I had a client reach out to me last week, wanting to start another multifamily project. Thinking we could just reuse the drawings from the last project and change the title block, they requested a re-use fee. I told her that we unfortunately didn't have time in our schedule to take on her project this year but would be happy to give her PDF drawings to take somewhere else.
She wasn't very happy with my response and said that our firm had pulled a fast one on them and are holding the design that they paid us to develop hostage. She tried to give me two options. 1) I give them the CAD files so a draftsman could make changes to the drawings and our firm would sign and seal the drawings and we would be paid for "basically doing nothing". 2) We give them the CAD files so another architect can stamp them.
After explaining that our liability insurance and state board would have a shit fit if we did this, she tried to tell me that they owned the rights to all drawings for the design, including all CAD drawings and details and that they would be contacting their attorney if we don't hand over all documents. I explained that her company has no ownership or copyright on the drawings and that their use was only limited to the the one project we did with them. She laughed and responded with "yeah right, that's not a thing".
The PM who started this project and negotiated the contract is no longer at the firm. She didn't use an AIA contract, just had the Owner sign a letter of intent that spelled out the project scope and design fees. It makes no mention of copyright ownership or how the drawings can be used in the future.
Our firm's response is that we will gladly provide CAD floor plans and exterior elevations but we are refusing to release any other CAD files for the project, especially anything that could be used by another architect that has limited or no knowledge of multifamily projects and accessibility requirements.
So I'm fully expecting a letter from their attorney next week. Has anyone else had this issue before?
Non Sequitur
Jan 25, 22 11:18 pm
Not sure what the lawyer's letter will do, you own the tools and files. They paid for a building, not a machine to print more. Pretty common situation.
natematt
Jan 26, 22 1:00 am
I'm just really curious if a lawyer would actually bother sending a letter... It seems pretty absurd.
Just because my project's contract doesn't say I get to keep my left kidney, it doesn't mean the owner does when the project's done.
Josh Mings
Jan 25, 22 11:24 pm
sounds like your client didn’t read the contract. Point to the clause and tell her that if she violates it, your lawyer will be in touch.
jas5150
Apr 25, 22 6:16 pm
sounds like someone didn't read the post. There is no contract.
b3tadine[sutures]
Apr 25, 22 8:39 pm
The PM who started this project and negotiated the contract is no longer at the firm. She didn't use an AIA contract, just had the Owner sign a letter of intent that spelled out the project scope and design fees. It makes no mention of copyright ownership or how the drawings can be used in the future.
Methinks reading more slowly may be in order.
Plus, the absence of a written agreement, does not mean that there isn't a "contract".
rcz1001
Apr 26, 22 4:52 am
jas5150, just because they the AIA contracts aren't being used doesn't mean there isn't a contract. It doesn't even have to be written to be legally enforceable... although written contracts maybe required by your state licensing board. Remember, licensing boards don't determine if contracts are legally enforceable. A court judge makes that determination in a legal case. However, the licensing board may still discipline you for not using a written contract when/if the board requires it by statutes or rules. A written contract basically needs to do the following: identify the parties to the contract, the contractual obligation (scope of work, services being contracted to provide, etc.), the compensation, and manner of how compensation is made. Usually, with a signing by both parties, and dated.
Richard Balkins
Feb 10, 23 5:58 pm
No mention of copyright ownership or use of it means (in case you are an independent contractor / business), you make the work (namely copyright and trademark applies) you own the rights. As IP owner, you have the legal right to do whatever you want. The client doesn't have any right to use beyond what the intellectual property rights laws allows without possessing a license from the IP owners. This means you decide what you want to allow the client to do with the license except those kinds of "fair-use" cases and the like limitations. Licensing is not the same as ownership of IP laws. When you license a client, you set the terms of the license and can set the conditions of revocations of such license. This is why you should license not transfer ownership rights to the intellectual property rights associated with your work. If you are a bona fide employee, it is typically seen as a "work for hire" situation when it comes to copyrights. The employer owns the copyrights. Just like the writers of news articles by a newspaper. The journalist is an employee and the newspaper company owns the copyrights to the article. Therefore, work for hire.
SneakyPete
Jan 26, 22 12:36 am
You need a lawyer, not the opinions of architects on the internet. Speaking off the cuff I think you have some ground to stand on considering the normal contract for architectural services normally calls instruments of service as distinct from the work product the client gets to use to construct their building and not something that the client owns. Unfortunately your project manager really let you down on this one.
Non Sequitur
Jan 26, 22 7:41 am
I disagree, I’m an internet architect and my comments matter too. 8-)
geezertect
Jan 26, 22 11:39 am
The funny part will be when she tries to get another architect to stamp the drawings and she can't find one and gets the same answer.
"I'm going to sic my lawyer on you" is an empty threat if the law is on your side. The ball is in her court. I agree that the previous PM dropped the ball if they didn't even run the letter agreement past a lawyer first.
Don't you just love clients? This one sounds like a real dandy.
reallynotmyname
Jan 26, 22 12:02 pm
I think the client was attempting to pull a fast one on the OP by threatening litigation. The OP did mess up royally by working without a contract, they need to correct their internal procedures to make sure that never happens again. They are lucky this a-hole client paid all their fees for the original project. In my town, people use lack of a contract as a tool to to dodge paying some or all of the design fee.
poop876
Jan 26, 22 12:50 pm
Well since she threw in 'attorney' in the conversation I would not discuss that matter with her any more and have your attorney do the communication. I would notify your insurance company as this could be potentially a litigation.
No, she does not own the cad files, drawings, design. She paid for construction documents for another project that she used and her fees covered that.
reallynotmyname
Jan 26, 22 2:04 pm
Yes, OP should tell their client to send a demand letter from their attorney and the architecture firm's attorneys will review it and respond. There's a very good chance the client will never send the demand letter (because they don't have a case) and the matter will end there.
poop876
Jan 26, 22 2:13 pm
Exactly. Any good attorney can send a letter asking, but not demanding as they do not have a case regardless of contract or not. The work of the architect is protected by copyright even if they do not have contract. OP can send them a letter that they can buy the design and all the cad files and throw a number at them and release the design to another licensed professional.
