Architect – Drawings – Copyright infringement – Claimant engaging architects in connection with planning application – Planning permissions being granted following submission of architects’ drawings – Claimant unable to complete purchase of site and landowner selling to defendants who completed development – Claimant seeking damages for copyright infringement – Whether defendants wrongfully using drawings for promotion, marketing and construction of development – Claim allowed in part
The claimant was a property development company formed to develop property in the UK primarily for Middle Eastern investors. It spotted an opportunity to develop a site in Sheffield city centre which housed a pair of office buildings suitable for student accommodation. The claimant engaged architects as consultants for the purpose of obtaining planning permission for the proposed development. The terms of engagement provided that the architects owned copyright in any drawings it created and the claimant was granted a non-exclusive licence to use the same in connection with the project. They also provided for the architects’ fees, the fee for the preparation of all drawings and other work to achieve planning consent, being £20,000 plus VAT. If the claimant disposed of the building prior to the commencement of Phase 2 of the project, the architects were to be paid an additional £40,000 plus VAT to compensated them for the lost opportunity of being engaged by the claimant as main architects for the development.
In accordance with usual practice, the planning application documents, including the approved drawings, were posted on the local authority’s planning portal where they became available for public inspection. Planning permission was granted following the submission of, amongst other things, drawings prepared by the architects in relation to the site and it was a condition of each grant that the development be carried out in complete accordance with a list of approved drawings. The claimant was unable to fund its intended purchase of the site and the landowner sold it to the defendants, who completed the development and sold it to a third party.
The claimant considered that the defendants had wrongfully used the drawings during the promotion, marketing and construction of the development. The architects assignment copyright in the drawings, including the right to sue for back damages, to the claimant which claimed damages for copyright infringement. The court directed that the trial be limited to the issues of liability, injunctive relief and the liability of the defendants for damages pursuant to section 97(2) of the Copyright Designs and Patents Act 1988.
Held: The claim was allowed in part.
(1) The core legislation for most planning matters was the Town and Country Planning Act 1990 and section 57 provided that planning permission was required for the carrying out of any development of land. Anybody could apply for planning permission to develop any land and any granted permission related to the land and what might be done with it. There were no statutory or other intellectual property rights in the planning permission itself; anyone might avail themselves of it so long as they satisfied its conditions. Planning permission was usually granted by reference to drawings which illustrated the existing and proposed development and it was a usual condition of the grant that the development be carried out in accordance with specified drawings. That enabled the local authority to control any development in their locality. It was also usual for a local authority to post all planning applications and documents relating thereto on their website with a facility for members of the public to download those documents. Applicants for planning permission had to expect that drawings they submitted would be publicly available and the planning process required applicants to consent to that. Accordingly, the planning permission granted did not belong to the claimant.
(2) Copyright subsisted only in original artistic works. In the present case, sufficient intellectual skill had gone into the drawing depicting the proposed use of the available space for copyright to subsist therein. The bar was not high and copyright subsisted in graphic works irrespective of artistic quality: Designers Guild Ltd v Russell Williams (Textiles) Ltd (t/a Washington DC) [2000] 1 WLR 2416 followed.
(3) The court’s task was to consider whether a substantial part of the copyright work had been reproduced by looking at the similarities between the two works in the context of the artistic skill and labour expressed in the claimant’s work. In the present case, the defendants had infringed copyright by using copies of the drawings for marketing or architect/tendering/estimating purposes and making AutoCAD versions for those purposes. The use of the drawings to construct the building infringed copyright in part where the building was sufficiently similar to the design of the drawings. However, the defendants’ creation of computer generated images for use in marketing materials did not infringe copyright since those images were not derived from a substantial part of the drawings.
(4) The court would order an enquiry as to damages or an account of profits in respect of the infringements found to have occurred. In determining a claimant’s entitlement to additional damages under section 97(2) of the 1988 Act, a defendant’s knowledge was a very relevant matter and if a defendant fairly believed that it was not infringing copyright, there needed to be something more for its conduct to satisfy the flagrancy test. There was a danger of confusing benefits flowing from the grant of planning permission and benefits by reason of infringement of copyright; the court was concerned with the latter since it was only the latter in which the claimant had any interest. In circumstances where flagrancy was not established and the benefits from infringement as distinct from the grant of planning consent were unclear, the court was not satisfied that the claimant had established a claim for additional damages under section 97(2): Cala Homes (South) Ltd v Alfred McAlpine Homes East Ltd (No 1) [1995] FSR 818 and Nottinghamshire Healthcare NHS Trust v News Group Newspapers Ltd [2002] EWHC 409 (Ch) applied.
(5) The claimant had not established that an injunction was needed to protect any legitimate interest which it retained in its copyrights. There was no sufficient threat of actual or likely damage to engage the preventive jurisdiction of the court. An injunction was a discretionary remedy only granted when it was suitable and appropriate. Those criteria were not satisfied in the present case.
Mark Vanhegan QC, David Ivison (instructed by WH Matthews & Co) appeared for the claimant; Guy Burkill QC and Georgina Messenger (instructed by Myerson Solicitors LLP, of Altrincham) appeared for the defendants.
Eileen O’Grady, barrister
Click here to read a transcript of Signature Realty Ltd v Fortis Developments Ltd and another.
