In our increasingly hyper-connected world, with access to almost anything on the web, it is crucial for professionals to know how copyright in South African law applies to consulting engineers, designers, architects and the like.
Legal risk advisor, Samantha Baleson of Aon South Africa, notes that copyright law in South Africa is governed by the Copyright Act, (Act 98 of 1978). “The Act provides protection against the unauthorised copying or reproduction of certain ‘works’. Infringements of intellectual property (IP) or copyright are also dealt with in the Act and the main remedies which can be sought to obtain relief are an interdict and an award for damages,” she says.
Where does the copyright vest?
“Copyright generally vests in the author of work, except where the work is made by the author in the course of his/her employment, in which case the employer is usually the owner in terms of the contract of employment. For this reason, copyright vests in the professional practice or firm and not in the actual employee who created the document or drawing,” Baleson explains.
“A client may use the copyright or intellectual property for the sole purpose of a project for which he has remunerated the service provider that created it. Ownership of the IP, however, still vests in the service provider, unless the agreement with the client stipulates otherwise,” she adds.
The work, designs or presentations of built environment professionals often include design viewpoints and draft designs. “Although a client may be entitled to the use of copyright on the project for which he remunerates the professional, certain clients may attempt to use such principles and designs improperly to their own advantage while they undertake the work themselves and/or re-invite tenders based on these ideas of the professional,” Baleson says.
A practical example
An architect and engineer put together the designs for a residential complex. The client and/or developer pay for the designs and are entitled to the use of intellectual property for that specific project. The client then uses said designs for various other complexes without purchasing the copyright or intellectual property from the professionals. The problem is twofold:
• The professional is at risk of being sued in terms of his/her designs for projects he/she wasn’t even aware of.
• The professional is not remunerated for the use of his/her intellectual property.
How do you protect yourself?
Where copyright is required by a client, it is recommended that the agreement between the client and professional contains a provision to the following effect:
“The professional shall not be liable (whether in contract or in delict) to the client or any other party whatsoever as a result of the use of the consulting engineers’ designs, drawings and specifications in any project or works other than those for which they are intended, detailed in this agreement, and the client hereby indemnifies the professional against any claim which may be made against him by any party whatsoever in any way arising out of the unauthorised use of such documentation for such other purpose as aforesaid.”
Professionals are also advised to indicate that they should be adequately remunerated for their services before intellectual property ownership passes to the client. This provision could be as follows:
“The client retains the design rights and other intellectual property rights of all documents prepared by the consultant upon full payment for the services to the consultant. The consultant shall be entitled to use them and copy them only for the project and the purpose for which they are intended, and needs to obtain the client’s permission to copy for such use.”
Professionals are advised to mark documents to the effect that copyright subsists in such documents. Suitable wording would be as follows:
“Copyright vests in this document/drawing and no use, reproduction or duplication thereof may occur without the written consent of the author.”
In addition, the name of the copyright owner and the year in which the copyright came into existence should be stated, for example: “©Topside Engineering (Pty) Ltd. 2017.”
Not all professional indemnity have the same wording and may contain a clause that may cover the insured’s breach of copyright subject to the terms and conditions of the policy. It may be similar to this wording:
“The insurers will indemnify the insured for any claim or claims first made against the insured during the period of insurance by reason of any inadvertent disclosure of the confidential information, or any inadvertent infringement of any patent or copyright or the inadvertent unauthorised use or inadvertent infringement of the systems or designs of others.”
“It is important to keep in mind that your intellectual property as a professional can be considered as a valuable asset to your business. As there are certain associated risks with same, the necessary precautions and wordings should be considered,” Baleson urges.
“Proactive risk management is a vital business tool and is a process that is best undertaken with the aid of a specialist insurance broker and legal risk consulting service,” she concludes.
Acknowledgement is given to Aon for the information provided to write this article. Please note that it is for general information purposes only and does not constitute legal advice. Always consult with your legal advisor or professional insurance broker for advice.