SneakyPete
Jan 26, 22 2:39 pm
The more zeroes on that number the better.
poop876
Jan 26, 22 2:48 pm
Sneaky, with todays market and how slammed everyone is, they probably will accept it.
Everyday Architect
Jan 26, 22 2:27 pm
This is why you don't do work without a decent contract in place. Reading through the OP I kept thinking, "that's covered in a standard AIA agreement," over and over as the story unfurled. Doesn't even need to be an AIA agreement, most other standard forms of agreement would cover these things. We do ourselves and our clients a disservice by not addressing these things up front.
I don't really have anything to add. I pretty much agree with everything that's been stated previously in the thread. Good luck to the OP.
rcz1001
Jan 26, 22 2:58 pm
Under Federal copyright law, you are not really a work for hire. That implies actually being an employee of the client. You are an independent business and therefore, federal copyright laws applies the copyrights to you UNLESS the intellectual property rights are EXPLICITLY stated will be transferred to the client. Clients gets a service and they get prints of the plans not the original master copy (your CAD files or BIM models). Those are instruments of service. There is over 100 years of court precedents that will side with the Architect has the copyright holder of their drawings unless the contract clearly and unambiguously indicates otherwise. Since it is about copyright, this can be remanded to be taken up in federal court and not some hokey pokey local court. Other aspects of contract issues can be at the local court but copyright is a federal law which only the Federal government administers copyright laws and therefore is federal court. Before doing anything, consult your firm's attorney and prepare for a legal battle. Consider the federal laws and review the contract. Intellectual Property Rights transfer or sale should follow some formal contractual agreement for intellectual property Acquisition Agreement where the Purchaser of the IP is agreeing to buy the particular intellectual property rights which would be exhibited with the agreement and the assignment of those rights transferring from your firm to that party. It needs to be done regardless of whether it is registered or not. Before suing, FILE the copyrights with the U.S. Copyright office. It will give you the ability to legally sue someone for infringing your copyrights besides violating the contract agreement and placing a burden. If there is no statement in the contract between you and the client that explicitly states that the client will receive those CAD models and the intellectual property rights to them. The client receiving the CAD model does not legally authorize them to use the drawings and copy them for getting permits beyond what is explicitly outlined in the contract. They need a IP license or they need to acquire the intellectual property ownership rights. You have the right to charge whatever you want. It is up to them whether or not they are willing to pay for that. Paying for architectural services is not the same as paying for intellectual property rights. Their ignorance of federal copyright law is not an excuse.
rcz1001
Jan 26, 22 3:13 pm
Under no circumstances would I recommend transferring intellectual property rights to that work to the client and the models/CAD files due to liability issues.
rcz1001
Jan 26, 22 3:23 pm
I agree with Everyday Architect. However, the OP has federal copyright laws on his side as the default owner. The issue boils down to the wordage of the contract and whether or not there is an agreement to give those files and intellectual property rights to use those drawings, models, etc., make copies and produce multiple buildings from those drawings. If there is not an unambiguous agreement that the client acquires the intellectual property rights when they pay for the services rendered then they don't own the IP. If there was then there would be also a sort of IP asset transfer agreement that would need to be prepared.... much like an agreement that indicates and outlines in detail what is being transferred (much like transferring the title to property)... it's a dot your i's and cross your t's thing that needs to be done so it is clear what is being transferred and it isn't just the assets but the associated intellectual property rights and can indicated in filing of IP at the U.S. Copyright Office or USPTO. In any case, those have to be done for clear paper trail of the ownership transfers of such assets. A lot of people don't know any of this and do things in a sloppy manner and it gets messy about who owns what.
Everyday Architect
Jan 26, 22 3:32 pm
I haven't read every word of Rick's word vomit above, but I suspect he's not actually wrong (but could probably state it more simply). Go look up the Architectural Works Copyright Protection Act if you want to get more into the details.
Even if the law is on our side and we don't have to state anything explicitly in an agreement to maintain copyright on our work, I still think we do ourselves a disservice if we don't address this with our clients. It would have saved the OP from this headache at the very least.
rcz1001
Jan 26, 22 4:33 pm
Not everything but it does need to be unambiguous. There has to be a clear intent to transfer the rights. If not, it's really a "no go" but it causes a lot of messy arguments. What I am referring to with stating explicitly, is to state explicitly any intent to sell or transfer copyrights to client or any other person. That has to be unambiguous and more or less explicit. Otherwise, without explicit intent to sell or transfer the copyright to the client, in the contract, it is to be assumed that copyright owner (in this case, the Architect) is the not intending to sell or transfer the copyrights to the client.
rcz1001
Jan 26, 22 4:44 pm
Point, if you intend to sell or transfer copyrights or any intellectual property rights, you need to be unambiguous... explicit about the intent without ambiguity. If you don't intend to transfer your intellectual property rights to another party, you don't need to say anything... your rights is your rights. Registering copyrights have its own benefits for taking legal action but you can find that info at the U.S. Copyright office website.
rcz1001
Jan 26, 22 4:47 pm
In this case, the architect is an independent contractor because they are a business of their own and do not work as an employee of the client. Client can not use the "work for hire" because the architect is not their employee. The specific architect is a "work for hire" situation with the architectural firm he or she is working for. The architectural firm is the copyright owner unless otherwise there is proof of indication otherwise.
Everyday Architect
Jan 26, 22 4:55 pm
Rick, I'm essentially agreeing with you. Stop typing.
rcz1001
Jan 26, 22 4:59 pm
"you don't need to say anything".... what I wrote there... don't overthink what I meant. If you don't indicate intent to sell/transfer your copyrights to client, it's to be presumed as "not for sale" (NFS).
rcz1001
Jan 26, 22 5:01 pm
As for deliverables, you don't have to be explicit in the design contract. You would need to communicate clearly what the deliverables would be... such as printed plans or PDFs or something along that line.
Everyday Architect
Jan 26, 22 6:12 pm
Sometimes I wonder why I even try.
rcz1001
Jan 26, 22 8:22 pm
Ok, we agree. There are other people who would twist my words to mean something totally different than what I meant by them. There are people on this forum that is like that and does it on purpose.
