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

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6 engineering plans or designs are separately copyright- able.37 A threshold issue concerns who owns a model cre- ated by the use of BIM as well as any models that are derived from an underlying model. The answer depends on the copyright laws and the contract for the project. Except in the circumstances discussed in the digest, under the copyright laws it is the creator of a model who has exclusive rights to the model, including the right to make derivative models.38 Of interest to trans- portation departments is that for the most part the de- fault rules established by the copyright laws may be altered by license or other agreement. B. Whether the Government May Have a Copyright in Digital Intellectual Property 1. United States Government Under Section 105 of the Copyright Act, copyright protection is not available for any work of the United States government. Federal agencies do not have copy- right protection for any work created by the govern- ment;39 for example, the decennial census is not copy- rightable.40 However, the government may hold copyrights that are transferred to the government (in- cluding by an assignment or a bequest)41 or when the government commissions a work prepared by an inde- pendent contractor.42 2. State and Local Governments Whether a state or local agency may copyright a work is a matter of state law.43 The Copyright Act does not preclude a government employee’s work from being copyrightable by the state or its subdivisions.44 At least 37 Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1234 (3d Cir. 1986) (citing H.R. REP. NO. 1476, 94th Cong., 2d Sess. 54, reprinted in 1976 U.S.C.C.A.N. 5659, 5667); M. Kramer Manuf. Co., 783 F.2d at 435 n.12. 38 Dwight A. Larson & Kate A. Golden, Construction Law: Entering the Brave, New World: An Introduction to Contracting for Building Information Modeling, 34 WM. MITCHELL L. REV. 75, 104 (2007), hereinafter cited as “Larson & Golden.” 39 17 U.S.C. §§ 101, 105 (2009). 40 Robert Gellman, Twin Evils: Government Copyright and Copyright-Like Controls over Government Information, 45 SYRACUSE L. REV. 999, 1003 (1995), hereinafter cited as “Gell- man.” 41 17 U.S.C. § 105. 42 See Robert A. Gorman, Copyright Law, 52 (2d .ed. 2006), available at http://www.fjc.gov/public/pdf.nsf/lookup/copyright. pdf/$file/copyright.pdf, at 60; Schnapper v. Foley, 667 F.2d 102 (D.C. Dir. 1981), cert. denied, 455 U.S. 948, 102 S. Ct. 1448, 71 L. Ed. 2d 661 (1982). 43 County of Santa Clara v. Superior Court, 89 Cal. Rptr. 3d 374, 397 (2009) (citation omitted) (stating that some state laws “explicitly recognize the authority of public officials or agencies to copyright specific public records that they have created”). 44 County of Suffolk, New York v. First American Real Es- tate Solutions, 261 F.3d 179, 187 (2d Cir. 2001) (citations omit- ted). 28 states claim the right to copyright, “and state copy- right claims are routinely made for some categories of state data….”45 The majority rule appears to be that, unless prohibited by state law, state and local agencies may seek copyright protection for their works, which would include a BIM program or model, including one prepared by a state agency’s staff. III. THE TRANSPORTATION DEPARTMENT OR OTHER DESIGNER AS THE OWNER OF A MODEL A. Designers of Models for Transportation Departments The state transportation departments’ responses to the survey varied, with some departments stating that the department’s designer or project engineer creates a model for a project;46 that the departments either cre- ated their own models or used consultants for that pur- pose;47 or that an independent contractor or a consult- ant hired by the contractor serves as the designer.48 The Michigan Department of Transportation (DOT) stated that although BIM is used mostly on design- build projects,49 the department’s goal is to publish (pre- bid) models at the time of project advertisement.50 The Missouri DOT reported that although “some Depart- ment designers have created their own models the mod- els are not shared with contractors during the bidding phase. Contractors typically have developed their own models using the contract plans.”51 The department does not engage a consultant solely for the purpose of creating a model.52 In Wisconsin, the DOT’s projects currently are limited to Automated Machine Guidance 45 Gellman, supra note 40, at 1027 (footnote omitted). 46 Caltrans Response; DelDOT Response (stating that the department creates a roadway model for a large majority of its construction projects); MDOT (stating that there have been a few pilot projects when the department provided a 3D model to the contractor); MnDOT Response (uses MnDOT staff). 47 Caltrans Response. FDOT reports that it has more than 10 years of experience with the electronic delivery of CADD files and plans in digital format. FDOT also states that the projects that have utilized BIM to date when surfaces were modeled or extracted have been done by in-house staff and consultant staff but that consultants currently perform about 90 percent of FDOT’s designs. MoDOT (stating that a model is developed by the internal design staff or by a consultant under contract for the design as a by-product of the roadway design process); PennDOT Response (PennDOT employees or consultants). 48 MDOT Response (stating that in the future the depart- ment will provide models). 49 Id. 50 Id. 51 MoDOT Response. Texas identified “[u]niversity research through interagency agreement, [and] design/engineering con- sultants more minimally….” TxDOT Response. 52 MoDOT Response.

