Legal Issues Surrounding the Use of Digital Intellectual Property on Design and Construction Projects (2013)

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4 scale.”14 Because BIM is causing changes in project development, legal relationships, and contracts and procedures,15 the digest addresses how transportation departments and their contracting documents and procedures are responding to the new technology. Thus, Section II discusses the applicability of the copyright laws to building information modeling and concludes that BIM models based on an original designer’s drawings are copyrightable works owned by the designer, unless otherwise modified by contract. Section III discusses whether a transportation de- partment or another designer may own the copyright to a model. Section IV provides an overview of the types of con- tractual provisions and protocols that transportation departments may want to consider including as part of their bid and contracting documents for models for con- struction projects, including provisions regarding col- laborators’ responsibility for models, their access to models, and the ownership of a collaborator’s contribu- tions to a model.16 Section V discusses the protection of models and col- laborators particularly in connection with the potential liability of collaborators for their changes to a model on which other collaborators have relied. Section VI explains how some departments are pro- tecting themselves from claims by collaborators and others by using disclaimers, as well as other means, when providing a model or the electronic data needed to prepare a model. Section VII discusses the use of digital signatures with BIM, federal and state laws and regulations appli- cable to digital signatures, the differing levels of secu- rity and types of digital signatures, and current practice of transportation departments regarding the use of digi- tal signatures. Section VIII discusses interoperability issues that departments may encounter when using BIM and what departments are doing or may do to avoid or resolve them. Section IX considers other issues that may limit copyright protection for a model, such as when an in- fringer either copies a model or copies an underlying model and infringes the owner’s copyright by creating a derivative model. Section IX also discusses the various elements of models that may not be copyrightable. Section X considers whether a model also constitutes a trade secret and whether a claim for misappropriation 14 Sheldon W. Halpern, The Digital Threat to the Normative Role of Copyright Law, 62 OHIO ST. L.J. 569 (2001). 15 Howard W. Ashcraft, New Paradigms for Design Profes- sionals—New Issues for Construction Lawyers (Feb. 2002), available at http://www.terrarrg.com/images/pdfs/ NewParadigms.pdf., hereinafter cited as “New Paradigms.” 16 See generally James R. Sims III & Brett I. Miller, A Blue- print for Understanding Copyright Ownership in Architectural Works, 20 FRANCHISE L.J. 52, 57 (2000), hereinafter cited as “Sims & Miller.” of a model as a trade secret is preempted by the Copy- right Act. Section XI reviews cases that have dealt with the is- sue of whether electronic information, such as a BIM model, is subject to disclosure under public information laws, and, if so, whether a public agency may require a requestor of information to sign an end-user agreement before a model is disclosed. Finally, Section XII discusses the transportation de- partments’ responses to a survey conducted for the di- gest to the extent that the departments’ responses have not been discussed previously in the digest. II. APPLICABILITY OF THE COPYRIGHT LAWS TO BUILDING INFORMATION MODELING A. Models as Copyrightable Works Intellectual property law consists of patent, trade- mark, copyright, unfair competition, and trade secret law.17 Copyright law is the law that applies to the pro- tection of digital intellectual property, because “virtual space consists mainly of text and images, and therefore, by its nature, makes copyright a powerful tool for de- termining ownership.”18 The copyright laws recognize three types of copyrighted works in which the copyright holder may claim rights: the Section 102(a) creative work, the Section 103 compilation, and the Section 103 derivative work.19 The digest discusses creative works and derivative works in connection with BIM. Only an author of an original “work” as defined in the Copyright Act is entitled to copyright protection.20 As will be seen, for purposes of the digest, the terms “work” and “model” are interchangeable for purposes of copyrightability. Copyright law balances an author’s interest in receiving the benefit of a work with the pub- lic’s interest in having access to the work.21 The copy- right laws derive from the United States Constitution whereby Congress has the power to grant “Authors and Inventors the exclusive right to their respective Writ- ings and Discoveries.”22 One does not have to be profes- sionally licensed to be the author of an original work. Registration of a copyright is not required for an author to have a copyright in a work; “copyright automatically inheres in a work the moment it is ‘created,’ which is to say ‘when it is fixed in a copy…for the first time.’”23 17 Daniel C. Miller, Determining Ownership in Virtual Worlds: Copyright and License Agreements, 22 REV. LITIG. 435, 438 (2003), hereinafter cited as “Daniel Miller.” 18 Id. 19 L. Ray Patterson & Stanley F. Birch, Jr., A Unified The- ory of Copyright, Chapter 6: “Copyright and Fair Use”, 46 HOUS. L. REV. 321, 332 (2009), hereinafter cited as “Patterson & Birch.” 20 MELVILLE B. NIMMER, 1 NIMMER ON COPYRIGHT § 1-103 and § 106[A]. 21 Miller, supra note 17, at 444. 22 U.S. CONST. art. I, § 1, cl. 8. 23 NIMMER, supra note 20, at vol. 2 § 7.16[A][1].

