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Beware of copyright when considering existing planning permission

02 March 2017

The recent judgment in Signature Realty Ltd v Fortis Developments Ltd & Anor is an excellent example of the application of copyright in a planning and building context.

It confirmed that architect drawings used to obtain planning permission can be sufficiently ‘original’ to qualify for copyright protection and that use of those drawings without permission for a subsequent build can amount to copyright infringement.

Background

The claimant property developer, Signature, wanted to convert office buildings in Sheffield into student accommodation. Signature exchanged contracts with the land owner to acquire the site and engaged an architect to produce drawings to obtain planning permission. Signature was unable to complete the purchase of the site due to lack of funds, but succeeded in gaining planning permission. A condition of the planning permission was that the site was developed in accordance with the drawings submitted with the planning application (the “Drawings”).

Fortis subsequently purchased the site from the land owner. Fortis downloaded the Drawings from the local authority website and was aware that the site had to be developed in accordance with the Drawings. It commissioned its own architect to produce drawings to enable it to build the accommodation and applied for minor amendments to the planning permission. Before Fortis completed the development, Signature obtained an assignment of copyright in the Drawings from the architects who had produced them. Signature then brought a claim for copyright infringement against Fortis and its construction company, Beaumont. Signature alleged that Fortis and Beaumont had used the Drawings or pdf copies of them without consent in the promotion, marketing and construction of the development on the site. The development was completed in 2016; a year after Signature issued infringement proceedings.

Originality

Fortis and Beaumont admitted they had made some use of the Drawings to develop the site. However, they argued that the Drawings lacked sufficient ‘originality’ to be protected by copyright. In fact, they claimed the Drawing were themselves based on other drawings prepared by a third party. The judge gave short shrift to the originality argument. He reiterated longstanding case law that the bar for originality is a low one. There was, in his view, sufficient intellectual skill in the Drawings for copyright to subsist.

Infringement

Fortis also asserted that it had an implied licence from the architect to use the Drawings to build the development. This argument failed on the grounds that it was not Fortis who engaged the architect in the first place. All the judge had left to do was consider whether or not the acts complained of infringed the Drawings.

Signature complained about four categories of use of the Drawings: 1) use for marketing or architect/tendering/estimating purposes; 2) use for making AutoCAD versions of the Drawings; 3) use to make altered copies of the Drawings for marketing, architect, tendering and/or in the construction of the development; and 4) use for the making of CGI images for marketing collateral.

The judge held that the use of the Drawings in classes 1 and 2 was infringing. In relation to class 3, some of the altered drawings were held to infringe but others did not reproduce a substantial part of the Drawings and therefore did not infringe. The case on class 4 failed as a substantial part of the Drawings was not copied.

Remedies

As is common in intellectual property infringement cases, the judge ordered a separate hearing for an enquiry as to damages caused by the infringement or an account of profit. This means that the court will decide separately on the issue of quantum.

The judge considered whether the infringement should give rise to additional damages for flagrancy (i.e. special or additional statutory damages that the court has discretion to award to mark its disapproval of the conduct complained of where the defendant has infringed in a very deliberate or calculated way). The judge was not satisfied that was the case. In fact, on the evidence, it was clear that Fortis honestly believed their acts were not infringing and that Fortis believed the claim was “misguided”.

The judge also considered Signature’s request for an injunction to restrain further infringement of the Drawings. He declined to grant an injunction on the basis that an injunction would serve no useful purpose: the development had been built; there was no evidence that there would be future infringement; and neither Signature nor Fortis had any continued interest in the development (as it had been sold).

Planning ahead

This decision is a useful reminder to:

a) Architects, as it demonstrates how they can enforce their rights in circumstances where a new developer takes over a project and wants to use a different architect. Architects should always include copyright notices on their drawings and keep an eye out for developments using planning permission they worked on and where the ownership of the land in question changes hands;

b) Buyers of land with the benefit of planning, to ensure they take an assignment of the copyright or, more commonly, obtain a licence to use relevant drawings; and

c) Those seeking planning permission, to secure a copyright licence that is capable of assignment or grant of sub-licence.

Destruction of the building was not sought in this case, however, it will be of comfort to landowners that it was accepted that injunctive relief in these circumstances should not interfere with the continued use of the building. The judge refused to grant an injunction at all as there was no legitimate interest to protect, despite the fact that historic infringements remained on the internet.

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