7 (AMG)53 surface models for which an independent con- tractor is the sole developer and user. The project de- signer provides information if it is available to help with the development of a model.54 B. Transportation Departments’ Copyright in a Model Unless prohibited by state law, under the work-for- hire rule, state and local agencies may seek copyright protection for their works, for example, when prepared by their own staff.55 However, a model created for a transportation department by an independent contrac- tor belongs to the independent contractor unless there is an agreement designating the work as one for hire. Only three transportation departments reported that they own the rights in models developed for their de- partment’s projects.56 Only the Delaware DOT stated that it had registered a copyright in a model developed for a project. The other transportation departments using BIM responded that they had not registered a copyright.57 As the Pennsylvania Department of Trans- portation (PennDOT) observed, a copyright registration is not required for a copyright to be valid.58 The position of the other departments responding to the survey is that the department owns any data or models developed for a project.59 Five departments said that they neither own the copyright nor otherwise own the rights in models devel- oped for their departments’ projects.60 Caltrans’ position 53 WisDOT Response. As discussed in “Automated Machine Guidance—An Emerging Technology Whose Time Has Come?” Automated Machine Guidance (AMG) incorporates the use of a three-dimensional computer models to move or place materials with greater precision. Operators receive information via GPS satellite transmitters to determine how much earth to remove or when the correct level of aggregates has been obtained. In other cases, the machine controls the materials moving via computer while the operator simply drives down the roadbed. Available at http://docs.trb.org/prp/08-2948.pdf. 54 Id. 55 17 U.S.C. § 201(b) (“In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written in- strument signed by them, owns all of the rights comprised in the copyright.”) 56 FDOT, PennDOT, and TxDOT. 57 Caltrans, FDOT, MDOT, MnDOT, MoDOT, PennDOT, TxDOT, and WisDOT. 58 PennDOT Response. 59 FDOT Response. FDOT stated that pursuant to its Plans Preparation Manual with respect to plans bearing FDOT’s “embossment in the title block,” the public owns any data paid for with taxpayer funds. FDOT’s opinion is that the same prin- ciple is applicable to BIM models. FDOT states that to date “there has not been an issue with ‘proprietary’ data that has been delivered to the FDOT as part of an Electronic Deliv- ery….” PennDOT Response; TxDOT Response (stating that the DOT owns the rights in any models developed for its projects). 60 Caltrans, MDOT, MnDOT, MoDOT, and WisDOT. is that models created by a contractor or a consultant are owned by the contractor or consultant.61 In Mis- souri, the DOT “consider[s] the model to be additional information provided for the use of the contractor and not a legal document as part of the bid process.”62 C. Identification of the Owner of a Model in the Contract Documents 1. The Developer of a Model as the Owner The contract documents should address who owns the copyright in a model developed for a project. Absent a contract to the contrary, it is the party who creates a BIM model who owns the copyright.63 Because a model may be derived from an original model, the contract documents also should specify the party having “the legal rights to reproduce, use, make derivative works, distribute, and publicly display the models….”64 (Models and derivative rights are discussed in more detail in Section IX.A of the digest.) The GSA maintains owner- ship rights in all data and deliverables provided to the organization.65 In Maryland, a public agency’s rights in technical data are covered by the agency’s standard