In today's article, continuing our series on construction contracts, we will discuss copyright law. Pursuant to the Act of 4 February 1994 on Copyright and Related Rights (the " Copyright Act "), any individual creative work is subject to copyright. However, as stated in Article 1, Section 2, Item 6 of the aforementioned Act, copyright law specifically covers architectural works, architectural and urban planning works, and urban planning works. Therefore, technical documentation, including construction designs, drawings and descriptions, models, and sketches used for the construction of a project, will be legally protected.
It should be noted that, in the most common case, when an architectural and construction design is prepared by a designer, the investor must obtain copyrights to the construction design and other technical documentation to implement the project and commission it to a contractor under the construction contract. Secondly, the contract should include appropriate provisions protecting the investor's interests against the use of the documentation (provided as part of the construction contract), including by specifying the scope of its use by the contractor.
However, there are also investments in which the contractor, as part of the construction contract, also handles design (so-called "design and build"). In such cases, the investor should secure copyrights to the documentation from the contractor, who is also its author. It's also worth remembering that if the construction contract also covers the contractor's preparation of as-built documentation , the investor should ensure that the property rights to such documentation are acquired under the aforementioned contract, pursuant to the terms described below.
Therefore, copyright provisions can be just as important in a contract with a designer as in a construction contract.
Pursuant to Article 17 of the Copyright Act, unless otherwise provided by law, the author has the exclusive right to use and dispose of the work in all fields of exploitation, as well as remuneration for the use of the work . However, due to the economic nature of these rights, they are transferable, and therefore may be transferred to a third party. At the same time, the legislator has provided for the possibility of granting, without transferring ownership of these rights, a license to use the copyrights specified in the agreement by the parties that are vested in the author of the work.
It should be emphasized that, under current law, in the absence of a clear contractual provision specifying the acquisition of copyright to a design, it is assumed that the creator has granted only a license . Consequently, the author of the work (usually the designer) remains the sole owner of these rights, entitled to their full disposal and use (Article 65 of the Copyright Act). Furthermore, the parties should determine the moment of transfer of ownership of these rights, including whether the transfer of rights occurs upon the designer's submission of the design documentation prepared as part of the assignment, or upon payment of the author's remuneration.
Further, the agreement with the author of the documentation should also address the issue of acquiring ownership of the media on which the project documentation, which constitutes a work within the meaning of the Copyright Act, is recorded. As is clear from a literal interpretation of Article 52 of the Copyright Act, unless the parties otherwise stipulate in the agreement, the transfer of copyright does not transfer ownership of a copy of the work to the acquirer, nor does the transfer of ownership of a copy of the work itself transfer the copyright to the work. Therefore, the contractual provisions should strive to address the above. Consequently, the agreement should clearly define not only the moment of transfer of ownership of copyright, but above all, the fact of its transfer to the acquirer, as well as the ownership of the media on which the documentation to which the entity acquiring the rights is recorded.
At the same time, because the creator is entitled to remuneration for the transfer of copyrights, it is important for the acquirer of these rights to specify in the agreement whether the creator of the documentation constituting the work is entitled to remuneration for the transfer, and whether this remuneration is already included in the remuneration specified for the creation of the work (including design documentation). The provisions of the Copyright Act explicitly state that if the agreement does not indicate that the transfer of copyrights or the granting of a license was free of charge, the creator is entitled to remuneration. However, if the agreement does not specify the amount of such remuneration, such amount shall be determined taking into account the scope of the right granted and the benefits arising from the use of the work (Article 43 of the Copyright Act).
The agreement should also include a provision for the rights acquirer that, along with ownership of the property rights, the documentation creator's consent to use and dispose of the acquired rights for third parties (including sale) in specified fields of exploitation, including reproduction of the work and use of it in any manner, in particular in connection with the implementation of the investment or part thereof, as well as for the purpose of making changes, repairs, renovations, expansions or modifications, renovations, reconstructions, and exploitation, as well as for the purposes of other investments or ventures of the copyright acquirer. It should be emphasized that, firstly, the fields of exploitation must be clearly specified in the agreement; secondly, the agreement may only cover fields known at the time of its conclusion.
Moreover, it should be emphasized that acquiring derivative rights to the documentation is also important , meaning the creator's irrevocable consent to make changes to the original version of the work, as well as allowing such modifications to be made by third parties acting on behalf of, or with the consent of, the acquirer of these rights. However, in this case, regulating the issue of remuneration for obtaining derivative rights to the works is also crucial. In the absence of such contractual regulation, the creator of the documentation will have statutory grounds to demand additional remuneration in this regard.
In addition to the above, the creator of the work (design documentation) also holds moral rights, which are non-transferable and unlimited in time. However, a contractual obligation is permissible for the creator not to exercise their rights against a third party. This aspect can be significant due to the nature of the construction project. It is undoubtedly true that certain corrections or changes to the design may be necessary. In the absence of such a provision in the contract, any change to the design violates the designer's moral rights regarding the integrity of the work. The only exception is when the changes are due to obvious necessity, and the creator would have no legitimate basis to oppose them.
In summary, making changes to a construction design without the author's consent is only possible in exceptional cases, due to obvious necessity. Therefore, it is crucial to include in the contract the most comprehensive provisions possible regarding the fields of exploitation of the work.
It may also be important for the investor that the agreement transferring copyright to the documentation regulates the right to use the copy of the design for other construction projects (due to the wording of Article 61 of the Copyright Act). The absence of such contractual regulation implies that the acquired copy of the design may be used for only one construction project.
Only after the issue of acquiring copyright to the documentation has been regulated in the contract with the project creator, including obtaining consent for its use by third parties, will the investor have the right to transfer the documentation to the contractor for the purpose of carrying out the work under the concluded construction contract.
Providing the contractor with design documentation and other technical documentation requires the construction contract itself to include permission for the contractor to use the provided documentation. In this regard, the investor can first determine whether they are granting the contractor a non-exclusive license and whether this includes the right to grant sublicenses for the performance of the project's work. The construction contract should also specify the fields of use in which the contractor will be able to use the design documentation provided by the investor.
It's also worth noting that simply submitting a building permit application along with design documentation doesn't mean the investor owns the copyright. Architectural and construction authorities don't verify the copyright holder of a building design, only that it was created and signed by duly authorized designers. Therefore, when transferring rights to the decision of the entity granting the building permit, it's important to ensure that the rights to the design that served as the basis for its issuance are obtained.
In conclusion, the transfer and subsequent use by the contractor of the construction design and other technical documents for the purpose of performing work under the concluded construction contract must be preceded by the investor's acquisition of proprietary copyrights, as provided for by applicable legal regulations. It should be emphasized that the investor's acquisition of the broadest possible scope of rights related to the acquisition of proprietary rights will subsequently influence the scope of future investments, including the possibility of modifying the documentation in the event of changes in investment plans.
Next week we will start a new series of Mornings on the subject of easements, and first of all we will discuss the essence of this limited property right and its types existing in the applicable legal order.
Together with Rzeczpospolita and the Polish Association of Developers, we invite you to the next edition of the training entitled "The Development Industry in the Face of the New Development Act." The aim of the training is to discuss the changes that developers must prepare for from July 1, 2022, due to the entry into force of the new act. Details can be found at konferencje.rp.pl .
This article is for informational purposes only and does not constitute legal advice.
Legal status as of May 23, 2022
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