Everyday Architect
Jan 27, 22 12:39 pm
Maybe choose your words more carefully then so they are clear and harder to twist into something they're not. Also, you could refrain from trying to preemptively defend yourself from that when nobody is doing it. Both of these things would save all of us from the walls of texts and multiple replies when 0 are needed.
rcz1001
Jan 27, 22 12:59 pm
Good point.
RJ87
Jan 26, 22 3:46 pm
"I look forward to discussing this matter with your attorney."
But don't ever do another project without a real contract.
reallynotmyname
Jan 26, 22 4:03 pm
Unless you are a starchitect, telling a client "We can't get to your project for a year" never goes over very well. A top notch outfit would refer the client to someone they knew could do a good job. I think some of the trouble here is because the client is very frustrated by being turned away.
JArchDesign
Jan 26, 22 4:11 pm
We did refer them to another firm and provided contact information for their PIC that has multifamily experience. The sad truth is that this client doesn’t value what we do and is simply looking for a way to beat the system and develop plans for a fraction of the cost.
reallynotmyname
Jan 26, 22 4:36 pm
I understand now. You are right to turn them away.
geezertect
Jan 26, 22 4:43 pm
^ In other words, they are a typical garden variety developer. Nothing new here.
JArchDesign
Jan 26, 22 4:09 pm
Thanks everyone for the response. We’ve already had a discussion with our attorney, who laughed and asked if they also demand a mechanic to provide tools so someone else could fix their car.
We did receive a letter from their attorney simply asking if we could provide dwg files but made no claim to ownership or threaten litigation. They offered a release of liability for all future projects but our attorney rolled his eyes at it and said it does us no good if someone else tries to loop us into a lawsuit.
As for using AIA contracts, our firm uses them on every project. For whatever reason, this was a one off. Of course it’s the one that comes back and bites us in the butt.
I’m just flabbergasted by an owner who thinks they’ll find someone dumb enough to stamp drawings they didn’t develop. Granted I say this knowing a few shady individuals in our area who are known for being bottom feeding slime balls. We’re not talking about a small development. This is a $15,000,000 project so the fact that they would want someone to just stamp the drawings without even knowing what they’re looking is beyond shocking. Imagine having a CA discussion with an architect who didn’t know what they had stamped and getting an “I don’t know” response. But hey, whatever saves the developer a few thousand dollars.
We have our attorney drafting a response. We also let our insurance know but they also laughed at the situation and said they weren’t worried about it.
rcz1001
Jan 26, 22 4:26 pm
I feel the same way but it is surprising just how ignorant people are. Makes me think that we need to federally overhaul the education standards where all states would have to meet or exceed but the base line still needs to be a lot better like more hours in school from 8AM to 6PM. Additionally, teaching students about things like basics of copyright law. They don't have to be lawyers but they really need to understand the laws in layman terms so they aren't blissfully ignorant. If we don't teach the fundamentals, they really would have an excuse because it wasn't taught. Teach it. Teach kids to be responsible citizens from day 1 not goofball jackasses. The whole argument that the client thinks there is no such thing as copyright laws pertaining to architecture. There is actually two areas of copyright laws that covers architectural work... "architectural works" provision of the copyright law and also the "pictorial work" area of the copyright law. The latter having covered architectural drawings since pictorial work was covered under copyright law. Some people are just patently stupid.
RJ87
Jan 26, 22 4:48 pm
I said it somewhere else on here recently, but it's my new favorite stat to explain society.
According to the department of education 54% of adults in the US have a prose literacy rate below a 6th grade level.
People aren't very bright.
whistler
Jan 26, 22 6:57 pm
I had the same issue with the very first solo project I ever did. Sleazy developer dude who really didn't know what he was doing and tried to get multiple houses built off the same floor plans. Told him to pound sand ( I had the copyright notification printed on the title block of my drawing sheets, everything that ever comes out of my office has the same note on it ).... It's more of a reminder for them but always get the contract done to secure the relationship with your client. Generally the professional standard is that you own the tools / drawings etc and they are part of copy right law which if breached allows you to go after them for infringement.
reallynotmyname
Jan 27, 22 1:13 pm
Have you or anyone here tried to pursue an infringement case? I recently discovered a client who skipped out on their bill took our copyrighted CAD files and gave them to an interior designer and probably another architect. I'm wondering if its worth spending the money on legal fees to go after them.
rcz1001
Jan 27, 22 2:38 pm
It won't always be easy but registering the copyright would be required and of course if you do it before the infringement occured, the better your options of restitution may be. The problem with most architects is they don't reuse the designs so it is one off designs. Copyrights infringement pursuits is better if you were doing mass production like books, software, music, videos, etc. which you sell many copies. The biggest thing you need for most federal court cases is sufficient level of damages from the infringement for the case to be heard in Federal court which has larger cases. You could build a case of loss in fees that you would get for them using the plans on multiple projects but remember, your fee for reuse isn't necessarily going to be as much as the original design but you can in effect set an estimate of the charges you may charge for modification of the design to different soil conditions. If you were in the stock house plan market, you may already have a base design and variations of the design with the foundations modified for various sites conditions then charge accordingly. In any case, if you did that, so to speak, you would have a stronger ability to substantiate the fees you have lost because they illegally reused the plans on multiple site locations. Copyright law system is primarily meant to protect the copyright owners exclusive rights to make copies of their work and sell it. If you are not making copies of your work or derivatives (modification of a base design), copyright laws is going to be of less value and your claim of loss is limited. For example, if you are only going to make $0 on copies because you aren't going to make copies, your loss or damage to you would be $0. I worked in software/video game design work in the past and copyright has considerably more value so damages can be calculated more easily. 1,000 illegal copies means potentially a loss of 1,000 units of sales. If the software was $20.00 then that would be $20,000 in losses. The math scales linearly, more or less. The problem for architects, in most cases, is how are they going to calculate their losses due to piracy/copyright infringement. In general, for one off designs or designs for a specific client, if the client is a developer, I would license it for a fee price per copy or per building built or some combination. You need to establish a system of licensing fees which you could use to calculate losses. It can't be pure hypothetical. For example, the original design might have been $50,000 and fees for each additional house built from that plan including derivatives of the design (modifications) might be $5,000 to $10,000 each fee, for example. Then you can cumulate it based on the number of houses the client builds based on the design. In this particular case, copyright infringement lawsuit would be challenging and you'll probably need to pursue a remedy of injunction, and/or seek statutory damages because actual damages and profit would be nearly zero and statutory damages might reward you more and might allow your case to be heard in Federal court.
rcz1001
Jan 27, 22 2:45 pm
You may also be award for court costs and attorney fees if you prevail. In this kind of case, I would likely consider statutory damages which will likely yield more than what I might get under "actual damages" and the profit the person makes. You need to choose wisely and that is something you consult with your legal counsel versus the opinion of an online forum user such as myself.
