Managing Copyright Issues With Successive Designs

Given that copyright arises automatically upon the creation of an original work fixed in a tangible form issues can arise when a first work is used and subsequent works are made after earlier designs. The Supreme Court of Nova Scotia considered these issues in MacNutt v. Acadia University, 2016 NSSC 160 in a case that illuminates some of the issues and the roles of designers and architects.

Acadia University was planning a possible expansion to its Alumni Hall. The existing hall is a modified Georgian style and the applicable architectural guidelines dictated a Georgian style for the addition.

Acadia retained the designer, MacNutt, to complete concept drawings for the potential expansion of Alumni Hall. The designer prepared concept drawings and charged $4,700 plus tax which was paid by Acadia. The drawings were used in a successful presentation to a possible donor. On securing the donated funds Acadia engaged a licensed architect to proceed with the project.

Some months later the local town held a public information meeting and the designer’s conceptual drawing was shown to the public. The architect attended and made the presentation. The picture of the conceptual design was stripped of identification by the town’s development officer and provided to the local newspaper. Subsequently the local newspaper published an article on the meeting and include a picture of the architect and of the conceptual drawing. No attribution was given to the designer.

The designer sued Acadia and the architect for copyright infringement.

It is noteworthy that the existing Alumni Hall was based on a modified Georgian style and the guidelines of the town required a Georgian style for approval. The first work then that arises in this case is the existing building. Since the proposal was for an extension to the existing building this fact imposed limitations on the design of the extension. As well the applicable architectural guidelines served as additional external constraints on the design.

The Court cited the test of originality in CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13 and noted that ” An original work is the expression of an idea through an exercise of skill and judgment… Infringement consists of the unauthorized taking of that originality” per Cinar Corporation v. Robinson, 2013 SCC 73. The Court noted that copyright protects only the portion of a “work where the author’s skill and judgment are expressed”.

The court examined the facts and found that there was an expectation that the original design could be used for purposes other than presentation to the possible donors. As well, the evidence showed that neither Acadia nor architect stripped the conceptual design of identification.

The court then assessed the evidence of the architect’s design noting the architect denied using the conceptual design and that his design including many differences from the conceptual design including as required for compliance with building code requirements. The expert evidence accepted by the court also noted that the architect’s work was a finished work while the conceptual design was an initial concept.

Of interest, the Court did not separately seek to identify features that might be “original” in a copyright sense in the conceptual design nor dissect the architect’s design in the same respect. In effect the court appeared to have carried out that exercise from the cases cited and the reference to the external constraints. On the general similarities between the two designs the Court stated “To the extent there are any similarities, they are as a consequence of the mimic architecture required by Acadia and the Town of Wolfville. In this regard, the original Alumni Hall was clearly of the Georgian style and this is picked up in both the concept drawings and the ultimate TAS design and drawings …”.

On the question of infringement the court found that the evidence accepted by the court lead to the conclusion that neither Acadia nor the architect were involved in an unauthorized taking of the conceptual drawings.

As a result the claim of copyright infringement was dismissed.

There are some learnings from this case.

It was clear that there was passion in the work done by both the designer and the architect. The close connection of an author to his or her work can have an emotional element that is normal but has to be tempered by the reality that the designs in this case were subject to numerous external constraints which limited the scope of the originality that could be expressed. It was possible and likely that a further design could be made with some similar elements without taking anything original from the earlier design. In fact, similar elements of the two designs at issue in this case also may be seen in the original Georgian style of the original alumni hall.

The designer clearly wanted her role to continue after the conceptual design but that had never been identified as part of the original engagement. Acadia was clear in communicating that it needed a final design that was prepared by a licensed architect as required for planning purposes.

A tactical lesson of the case was also the importance of selection of and preparation of the expert witnesses. The expert evidence was important to this court. The selection of a highly experienced expert by Acadia and the architect and the objective evidence that he provided was preferred by the court and of importance in the result of the case.

There are broader lessons where one author is building on or inspired by an earlier work. In such cases much conflict and misunderstanding can be avoided by understanding the existence, scope and respecting the rights in the earlier work but also in appreciating the limitations of those rights. A basic premise of copyright law is that ideas are not protected by copyright. As a result conflict can be avoided by being inspired by the themes of an earlier work but not copying it.

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