5 However, a copyright must be registered before bring- ing an action for infringement.24 Whether a designer, for example, may hold a copy- right in a BIM model depends on the originality of the designer’s model, as well as on whether the model is copyrightable under one of the classifications in Section 102(a).25 Architectural plans and drawings are copy- rightable as “pictorial, graphic, [or] sculptural works”26 and receive copyright protection as both technical draw- ings and as architectural works.27 Whether a design or model based thereon is copyrightable depends on the originality of the “the selection of [the] elements and in the coordination and arrangement of those elements into a design.”28 Also copyrightable are “audiovisual works.”29 Thus, a designer’s original work, including a digital model thereof, is subject to the copyright laws, or as one commentator writes: “The creator of the original plans, not the creator of the BIM model…is entitled to the copyrights in the generated model.”30 24 Id. § 7.16[B][1][a]. Also, “[o]nce the plaintiff produces a copyright certificate he establishes a prima facie case of valid- ity of the copyright and the burden of production shifts to the defendant to introduce evidence of invalidity.” Fred Riley Home Bldg. Corp. v. Cosgrove, 883 F. Supp. 1478, 1481 (D. Kan. 1985) (citing Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 826 (11th Cir. 1982)). 25 Raghu Seshadri, Bridging the Digital Divide: How the Implied License Doctrine Could Narrow the Copynorm— Copyright Gap, U.C.L.A. J. L. & TECH. 3, 14 (2007) (citing NIMMER ON COPYRIGHT § 13.01[A]). As one authority notes: It is clear that copyright protects an architect’s plans from di- rect copying to make another set of plans, but whether protec- tion extends to the use of copyrighted plans to build a structure is less clear. Courts are divided as to whether unauthorized use, as opposed to copying, of copyrighted plans violates the archi- tect’s copyright. Furthermore, copyright protects few, if any, elements of a completed structure. Currently, any person may construct an exact duplicate of a building as long as that person has not copied the copyrighted plans without the architect’s permission. Dawn M. Larsen, The Effect of the Berne Implementation Act of 1988 on Copyright Protection for Architectural Struc- tures, U. ILL. L. REV. 151 (1990). 26 Eales v. Environmental Lifestyles, Inc., 958 F.2d 876 (9th Cir. 1992). 27 Thomas v. Artino, 723 F. Supp. 2d 822 (D. Md. 2010), (Pointing out that the work must be registered as both). See Harvester, Inc. v. Rule Joy Trammell + Rubio, LLC, 716 F. Supp. 2d 428, 436 (E.D. Va. 2010) (stating that architectural drawings receive copyright protection under both 17 U.S.C. § 102(a)(5) (“pictorial, graphic, and sculptural works”) and § 102(a)(8) (“architectural works”). 28 David Shipley, The Architectural Works Copyright Protec- tion Act at Twenty: Has Full Protection Made a Difference? 18 J. INTELL. PROP. L. 1, 23 (2010) (quoting Lindal Cedar Homes, Inc. v. Ireland, 2004 U.S. Dist. LEXIS 18878, at *6 (D. Or. 2004) (noting that the AWCPA did not affect protection of plans as pictorial, graphic, or sculptural works)). 29 17 U.S.C. § 102(a)(6) (2009). 