement of his moral rights over the construction of modifications to the building. Unfortunately for the architect, he sued the parish after the work had already commenced. Based on the fact that to prevent continuation of the construction would result in hardship to the parish, the court refused to stop the modifications.

Unlike copyrights, moral rights cannot be assigned, although the author may waive them. An assignment of copyright in a work does not by itself constitute a waiver of any moral rights.

Registering a copyright

Although registration is not required for copyright protection, it does provide benefits. Registration acts as notice to the world as to who is the owner of the copyright.

Under the Copyright Act, when an owner of a copyright cannot be located, the Canadian Intellectual Property Office can issue a license for use of the copyrighted work — usually for a relatively modest fee, currently $65. The entire process takes about three weeks unless the office requires amendments to the application. Thus in addition to registering copyrights, the office can register other interests in copyrights such as a licence agreement or an assignment.

More than one copyright can be granted to an engineer on a particular project. For example, one copyright has been granted for a “ceiling plan for the construction of an acoustical ceiling without using an inverted tee bar suspension system” (copyright # 1005138), another was granted for “back-lighting” to the ceiling (copyright # 1007657), and another for “an artistic wall-panel system for that ceiling” (copyright # 1007658).

Demonstrating infringement

The core right inherent in copyright which is of most interest to consulting engineers is the right to “produce or reproduce the work or any substantial part thereof in any material form whatever.”

To prove a copyright infringement, a three-step analysis is used. You must demonstrate that: you own the copyright; your work and the other person’s work are similar; and, the other person has had access to your work.

Where there has been copyright infringement, a person has several remedies. These include an injunction, damages, accounting of profits, and delivery up of the infringing goods. Both damages and accounting of profits may be awarded. If there is any difficulty in proving actual loss, a copyright owner may rely on the damages prescribed in the Copyright Act — between $500 and $20,000 for each infringed copyrighted work.

Probably the most potent remedy is an injunction. It allows the copyright owner to stop any activity that could infringe the copyright. However, where a building or a structure is alleged to infringe copyright, the Act prohibits the grant of an injunction once construction has begun.

Building upon another engineer’s work

Engineers typically work on an original design, but they are often asked to continue the work of a previous engineer where changes or additions must be made. Unless subsequent use of the copyright material is agreed to between the engineer and the client, the design, drawings or other copyrighted works are regulated under the “doctrine of implied license.”

This doctrine is a presumption that a party has the right to do acts that would otherwise infringe copyright in order to ensure that the owner of the project achieves the results that were originally intended when the contract was signed.

In other words, the “implied license” is intended to protect the expectations of the contracting parties. In certain circumstances, it can be inferred from industry custom and standard practices.

For example, in the 1971 case of Netupsky v. Dominion Bridge Co. heard in Canada’s Supreme Court, some changes to architectural drawings were necessary to save costs. However, the plaintiff, a professional engineer who provided plans for the structural design of the Ottawa Civic Centre, refused to approve them. Dominion Bridge, a steel fabricator, decided to make modifications over the objections of Netupsky and made copies of the plans for use in completing the project. The court foun
d that “there was a licence to make whatever changes were thought necessary and to reproduce the plans in as many copies as were necessary to construct the work.”

Because the application of this doctrine often involves an element of uncertainty, it is always advisable to obtain the consent of the copyright holder for the work to be modified. Otherwise it is best to rely on express provisions in the client-consultant contract authorizing use of the copyrighted work by a subsequent engineer.

Patents protect functional inventions

Other forms of intellectual property relevant for consulting engineers include patents and trademarks.

Copyrights will not protect the functional aspects of engineers’ works. Functional aspects are protected by patents. Patents protect inventions that are defined as “any new and useful art, process, machine, manufacture or composition of matter.” Patents need to be registered and they require documentation. Approval can be expensive and can take a long time.

In the construction industry, patents can be issued for construction processes or techniques. Patents provide protection to the inventor for 20 years from the date of filing.

A trademark is a word, symbol, drawing, shape, packaging or colour, or a combination where these are used to distinguish products or services. A trademark protects the holder from confusing associations with a similar product in the minds of prospective buyers. Trademarks are commonly used by engineers in the form of logos as part of or in addition to the firm name. However, trademarks can also be three-dimensional and might be used by clients such as where they are a distinguishing feature of a building. For example, the shape of Pizza Hut roofs has the trade-mark #163979.

Intellectual property is a specialized area of law. Consulting engineers concerned that their intellectual property rights are adequately protected should consult lawyers who specialize in the field.

Owen Pawson, B.Arch., LL.B. is a partner with Miller Thompson LLP in Vancouver. Robert Tomkowicz is an articled student with the law firm.


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