In the recent case of Milankov Designs & Project Management v Di Latte, the WA Supreme Court ordered 2 home owners and an architect they engaged to pay a designer almost $160,000 in damages for the unauthorised use of house plans. Mr and Mrs Di Latte engaged Milankov Designs & Project Management to design and prepare drawings for a home to be built at their property. They agreed that Milankov would prepare the plans for the development stage and, then, the construction drawings. After Milankov had prepared the development plans (including plans submitted to council for building licence approval) and the Di Lattes had made several payments to Milankov, the relationship broke down and the Di Lattes terminated Milankov’s engagement. Milankov then notified the Di Lattes in writing that Milankov owned copyright in the plans and that the Di Lattes were not entitled to use these without permission, including by building their house.
Nonetheless, the Di Lattes used the plans to have an architect prepare construction drawings and then to construct the house.
Milankov sued the Di Lattes, and the architect. The Di Lattes claimed their agreement with Milankov contained an implied term that allowed them to use the plans to construct their house. The judge disagreed and found that they had infringed Milankov’s copyright in the plans – both by having the architect prepare the construction drawings and by building the house. While there are instances where a licence to use plans will be implied into these kind of agreements, this will turn on the wording of the particular agreement.
The architect was also found to have infringed Milankov’s copyright.
The damages sum of $160,000 is the amount that Milankov would have earned if it had created the construction drawings for the build.
This case serves as a warning to home owners and is a reminder of the risks involved in using plans without permission, even when they were created for that same home owner.
Read the fine print! Carefully check contracts you enter with designers, architects and builders and be clear about when you can and cannot use the designs they create for you. The designer will usually retain ownership of copyright, which means you can only use the plans for the particular purposes agreed.
Under many contracts, if the relationship breaks down then home owners are not allowed to use the plans already prepared in order to finish the job. If you are unsure about this, check with a lawyer, or you could find yourself on the wrong side of a copyright claim.
Copyright infringement can still occur even if the plans undergo changes. The test is whether a “substantial part” has been reproduced without permission. Even when the end result looks quite different, this can still be an infringement.
The law is the same whether your project is a new build, an extension or renovation.
Our Guest Contributor:
Savannah Hardingham is an intellectual property (IP) lawyer with experience in the protection, management, exploitation and enforcement of IP rights including trade marks, copyright and designs. She has a broad range of litigation experience which includes IP matters as well as disputes regarding the misuse of confidential information, defamation, passing off and misleading and deceptive conduct.
Savannah has acted for a range of clients including architects and designer builders, as well as brand owners, designers and retailers in the fashion, footwear and furniture industries.
To read more simply visit www.klgates.com/savannah-holly-hardingham.