If the client did not yet make copies, right now, it is the time to register the work because if she does so and infringes on the copyright after you register it, you would be able to get statutory damages. The exact timeline is unclear. When is the work considered... published? This is a tricky issue here. If it is more than 3 months, the key is to register before actual infringement occurs.
rcz1001
Jan 27, 22 3:00 pm
I would suggest the firm to register the copyright to the work and pay the $65 or $130 (for registering it under both as pictorial work and architectural work). Of course, it depends on how much worth the designs are and if it has some distinctive character to the design making it worthy of registering the copyrights. This should be done sooner than later if you do register the work with U.S. Copyright office.
SneakyPete
Jan 27, 22 4:58 pm
Dude.
rcz1001
Jan 27, 22 5:03 pm
Is that a threat?
SneakyPete
Jan 27, 22 5:19 pm
*sigh*
rcz1001
Jan 27, 22 7:18 pm
*sigh* *facepalm* *looks at you* The thread head already concluded on January 26, 2022 when JArchDesigns wrote post starting with "Thanks everyone for the response". Other than that, its just chatter between and among the rest of us. The OP had concluded what he or she was discussing on this thread. Unless something new comes up, the thread directly to the original poster and original post has concluded.
Some of what I posted since that does point to things to consider. The other responses are in response to other posters not the original poster.
Everyday Architect
Jan 27, 22 7:33 pm
Rick, you've posted in this thread around 15 times since the time you say the thread was concluded. Yet I don't think you've added anything substantial to the original or tangential discussions.
Just stop already.
apluscaddesign,llc
Feb 10, 23 12:47 pm
Not to change the subject, but sort of.. LOL!..
I am a drafting company who sub contracts my services to architects and engineers that do not have an in house drafting department. Therefore they do not have any cad standards, specific formats, no computer knowledge, etc. They simply just provide hand sketches for me to implement into cad and I take the project to completion in my format, ready for permit. Yes, they review the plans prior to submittal and will make corrections / changes along the way. But at the end of the job, are they entitled to my cad files? Nothing stops them from simply forwarding my file to a much more inexperienced draftsman that they can pay pennies on the dollar to have them copy my cad standards / format verbatim to take to future projects. Yes, I understand they own the rights of the design, but they do not own my proprietary cadd settings / format that come with the cad files....
Caddman
Where we follow your dreams from 'Conception' to 'Erection'
Donna Sink
Feb 10, 23 1:10 pm
I think your situation is similar to the analogy of the tools of the car mechanic given above. They own the design, you sell them the deliverable they need to get the permit - probably electronic PDFS, yes? The tools that you use to create the deliverable absolutely belong to you.
JonathanLivingston
Feb 10, 23 1:14 pm
I would not hand over CAD files without a signed release of liability, and in your case a significant fee. Even then I would try my best to purge extraneous layers, blocks, families, and IP to provide the bare min needed for that project and dont forget to explode everything including the hatches ;)
apluscaddesign,llc
Feb 10, 23 3:34 pm
Both of you are on the same page I am with the cad files. As for PDF's, I always provide PDF files, no questions asked. They can look at them all day long. I do provide typical base plans in cad to sub contractors, etc. for them to complete their part of the project. Not before fully purging everything from the file first.. I've spent 30 years streamlining my cad standards (Outside of your typical cringeworthy AEC standards and worthless school taught garbage) that are of course never implemented in any of my drawings. So yes Jonathan, supplying a copied version of a 'barebone, rats nest' cad file is what they'll get. All xref'd drawings, stacked layers, including notes, dims and everything simply gets changed to layer '0'... Case closed. It will be sure to warp the minds of whoever wants try to dissect it.
proto
Feb 10, 23 3:50 pm
I used to think I needed a fee to hand off cad files, but I no longer ask that. I've been paid for my time and there's nothing remarkable about the cad standards that make any of it intellectual property.
That said, I provide pdf's to owners freely and as often as they ask. But I don't provide CAD to owners unless needed by another specific professional entity (deferred submittal design/build, another design pro doing work on the property after my project, etc), and I do strip out irrelevant items (dtls, interior elevations, building & wall sections -- the pdf's cover those items) and of course my stamp. I do get a liability release, but I don't charge -- that just seems somehow retributional to me. I suppose there may be special cases, non-disclosures and such, but mostly I do not begrudge some designer asking me for the plans for a project I did years prior for reasonable use. Again, not just making plans available willy nilly, but certainly giving them when someone has a reasonable use.
Quite a few major cad programs can read a pdf these days anyway, but I still prefer to get a cad plan directly if I can...saves some guessing. I actually just requested and received a plan from another architect this week. Just a liability signature and boom, done!
proto
Feb 10, 23 3:57 pm
An n=1 story: I had a local architect say he wanted $1k and a liability release for some plans of a SFH property when I was reaching out to see if they were available. The previous permitted work was 4yrs old. I couldn't help but think to myself: why would I pay for disclaimed dimensions when i could pay a jr staffer to just go measure and be able to rely on them. The pretend lost wages idea just comes off as petty IMHO.
JonathanLivingston
Feb 10, 23 4:38 pm
Proto, I half agree. I also hand out cad plans to old projects when new homeowners are doing additions, etc. I would only ask for a fee when it is additional scope to provide cad beyond your original contract with your active client. In this case, a drafter's contract with the architect because the lost wage threat is immediate and apparent. Otherwise, your original contract would cover any changes or modifications needed and how they would be compensated for that time.