30 Brunka, supra note 12, at 184–85 (discussing Meshwerks, Inc. v. Toyota Motor Sales U.S.A., 528 F.3d 1258 (10th Cir. 2008), cert. denied, 2009 U.S. LEXIS 727 (U.S., Jan. 21, 2009) A computer program for digital information model- ing is protected under the Copyright Act as a “literary work.”31 Because of an amendment in 1980 of the Copy- right Act, a definition of a “computer program” is in- cluded in the definitional section of copyrightable sub- ject matter.32 A computer program is protected from unauthorized copying as a literary work if the program satisfies the originality and fixation requirements of the Copyright Act.33 Expression in a computer program is copyrightable, but the actual processes or methods em- bodied in a program are not.34 An audiovisual program and the computer program that implements it are sepa- rately copyrightable.35 An infringer may copy the audiovisuals or the underlying computer program.36 Thus, with respect to BIM, computer programs, audio- visual works, and models derived from architectural or and stating that the “translation of a car into a three- dimensional mesh frame is a derivative work, which the crea- tor of the model does not retain rights to.” Id. at 184). 31 17 U.S.C. § 101; Apple Computer, Inc. v. Franklin Com- puter Corp., 714 F.2d 1240, 1249 (3d Cir. 1983). Cert. dis- missed, 464 U.S. 1033. 32 M. Kramer Manuf. Co. v. Andrews, 783 F.2d 421, 432 (4th Cir. 1986) (footnote omitted); NIMMER, supra note 20, at vol. 1 § 2.04 [C][3], at 2-51 (stating that “[i]t is…firmly estab- lished that computer programs qualify as [a] work of author- ship” subject to copyright protection); Brignoli v. Balch Hardy and Scheinman, Inc., 645 F. Supp. 1201, 1204 (1986) (stating that “[t]he great weight of authority indicates that computer programs are entitled to protection under copyright law”) (cit- ing Videotronics, Inc. v. Bend Electronics, 564 F. Supp. 1471, 1477 (D. Nev. 1983); Williams Electronics, Inc. v. Artic Int’l, Inc., 685 F.2d 870, 875 (3d Cir. 1982); Apple Computer, Inc. v. Formula Int’l, Inc., 562 F. Supp. 775 (C.D. Cal. 1983), aff’d, 725 F.2d 521 (9th Cir. 1984)). 33 Miller, supra note 17, at 435, 448. Apple Computer, Inc. v. Franklin Computer Corp. 714 F.2d 1240 (3d Cir. 1983). 34 As one source notes, “[t]he creator of an original BIM model, i.e. the architect, maintains both the ownership rights of the file itself and the copyrights. With respect to the former right, when utilizing BIM on a construction project to maxi- mize efficiency of the project, many parties collaborate using this three-dimensional building program, such as architects, engineers, and consultants.” Brunka, supra note 12, at 174 (footnotes omitted). As for processes, as another writer ob- serves, “[p]atent law, not copyright law, provides the traditional mode of protection for utilitarian works such as processes. Proc- esses implemented by computer programs are patentable. The Patent and Trademark Office has issued a large number of patents claiming processes implemented by computer pro- grams.” Steven R. Englund, Ideas, Process, or Protected Ex- pression?: Determining the Scope of Copyright Protection of the Structure of Computer Programs. 88 MICH. L REV. 866 (1990) at material accompanying notes 136–138 (footnotes omitted (emphasis supplied). See also Annot., Copyright Protection of Computer Programs, 180 A.L.R. FED. 1 (2002). 35 M. Kramer Manuf. Co., 783 F.2d 421, at 441 (citation omitted). 36 Id. at 445. “Copying is ordinarily, due to the lack of direct evidence, established by proof that the defendant had access to the plaintiff’s work and produced a work that is substantially similar to the plaintiff’s work.” Id. (citation omitted).