special conditions that are included in the agency’s con- tract solicitation packages.66 When public funds are responsible for technological discoveries that are potentially copyrightable, a trans- portation department may want to utilize a disclaimer of interest or ownership or other agreement to be signed by the creator of a model so that any model or later con- tributions to it are owned by the department.67 2. Ownership of a Model Under the Work-for-Hire Rule Under the work-for-hire provision of the Copyright Act, a copyright in a work prepared by an employee within the scope of his or her employment is owned by the employer.68 The work-for-hire doctrine does not ap- ply when a work is created by an independent contrac- tor. The work belongs to the independent contractor 61 Caltrans Response. 62 MoDOT Response. 63 Larson & Golden, supra note 38. 64 Id. at 104. 65 Wheatley & Brown, supra note 3, at 34. 66 SGP–7.04 Rights in Technical Data (provided by the Maryland Transit Administration). 67 For example, by an independent designer, engineer, pro- ject manager, team, contractor, or subcontractor for a project. For the government to use copyrighted material the govern- ment must have the copyright owner’s consent. 4 PATRY ON COPYRIGHT § 10:73. 68 17 U.S.C. § 201(b). See Raphael Winick, Copyright Protec- tion for Architecture after the Architectural Works Copyright Protection Act of 1990, 41 DUKE L.J. 1598, 1641 (1992) (quoting 17 U.S.C. § 201(b)); Sims & Miller, supra note 16, at 54. A written agreement between an employer and an employee is not needed for the copyright to “vest” in the employer. John G. Danielson, Inc. v. Winchester-Conant Props., Inc., 186 F. Supp. 2d 1, 11 N 1 (D. Mass. 2002), aff’d, 322 F.3d 26 (1st Cir. 2003).

8 unless there is a signed agreement designating the work as one for hire.69 Thus, in the absence of a written agreement providing to the contrary, an independent architect, consultant, designer, engineer, or planner developing a model usually holds the copyright in any plans or model derived from the plans for a project.70 The foregoing rule is not affected by an owner’s in- volvement or participation in a project, such as by fur- nishing ideas, preliminary drawings, sketches, or speci- fications for a project or by having control of a project.71 The owner’s involvement does not make the owner an author or co-author of the plans or model for a project.72 Moreover, in the absence of a contract, an owner of a project does not acquire a copyright in any plans or a model for a project simply because the owner paid for them.73 Of course, a transportation department may provide as part of its contract that the department ei- ther owns or is a joint owner of the copyright in any model or derivative models created for a project.74 3. The Joint Authorship Rule A party who is unable to claim a copyright in a work because of the work-for-hire rule “may turn to a theory of joint authorship.”75 Under the joint authorship rule, unless otherwise provided by contract, an owner’s in- volvement simply by virtue of its ownership of or par- ticipation in a project does not render the owner a joint author. The issue of joint authorship is important be- cause joint authors have an undivided, equal interest in a copyright regardless of the difference in their respec- tive contributions.76 Each coowner may revise the work, 69 Winick, supra note 68, at 1642 (citing NIMMER ON COPYRIGHT § 5.03[B]); Creative Non-Violence v. Reid, 490 U.S. 730 (1989)); Sims & Miller, supra note 16, at 54. 70 Sims & Miller, supra note 16, at 55; Hi-Tech Video Pro- ductions, Inc. v. Capital Cities/ABC, Inc., 58 F.3d 1093 (6th Cir. 1995) (holding that a travel video produced by a produc- tion company having control of a project was not a work made for hire under the copyright statute because the assistants who worked on the project were independent contractors, not em- ployees). 