Wood Guy
Feb 10, 23 5:10 pm
When I work with outside drafters/designers, as part of our contract I require ownership of the CAD files.
"We follow your dreams to...erection"--your tagline must get a few chuckles from those with juvenile senses of humor?
JonathanLivingston
Feb 11, 23 1:08 pm
WG that's a smart play from the hiring architects'
side.
Richard Balkins
Feb 10, 23 5:37 pm
Unless you are an employee of the client or it was outlined in the contract that fees the client pays in its entirety include the purchasing of the intellectual property rights to the design, if you created the work, you own the intellectual property rights you have successfully registered (in case of patents and trademarks), and automatically when you created the work in case of copyrights. IP rights issues are federal law / federal legal jurisdiction. Without solid proof of the IP ownership rights transfer as part of the contract terms in a recorded/documented form, you own the IP rights. I would offer a limited license but retain the ownership right to the IP but I generally will not give up the CAD. I would recommend they pay you for reprographic copies made and limited permission to use the design for multiple projects or a license to allow the use of certain drawings for future renovation/remodel work or something but always keep the ownership rights to my IP which includes a number of instruments of services.
When it comes with consultants or employees, it could be a license or IP ownership rights or some contractual right/license to use the CAD files in some fashion much like Wood Guy said.
Richard Balkins
Feb 10, 23 10:06 pm
PS: Didn't realize this thread was resurrected. Didn't scroll back from the latest comments until after I posted the immediately preceding comment by me.
bennyc
Feb 10, 23 6:32 pm
I have run into this before. My response is usually: " against office policy to release cad drawings". Its also clearly stated on every contract. No CAD files will be provided to owner.
I had a client reach out to me last week, wanting to start another multifamily project. Thinking we could just reuse the drawings from the last project and change the title block, they requested a re-use fee. I told her that we unfortunately didn't have time in our schedule to take on her project this year but would be happy to give her PDF drawings to take somewhere else.
She wasn't very happy with my response and said that our firm had pulled a fast one on them and are holding the design that they paid us to develop hostage. She tried to give me two options. 1) I give them the CAD files so a draftsman could make changes to the drawings and our firm would sign and seal the drawings and we would be paid for "basically doing nothing". 2) We give them the CAD files so another architect can stamp them.
After explaining that our liability insurance and state board would have a shit fit if we did this, she tried to tell me that they owned the rights to all drawings for the design, including all CAD drawings and details and that they would be contacting their attorney if we don't hand over all documents. I explained that her company has no ownership or copyright on the drawings and that their use was only limited to the the one project we did with them. She laughed and responded with "yeah right, that's not a thing".
The PM who started this project and negotiated the contract is no longer at the firm. She didn't use an AIA contract, just had the Owner sign a letter of intent that spelled out the project scope and design fees. It makes no mention of copyright ownership or how the drawings can be used in the future.
Our firm's response is that we will gladly provide CAD floor plans and exterior elevations but we are refusing to release any other CAD files for the project, especially anything that could be used by another architect that has limited or no knowledge of multifamily projects and accessibility requirements.
So I'm fully expecting a letter from their attorney next week. Has anyone else had this issue before?
Not sure what the lawyer's letter will do, you own the tools and files. They paid for a building, not a machine to print more. Pretty common situation.
I'm just really curious if a lawyer would actually bother sending a letter... It seems pretty absurd.
Just because my project's contract doesn't say I get to keep my left kidney, it doesn't mean the owner does when the project's done.
sounds like your client didn’t read the contract. Point to the clause and tell her that if she violates it, your lawyer will be in touch.
sounds like someone didn't read the post. There is no contract.
The PM who started this project and negotiated the contract is no longer at the firm. She didn't use an AIA contract, just had the Owner sign a letter of intent that spelled out the project scope and design fees. It makes no mention of copyright ownership or how the drawings can be used in the future.
Methinks reading more slowly may be in order.
Plus, the absence of a written agreement, does not mean that there isn't a "contract".
jas5150, just because they the AIA contracts aren't being used doesn't mean there isn't a contract. It doesn't even have to be written to be legally enforceable... although written contracts maybe required by your state licensing board. Remember, licensing boards don't determine if contracts are legally enforceable. A court judge makes that determination in a legal case. However, the licensing board may still discipline you for not using a written contract when/if the board requires it by statutes or rules. A written contract basically needs to do the following: identify the parties to the contract, the contractual obligation (scope of work, services being contracted to provide, etc.), the compensation, and manner of how compensation is made. Usually, with a signing by both parties, and dated.
No mention of copyright ownership or use of it means (in case you are an independent contractor / business), you make the work (namely copyright and trademark applies) you own the rights. As IP owner, you have the legal right to do whatever you want. The client doesn't have any right to use beyond what the intellectual property rights laws allows without possessing a license from the IP owners. This means you decide what you want to allow the client to do with the license except those kinds of "fair-use" cases and the like limitations. Licensing is not the same as ownership of IP laws. When you license a client, you set the terms of the license and can set the conditions of revocations of such license. This is why you should license not transfer ownership rights to the intellectual property rights associated with your work. If you are a bona fide employee, it is typically seen as a "work for hire" situation when it comes to copyrights. The employer owns the copyrights. Just like the writers of news articles by a newspaper. The journalist is an employee and the newspaper company owns the copyrights to the article. Therefore, work for hire.
You need a lawyer, not the opinions of architects on the internet. Speaking off the cuff I think you have some ground to stand on considering the normal contract for architectural services normally calls instruments of service as distinct from the work product the client gets to use to construct their building and not something that the client owns. Unfortunately your project manager really let you down on this one.
I disagree, I’m an internet architect and my comments matter too. 8-)
The funny part will be when she tries to get another architect to stamp the drawings and she can't find one and gets the same answer.
"I'm going to sic my lawyer on you" is an empty threat if the law is on your side. The ball is in her court. I agree that the previous PM dropped the ball if they didn't even run the letter agreement past a lawyer first.
Don't you just love clients? This one sounds like a real dandy.
