While members of the public may think of their homes, offices, shopping centres, entertainment arenas and so on as just bricks and mortar, those who create and own the buildings often understand the importance of the look, feel and reputation of their property. In keeping with the thoughtfulness that goes into their development, buildings can be protected by a wide range of intellectual property rights from copyright and moral rights to trade marks, passing off and design rights. Understanding these rights can have a big influence on the value of the building to its various stakeholders. In the vast majority of cases, the most important right to consider is copyright, but trade marks should also be considered by developers and owners of iconic or destination buildings.
Copyright subsists in any original creative work. The barrier for originality is low so that most works that are not copied from a previous work are protected. The works must show skill, judgment and/or effort on the part of the creator. Copyright can cover a wide range of elements of the creation of a building from drawings, diagrams, maps, charts, models and plans under ‘artistic works’ to written specifications under ‘literary works’. It will also cover the completed building itself.
Copyright is an automatic right and exists for the life of the creator plus 70 years. It prevents anyone from copying a ‘substantial part’ of the work. This ability to prevent copying is fundamental to maintaining a building’s uniqueness and therefore its value. It covers the making of a copy in three-dimensions of a two-dimensional work (i.e. making a building from an architectural plan) or vice versa. A good example of this is the case of Signature Realty v Fortis Developments. Planning permission was granted to Signature on the basis that the building matched the submitted plans. Signature’s purchase of the land fell through and the land was sold to Fortis who completed the development according to those plans. While planning permission itself does not belong to anyone, copyright subsisted in the drawings therein which showed the use of the space. By copying these drawings in their marketing, architecture/estimating/tendering process and construction of the actual building, Fortis infringed their copyright.
By default, copyright is owned by the person who created the work. This means that, for example, the architect will own the copyright in the plans for the building. This is the case even where the creator is contracted to produce the work on behalf of the building’s owner (although the owner may have some implied rights to use the designs for the purpose envisaged without infringing the copyright). There are two ways that someone other than the creator will own the copyright in the works: if it is assigned by contract or if it is produced by an employee in the course of their employment. In the construction context, licensing of copyright is an essential aspect of any contract relating to creative work in the building (such as, for example, designers and architects but also potentially sub-contractors and engineers).
Trade marks protect words, designs or other demarcations, including three-dimensional shapes, which identify goods or services as coming from one company or another. For buildings, they can be used to protect the visual representation, whether an image or shape of the building, or the name of the building. Many famous buildings can generate revenue through their name or image being used in a tertiary capacity, such as merchandising or advertising. Trade mark protection helps the owners to prevent others from taking advantage of their building’s prestige and reputation without their permission and therefore diluting, devaluing or even damaging the market for goods and services associated with the building.
While architects often retain the copyright in a building, trade marks can be applied for in the name of the building’s developer or owner. Where they are not owned by the same person, the interplay between the two rights can be complex. The key distinction is that trade marks only protect commercial use of the image or name of the building where they indicate the origin of goods or services. For example, descriptive use of the building as the location of goods or services or the depiction of the building in situ may not be protected by a trade mark. Whether the protected marks have been so used can be a difficult question of fact. Trade marks must also be used commercially by their owner in order to continue to be protected. In many cases this can be achieved by licensing third parties to use the marks.
As well as use of the image and name of a building, case law suggests that trade marks can be used to protect the layout of a building. Considering an application by Apple, the Court of Justice of the European Union held that a 3D mark for the design of retail stores was registerable to the extent that it is capable of distinguishing that company’s goods and services from those of other companies. The design did not need to be limited to any specific proportions of the store it depicted. This is good news for companies that develop innovative designs for their public spaces to make them recognisable to consumers or to maintain a certain ‘feel’. However, as with copyright, the designers that create the interior will be the first owner of that design and companies must be careful that their contracts with designers expressly provide for a licence of the rights in the designs.
Intellectual property can be used to protect the uniqueness and distinctive value of a building, both to preserve its prestige and potentially for generating revenue from merchandising. Failing to secure IP protection for a building designed to be an iconic landmark or which is intended to become a destination site is a bit like leaving it unlocked – at best you risk that someone will start using it, at worst someone might start taking its contents. Particularly if you are designing or planning to buy a landmark building or destination development site, it is important to ask who owns or should own the intellectual property and to ensure that the contracts properly reflect that situation. This should be considered at every stage of the development process, from initial plans to interior design, or when buying such a property.
While copyright will subsist automatically, it is also important to register trade marks. They are separate rights but they may overlap in practice and can be complementary or conflicting depending on the circumstances. How best to use them to protect and enhance the value of a building will differ in each case and also from country to country. Preferably these issues should be considered early in the process.