71 Norbert F. Kugele, How Much Does it Take?: Copy- rightability as a Minimum Standard for Determining Joint Authorship, 1991 U. ILL. L. REV. 809, 810 (1991) (citing Com- munity for Creative Non-Violence v. Reid, 490 U.S. 730, 750 (1989); 17 U.S.C.A. §§ 101-914). 72 Kugele, supra note 71, at 828 (citing Aitken, Hazen, Hoffman, Miller, P.C. v. Empire Construction Co., 542 F. Supp. 252 (D. Neb. 1982). 73 Sims & Miller, supra note 16, at 53 (citing 17 U.S.C. §§ 201(a) and (b)). 74 Kugele, supra note 71, at 837 (footnote omitted). 75 See Kugele, supra note 71, at 809, 810 (stating that under 17 U.S.C. § 201 a joint author is a joint owner of the copyright and thus entitled to all of the privileges of copyright owner- ship). 76 Sims & Miller, supra note 16, at 56 (quoting 17 U.S.C. §§ 101, 201(a)); Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir. 1994). make a derivative work, or publish an original or a re- vision of the work.77 Consultants, contractors, or subcontractors may make significant contributions to a model and conse- quently want to claim joint authorship of it. For there to be joint authorship, a work must be “prepared by two or more authors with the intention that their contribu- tions be merged into inseparable or interdependent parts of a unitary whole.”78 To be a joint author of a model, a transportation agency would have to establish both that it made an independently copyrightable con- tribution to a model and that the parties’ intent was that they be coauthors of the work.79 The intent to be joint authors is determined at the time the work was created.80 As for contractors, they usually lack “the req- uisite level of control over preparation of the plans” to claim joint authorship.81 There are at least two approaches to determining joint ownership. One approach is to determine whether a collaborator’s contribution meets the originality test of authorship of an original work. The other approach is to determine whether the mere making of a significant contribution to a work is sufficient to create joint au- thorship. Although the Copyright Act does not specifi- cally require copyrightability of a collaborator’s contri- bution,82 the majority view is that a collaborator’s contribution does not result in a joint work “unless the contribution represents original expression that could stand on its own as the subject matter of copyright.”83 In other words, a purported joint author’s contribution must be original and independently copyrightable.84 If the test for the creation of a joint work is a contribu- tion’s copyrightability, then contributions that are not copyrightable are excluded in determining joint author- 77 Weinstein v. University of Illinois, 811 F.2d 1091 (1987). 78 Daniel Miller, supra note 17, at 458 (quoting 17 U.S.C. § 101). 79 Daniel Miller, supra note 17, at 458 (quoting Thomson v. Larson, 147 F.3d 195, 200 (2d Cir. 1998)). 80 Fred Riley Home Bldg. Corp. v. Cosgrove, 883 F. Supp. 1478 (D. Kan. 1975) (holding that a firm and a builder did not intend to be coauthors at the time that the builder created the alleged derivative work). 81 Winick, supra note 68, at 1643. 82 Kugele, supra note 71, at 821 (quoting 135 H.R. REP. NO. 1476, reprinted in 1976 U.S.C.C.A.N. at 5736). 83 Kugele, supra note 71, at 819 (quoting Goldstein § 4.2.1.2, at 379.118). 84 Berman v. Johnson, 518 F. Supp. 2d 791 (E.D. Va. 2007), aff’d 315 Fed. Appx. 461 (2009) (holding that a promoter and a filmmaker had intended to be joint authors and that the pro- moter’s contributions to the film were independently copy- rightable). See Kugele, supra note 71, at 840. Kugele argues that the copyrightability standard is only the “minimum threshold for determining intent” and that other factors should be considered, such as “the extent of the collaboration, the amount contributed in relation to the size of the entire work, and any express agreements that the parties have made be- tween themselves.” Id.