I think the client was attempting to pull a fast one on the OP by threatening litigation. The OP did mess up royally by working without a contract, they need to correct their internal procedures to make sure that never happens again. They are lucky this a-hole client paid all their fees for the original project. In my town, people use lack of a contract as a tool to to dodge paying some or all of the design fee.
Well since she threw in 'attorney' in the conversation I would not discuss that matter with her any more and have your attorney do the communication. I would notify your insurance company as this could be potentially a litigation.
No, she does not own the cad files, drawings, design. She paid for construction documents for another project that she used and her fees covered that.
Yes, OP should tell their client to send a demand letter from their attorney and the architecture firm's attorneys will review it and respond. There's a very good chance the client will never send the demand letter (because they don't have a case) and the matter will end there.
Exactly. Any good attorney can send a letter asking, but not demanding as they do not have a case regardless of contract or not. The work of the architect is protected by copyright even if they do not have contract. OP can send them a letter that they can buy the design and all the cad files and throw a number at them and release the design to another licensed professional.
The more zeroes on that number the better.
Sneaky, with todays market and how slammed everyone is, they probably will accept it.
This is why you don't do work without a decent contract in place. Reading through the OP I kept thinking, "that's covered in a standard AIA agreement," over and over as the story unfurled. Doesn't even need to be an AIA agreement, most other standard forms of agreement would cover these things. We do ourselves and our clients a disservice by not addressing these things up front.
I don't really have anything to add. I pretty much agree with everything that's been stated previously in the thread. Good luck to the OP.
Under Federal copyright law, you are not really a work for hire. That implies actually being an employee of the client. You are an independent business and therefore, federal copyright laws applies the copyrights to you UNLESS the intellectual property rights are EXPLICITLY stated will be transferred to the client. Clients gets a service and they get prints of the plans not the original master copy (your CAD files or BIM models). Those are instruments of service. There is over 100 years of court precedents that will side with the Architect has the copyright holder of their drawings unless the contract clearly and unambiguously indicates otherwise. Since it is about copyright, this can be remanded to be taken up in federal court and not some hokey pokey local court. Other aspects of contract issues can be at the local court but copyright is a federal law which only the Federal government administers copyright laws and therefore is federal court. Before doing anything, consult your firm's attorney and prepare for a legal battle. Consider the federal laws and review the contract. Intellectual Property Rights transfer or sale should follow some formal contractual agreement for intellectual property Acquisition Agreement where the Purchaser of the IP is agreeing to buy the particular intellectual property rights which would be exhibited with the agreement and the assignment of those rights transferring from your firm to that party. It needs to be done regardless of whether it is registered or not. Before suing, FILE the copyrights with the U.S. Copyright office. It will give you the ability to legally sue someone for infringing your copyrights besides violating the contract agreement and placing a burden. If there is no statement in the contract between you and the client that explicitly states that the client will receive those CAD models and the intellectual property rights to them. The client receiving the CAD model does not legally authorize them to use the drawings and copy them for getting permits beyond what is explicitly outlined in the contract. They need a IP license or they need to acquire the intellectual property ownership rights. You have the right to charge whatever you want. It is up to them whether or not they are willing to pay for that. Paying for architectural services is not the same as paying for intellectual property rights. Their ignorance of federal copyright law is not an excuse.
Under no circumstances would I recommend transferring intellectual property rights to that work to the client and the models/CAD files due to liability issues.
I agree with Everyday Architect. However, the OP has federal copyright laws on his side as the default owner. The issue boils down to the wordage of the contract and whether or not there is an agreement to give those files and intellectual property rights to use those drawings, models, etc., make copies and produce multiple buildings from those drawings. If there is not an unambiguous agreement that the client acquires the intellectual property rights when they pay for the services rendered then they don't own the IP. If there was then there would be also a sort of IP asset transfer agreement that would need to be prepared.... much like an agreement that indicates and outlines in detail what is being transferred (much like transferring the title to property)... it's a dot your i's and cross your t's thing that needs to be done so it is clear what is being transferred and it isn't just the assets but the associated intellectual property rights and can indicated in filing of IP at the U.S. Copyright Office or USPTO. In any case, those have to be done for clear paper trail of the ownership transfers of such assets. A lot of people don't know any of this and do things in a sloppy manner and it gets messy about who owns what.
I haven't read every word of Rick's word vomit above, but I suspect he's not actually wrong (but could probably state it more simply). Go look up the Architectural Works Copyright Protection Act if you want to get more into the details.
Even if the law is on our side and we don't have to state anything explicitly in an agreement to maintain copyright on our work, I still think we do ourselves a disservice if we don't address this with our clients. It would have saved the OP from this headache at the very least.
Not everything but it does need to be unambiguous. There has to be a clear intent to transfer the rights. If not, it's really a "no go" but it causes a lot of messy arguments. What I am referring to with stating explicitly, is to state explicitly any intent to sell or transfer copyrights to client or any other person. That has to be unambiguous and more or less explicit. Otherwise, without explicit intent to sell or transfer the copyright to the client, in the contract, it is to be assumed that copyright owner (in this case, the Architect) is the not intending to sell or transfer the copyrights to the client.
Point, if you intend to sell or transfer copyrights or any intellectual property rights, you need to be unambiguous... explicit about the intent without ambiguity. If you don't intend to transfer your intellectual property rights to another party, you don't need to say anything... your rights is your rights. Registering copyrights have its own benefits for taking legal action but you can find that info at the U.S. Copyright office website.
In this case, the architect is an independent contractor because they are a business of their own and do not work as an employee of the client. Client can not use the "work for hire" because the architect is not their employee. The specific architect is a "work for hire" situation with the architectural firm he or she is working for. The architectural firm is the copyright owner unless otherwise there is proof of indication otherwise.
Rick, I'm essentially agreeing with you. Stop typing.
"you don't need to say anything".... what I wrote there... don't overthink what I meant. If you don't indicate intent to sell/transfer your copyrights to client, it's to be presumed as "not for sale" (NFS).
As for deliverables, you don't have to be explicit in the design contract. You would need to communicate clearly what the deliverables would be... such as printed plans or PDFs or something along that line.
Sometimes I wonder why I even try.
Ok, we agree. There are other people who would twist my words to mean something totally different than what I meant by them. There are people on this forum that is like that and does it on purpose.
