Copyright: legal protection
Copyright is the right
of an author to control the copying of his work. Under
the laws of most countries, the originator of the work
product (reports, models, drawings, publications, etc.)
can obtain legal protection against the use of his work
by others. Also, the parties to a contract where one
party has been engaged by another to develop a product
for a specific project or purpose can agree on the basis
for the re-use of such product on other projects. While
the copyright concept is generally thought of as
concerning authors of literary work, artists, and
composers of music, whose work product is sold to the
general public, it is also of serious concern to
Consultants, such as architects and engineers, whose work
may be performed for a specific Client.
Engineer’s concern
The concern of the Architect may be primarily the
protection of the artistry of his design. The concern for
the Engineer will be to protect the uniqueness of his
design and its future use by him, and in controlling
re-use by others of such designs which, if
inappropriately applied, may lead to costly legal
liability. It should be primarily noted that while an
overall design is unlikely to be reproduced, it is the
designs of particular features within an overall design
which become critical, and which the Engineer may wish to
use again.
Consultant’s concern
For Consultants, copyright is inter-related with
technology transfer, which is encouraged by FIDIC as a
contribution to world development, and the
consultants’ remuneration. FIDIC recommends that the
Consultant should be fairly compensated for the transfer
of copyright and technology.
Innovation, Economy
Consultants would be entitled to be fairly compensated
for the effort and the inherent risk they assume in
developing innovative solutions to enhance the efficiency
and/or economy of a project. Furthermore, it seems
reasonable that the liability for any decision to re-use
designs, for other than the original purpose, should rest
with the party that undertakes such re-use.
Unfortunately, the law in many countries does not protect
Consultants from tortious liability to third parties
incurred as a result of a Client’s inappropriate
applications of designs.
Right to re-use
When a project is so truly unique that its design is
one-of-a-kind (e.g., the embankment portion of a dam to
be constructed of local natural materials) there is
little difficulty. However, misunderstanding or even
confrontation can arise between Clients and Consultants
over the re-use of design documents. A Client may feel
that the project design for which he paid should belong
to him alone, including the right to apply it to other
future projects. The Consultant may feel that his design
idea is his, to benefit his practice and reputation, and
to facilitate future work for other Clients. He may also
feel that the use of the design beyond that specified in
the original retainer with the Client should be
compensated for by payment of an additional fee, since
the economic value of the design is increased when its
use is thus extended.
World Bank’s view
The idea that Clients pay for Consultants’
services, and are therefore entitled to undisputed and
sole use (Copyright) of the product, is spelled out in
the language of the World Bank’s sample form of
contract for consultancy services, which provides that
plans, drawings, etc. shall become and remain the
property of the Client. The World Bank form observes, as
an alternative, that Consultants and their Clients can
agree that neither party should further use the documents
prepared for purposes unrelated to the original intent
without the consent of the other.
FIDIC’s view
Only in a very few cases could there be any legitimate
reason for a Client to prevent a Consultant from re-using
the product of his services. For example, a hotel chain
owner might be legitimately concerned if an architect
were to re-use some specifically distinctive features
intended to identify his hotels. Consultants have a more
valid commercial reason to deny re-use, on the basis that
their engagement for specific projects should not close
the door to future work by enabling Clients to re-use
designs for such future work. A further serious concern
of the Consultant is to protect himself from liability
arising from the inappropriate use of his product by
others, including the Client. The perspective of the
Consulting Engineer is apparent in the language of the
standard documentation of FIDIC and other professional
engineering organisations, which recite that ownership
and use are retained by the Consultant.
Client-consultant benefits
The enhancement of the competence of the Consultant,
by allowing him to retain the ownership of final drawings
and the intermediate tools, benefits future Clients
indirectly as well as the Consultant himself. If, on the
other hand, the Consultant is required to give up
completely the designs he has generated, the Consultant
will lose the skill and the marketing opportunity which
he developed, and society may lose the benefits of
improved technology and lower engineering costs for
future projects.
Fair balance
In short, the parallel objective of copyright policy
should continue to be the spread of useful knowledge and
the furnishing to Consultants of a financial incentive
for innovation and the advancement of their profession.
The striking of a fair balance between these perspectives
will usually have to be achieved in the context of the
negotiations of the Agreement for Professional Services
between Clients and Consultants.
FIDIC’s policy, therefore, is not to categorically
endorse any position about which party should own the
copyright. However, it is important that the issue of
copyright be considered and resolved at the time the
agreement is made, and that the risks inherent in the
solution decided upon be properly addressed, fairly
allocated and duly priced.
Accordingly, FIDIC recommends as follows:
- The Agreement confirming the engagement by a
Client of the consultant should address the
question of ownership of the copyright of the
design drawings, specifications and other
documents used by or to be prepared by the
Consultant under the Agreement.
- As a general case, it will be appropriate that
the Agreement provide that ownership of the
copyright in design drawings, specifications and
other documents should be retained by the
Consultant.
- Clients should be entitled to use, manufacture or
reproduce any drawings and documents produced by
the Consultant for a project, for the sole
purpose of the operation and management of such
project.
- In limited situations, it may be appropriate that
the Agreement provide for the complete transfer
of ownership of copyright to the Client. Every
effort should be made to ensure that the risks of
inappropriate re-use are fully described to the
Client and that the Client Organisation is
qualified to understand and properly re-use such
copyright. Contract provisions should indemnify
the Consultant from liability to either the
Client or third parties which might arise from
such re-use.
- In all cases, the Agreement should recognise that
the Consultants’ fee will necessarily be
greater if the ownership of the copyright is to
be completely transferred to the Client, to
compensate for the innovation and research
transferred to the Client.
Approved by FIDIC Executive Committee in September 1992
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