Maybe choose your words more carefully then so they are clear and harder to twist into something they're not. Also, you could refrain from trying to preemptively defend yourself from that when nobody is doing it. Both of these things would save all of us from the walls of texts and multiple replies when 0 are needed.
Good point.
"I look forward to discussing this matter with your attorney."
But don't ever do another project without a real contract.
Unless you are a starchitect, telling a client "We can't get to your project for a year" never goes over very well. A top notch outfit would refer the client to someone they knew could do a good job. I think some of the trouble here is because the client is very frustrated by being turned away.
We did refer them to another firm and provided contact information for their PIC that has multifamily experience. The sad truth is that this client doesn’t value what we do and is simply looking for a way to beat the system and develop plans for a fraction of the cost.
I understand now. You are right to turn them away.
^ In other words, they are a typical garden variety developer. Nothing new here.
Thanks everyone for the response. We’ve already had a discussion with our attorney, who laughed and asked if they also demand a mechanic to provide tools so someone else could fix their car.
We did receive a letter from their attorney simply asking if we could provide dwg files but made no claim to ownership or threaten litigation. They offered a release of liability for all future projects but our attorney rolled his eyes at it and said it does us no good if someone else tries to loop us into a lawsuit.
As for using AIA contracts, our firm uses them on every project. For whatever reason, this was a one off. Of course it’s the one that comes back and bites us in the butt.
I’m just flabbergasted by an owner who thinks they’ll find someone dumb enough to stamp drawings they didn’t develop. Granted I say this knowing a few shady individuals in our area who are known for being bottom feeding slime balls. We’re not talking about a small development. This is a $15,000,000 project so the fact that they would want someone to just stamp the drawings without even knowing what they’re looking is beyond shocking. Imagine having a CA discussion with an architect who didn’t know what they had stamped and getting an “I don’t know” response. But hey, whatever saves the developer a few thousand dollars.
We have our attorney drafting a response. We also let our insurance know but they also laughed at the situation and said they weren’t worried about it.
I feel the same way but it is surprising just how ignorant people are. Makes me think that we need to federally overhaul the education standards where all states would have to meet or exceed but the base line still needs to be a lot better like more hours in school from 8AM to 6PM. Additionally, teaching students about things like basics of copyright law. They don't have to be lawyers but they really need to understand the laws in layman terms so they aren't blissfully ignorant. If we don't teach the fundamentals, they really would have an excuse because it wasn't taught. Teach it. Teach kids to be responsible citizens from day 1 not goofball jackasses. The whole argument that the client thinks there is no such thing as copyright laws pertaining to architecture. There is actually two areas of copyright laws that covers architectural work... "architectural works" provision of the copyright law and also the "pictorial work" area of the copyright law. The latter having covered architectural drawings since pictorial work was covered under copyright law. Some people are just patently stupid.
I said it somewhere else on here recently, but it's my new favorite stat to explain society.
According to the department of education 54% of adults in the US have a prose literacy rate below a 6th grade level.
People aren't very bright.
I had the same issue with the very first solo project I ever did. Sleazy developer dude who really didn't know what he was doing and tried to get multiple houses built off the same floor plans. Told him to pound sand ( I had the copyright notification printed on the title block of my drawing sheets, everything that ever comes out of my office has the same note on it ).... It's more of a reminder for them but always get the contract done to secure the relationship with your client. Generally the professional standard is that you own the tools / drawings etc and they are part of copy right law which if breached allows you to go after them for infringement.
Have you or anyone here tried to pursue an infringement case? I recently discovered a client who skipped out on their bill took our copyrighted CAD files and gave them to an interior designer and probably another architect. I'm wondering if its worth spending the money on legal fees to go after them.
It won't always be easy but registering the copyright would be required and of course if you do it before the infringement occured, the better your options of restitution may be. The problem with most architects is they don't reuse the designs so it is one off designs. Copyrights infringement pursuits is better if you were doing mass production like books, software, music, videos, etc. which you sell many copies. The biggest thing you need for most federal court cases is sufficient level of damages from the infringement for the case to be heard in Federal court which has larger cases. You could build a case of loss in fees that you would get for them using the plans on multiple projects but remember, your fee for reuse isn't necessarily going to be as much as the original design but you can in effect set an estimate of the charges you may charge for modification of the design to different soil conditions. If you were in the stock house plan market, you may already have a base design and variations of the design with the foundations modified for various sites conditions then charge accordingly. In any case, if you did that, so to speak, you would have a stronger ability to substantiate the fees you have lost because they illegally reused the plans on multiple site locations. Copyright law system is primarily meant to protect the copyright owners exclusive rights to make copies of their work and sell it. If you are not making copies of your work or derivatives (modification of a base design), copyright laws is going to be of less value and your claim of loss is limited. For example, if you are only going to make $0 on copies because you aren't going to make copies, your loss or damage to you would be $0. I worked in software/video game design work in the past and copyright has considerably more value so damages can be calculated more easily. 1,000 illegal copies means potentially a loss of 1,000 units of sales. If the software was $20.00 then that would be $20,000 in losses. The math scales linearly, more or less. The problem for architects, in most cases, is how are they going to calculate their losses due to piracy/copyright infringement. In general, for one off designs or designs for a specific client, if the client is a developer, I would license it for a fee price per copy or per building built or some combination. You need to establish a system of licensing fees which you could use to calculate losses. It can't be pure hypothetical. For example, the original design might have been $50,000 and fees for each additional house built from that plan including derivatives of the design (modifications) might be $5,000 to $10,000 each fee, for example. Then you can cumulate it based on the number of houses the client builds based on the design. In this particular case, copyright infringement lawsuit would be challenging and you'll probably need to pursue a remedy of injunction, and/or seek statutory damages because actual damages and profit would be nearly zero and statutory damages might reward you more and might allow your case to be heard in Federal court.
You may also be award for court costs and attorney fees if you prevail. In this kind of case, I would likely consider statutory damages which will likely yield more than what I might get under "actual damages" and the profit the person makes. You need to choose wisely and that is something you consult with your legal counsel versus the opinion of an online forum user such as myself.
A good read on statutory damages in regards to copyright issues: https://copyrightalliance.org/faqs/statutory-damages-why-do-they-matter/
If the client did not yet make copies, right now, it is the time to register the work because if she does so and infringes on the copyright after you register it, you would be able to get statutory damages. The exact timeline is unclear. When is the work considered... published? This is a tricky issue here. If it is more than 3 months, the key is to register before actual infringement occurs.
I would suggest the firm to register the copyright to the work and pay the $65 or $130 (for registering it under both as pictorial work and architectural work). Of course, it depends on how much worth the designs are and if it has some distinctive character to the design making it worthy of registering the copyrights. This should be done sooner than later if you do register the work with U.S. Copyright office.
Dude.
Is that a threat?
*sigh*
*sigh* *facepalm* *looks at you* The thread head already concluded on January 26, 2022 when JArchDesigns wrote post starting with "Thanks everyone for the response". Other than that, its just chatter between and among the rest of us. The OP had concluded what he or she was discussing on this thread. Unless something new comes up, the thread directly to the original poster and original post has concluded.
Some of what I posted since that does point to things to consider. The other responses are in response to other posters not the original poster.
Rick, you've posted in this thread around 15 times since the time you say the thread was concluded. Yet I don't think you've added anything substantial to the original or tangential discussions.
Just stop already.
Not to change the subject, but sort of.. LOL!..
I am a drafting company who sub contracts my services to architects and engineers that do not have an in house drafting department. Therefore they do not have any cad standards, specific formats, no computer knowledge, etc. They simply just provide hand sketches for me to implement into cad and I take the project to completion in my format, ready for permit. Yes, they review the plans prior to submittal and will make corrections / changes along the way. But at the end of the job, are they entitled to my cad files? Nothing stops them from simply forwarding my file to a much more inexperienced draftsman that they can pay pennies on the dollar to have them copy my cad standards / format verbatim to take to future projects. Yes, I understand they own the rights of the design, but they do not own my proprietary cadd settings / format that come with the cad files....
Caddman
Where we follow your dreams from 'Conception' to 'Erection'
I think your situation is similar to the analogy of the tools of the car mechanic given above. They own the design, you sell them the deliverable they need to get the permit - probably electronic PDFS, yes? The tools that you use to create the deliverable absolutely belong to you.
I would not hand over CAD files without a signed release of liability, and in your case a significant fee. Even then I would try my best to purge extraneous layers, blocks, families, and IP to provide the bare min needed for that project and dont forget to explode everything including the hatches ;)
Both of you are on the same page I am with the cad files. As for PDF's, I always provide PDF files, no questions asked. They can look at them all day long. I do provide typical base plans in cad to sub contractors, etc. for them to complete their part of the project. Not before fully purging everything from the file first.. I've spent 30 years streamlining my cad standards (Outside of your typical cringeworthy AEC standards and worthless school taught garbage) that are of course never implemented in any of my drawings. So yes Jonathan, supplying a copied version of a 'barebone, rats nest' cad file is what they'll get. All xref'd drawings, stacked layers, including notes, dims and everything simply gets changed to layer '0'... Case closed. It will be sure to warp the minds of whoever wants try to dissect it.
I used to think I needed a fee to hand off cad files, but I no longer ask that. I've been paid for my time and there's nothing remarkable about the cad standards that make any of it intellectual property.
That said, I provide pdf's to owners freely and as often as they ask. But I don't provide CAD to owners unless needed by another specific professional entity (deferred submittal design/build, another design pro doing work on the property after my project, etc), and I do strip out irrelevant items (dtls, interior elevations, building & wall sections -- the pdf's cover those items) and of course my stamp. I do get a liability release, but I don't charge -- that just seems somehow retributional to me. I suppose there may be special cases, non-disclosures and such, but mostly I do not begrudge some designer asking me for the plans for a project I did years prior for reasonable use. Again, not just making plans available willy nilly, but certainly giving them when someone has a reasonable use.
Quite a few major cad programs can read a pdf these days anyway, but I still prefer to get a cad plan directly if I can...saves some guessing. I actually just requested and received a plan from another architect this week. Just a liability signature and boom, done!
An n=1 story: I had a local architect say he wanted $1k and a liability release for some plans of a SFH property when I was reaching out to see if they were available. The previous permitted work was 4yrs old. I couldn't help but think to myself: why would I pay for disclaimed dimensions when i could pay a jr staffer to just go measure and be able to rely on them. The pretend lost wages idea just comes off as petty IMHO.
Proto, I half agree. I also hand out cad plans to old projects when new homeowners are doing additions, etc. I would only ask for a fee when it is additional scope to provide cad beyond your original contract with your active client. In this case, a drafter's contract with the architect because the lost wage threat is immediate and apparent. Otherwise, your original contract would cover any changes or modifications needed and how they would be compensated for that time.
When I work with outside drafters/designers, as part of our contract I require ownership of the CAD files.
"We follow your dreams to...erection"--your tagline must get a few chuckles from those with juvenile senses of humor?
WG that's a smart play from the hiring architects' side.
Unless you are an employee of the client or it was outlined in the contract that fees the client pays in its entirety include the purchasing of the intellectual property rights to the design, if you created the work, you own the intellectual property rights you have successfully registered (in case of patents and trademarks), and automatically when you created the work in case of copyrights. IP rights issues are federal law / federal legal jurisdiction. Without solid proof of the IP ownership rights transfer as part of the contract terms in a recorded/documented form, you own the IP rights. I would offer a limited license but retain the ownership right to the IP but I generally will not give up the CAD. I would recommend they pay you for reprographic copies made and limited permission to use the design for multiple projects or a license to allow the use of certain drawings for future renovation/remodel work or something but always keep the ownership rights to my IP which includes a number of instruments of services.
When it comes with consultants or employees, it could be a license or IP ownership rights or some contractual right/license to use the CAD files in some fashion much like Wood Guy said.
PS: Didn't realize this thread was resurrected. Didn't scroll back from the latest comments until after I posted the immediately preceding comment by me.
I have run into this before. My response is usually: " against office policy to release cad drawings". Its also clearly stated on every contract. No CAD files will be provided to owner.