November 20, 2024
In the construction and digital design sector, BIM (Building Information Modeling) methodology has revolutionized the way professionals approach architectural and engineering projects. However, with innovation also comes legal challenges around intellectual property rights.
To delve into this topic, we spoke with Pablo Callegaris, a lawyer specializing in technology and founder of BIMLEGAL and BIMETICA, an online platform dedicated to downloading BIM content and legal advice on public and private projects. With more than two decades of experience in the sector, Callegaris is recognized for his unique approach combining law and technology in the BIM field.
Copyright vs. Intellectual Property Rights (IPR)
Q: To begin with, Pablo, could you explain the difference between Intellectual Property Rights and other types of rights in BIM projects?
A: It is necessary to understand a little bit the nature of the rights. Intellectual Property Rights (IPR) should not be confused with Industrial Property Rights (IPRnd.), it is very common to confuse these rights. While IPRs, for example, apply to a “trademark”, “trade name”, “patent”, “utility model”, etc., IPRs apply to the creation of a “song”, “drawing”, “photo”, “sculpture”, “sketch”, “architectural plans”, “architectural work”, etc.
It is important to point out that IPRs are born from the moment of their creation, and it is not mandatory to register them, but it is highly advisable to do so, and IPRs are born when they are registered in the corresponding public registry. Registration is important to the extent that it provides the author or co-authors with a better right or protection against plagiarism or improper use.
A particularity of IPRs is that we can distinguish two main rights that assist them (not being the only ones), which are the Moral Rights of the Author, which are non-transferable or non-alienable, and the Economic or Economic Rights, which are those that allow the author to make a commercial exploitation of the work, and can be transferable to a third party.
The particularity of the Patrimonial Law is that, in the contract between the Author and a third party, the number of reproductions of the work, whether it is exposed to the public or not, whether it can be divided, whether I can make a profit from it, etc., can be agreed upon. That is to say, the necessary commercial agreements can be stipulated, as long as they are not contrary to the Law, morality or public order.
Regarding the duration of IPRs, it is worth noting that these subsist during the whole life of the Author, and after his death, but with limits, and each limit depends on the legislation of each country. For example, Spanish law stipulates a duration of 70 years after death, while the Berne Convention of 1886 and its updates provide for a protection of 50 years after death. Here, each country can regulate the extension to that limit.
Conditions of Originality and Externalization in BIM Projects
Q: What conditions must be met for a BIM project to be eligible for protection under intellectual property law?
A: For the right to be born there must be originality and externalization. What does this mean? Originality means that it has to be something original, as its name indicates, it has to be a unique creation and it has to be expressed or put in a support, either physical or digital (it is not enough to have the idea in your head). In this case, as we are working with BIM projects, we can say that the digital support is natural to the work.
The issue of originality is important, first I would like to clarify that the creative activity has to be human, it cannot be a software or an AI that generates a project because it would not be susceptible to protection of intellectual property rights. There has to be a person or a group of people behind it who create this right, i.e. the work. Creativity is the key, and we have to understand that BIM software are tools that help us to express and carry out our creative capacity, and from there is when we can register and consolidate that right. BIM softwares are mere working instruments, which serve us to externalize our creation.
Objective and Subjective Originality
Q: You mentioned that originality is a key requirement, can you explain more about objective and subjective originality in BIM projects?
A: When we talk about originality, we can also distinguish between objective and subjective originality. The objective originality would refer to that innovative concept that we introduce in the work and that stands out, it is something new, it does not exist, therefore, there is creativity here, which is a requirement for that right to arise or be born.
The subjective refers to the particularities of that person or group of people who create the work. For example, some famous architects who create a work with their particular stamp, here the character of the author’s personality is contained with his work. An example would be the Spanish architect and engineer, Santiago Calatrava, or the architect Antoni Gaudí, since his works are easily recognized due to the imprint of his professional personality.
The Functional Nature of Security Rights and Regulations
Q: How does the functional nature affect copyright in projects limited by urban planning or safety regulations?
A: This is important and it does have a lot to do with the way originality is conditioned. For example, it happens a lot with urban planning law or fire safety issues, safety regulations in general, etc., that tell us how we have to develop a project; a house, a building, etc., these regulations limit us or limit the availability of spaces, that is to say, the design.
The architect, even if he has creative capacity and develops it, is conditioned to comply with urban planning or safety regulations, etcetera. In the end, the result I present will lack that objective or subjective originality, because in the end I am not creating anything new. I am simply carrying out a regulation or complying with a regulation for the development of a building. Here these creations would not be susceptible of being protected by intellectual property rights.
Conventions and applicable international IPR legislation
Q: What is the legal framework protecting intellectual property rights in BIM projects in an international context?
R: There is the Berne Convention for the Protection of Literary and Artistic Works. This Convention was created in 1886, although it should be noted that it has been updated periodically, the last one being in 1979. Article 2.1 of the Convention reflects the protection of IPR to the “The terms “Literary and artistic works” include… Drawing, painting, architectural works… plans, sketches, … plastic works relating to architecture ….”. Therefore, architectural works are protected, consequently, everything that we are going to do in BIM, which falls within this concept, is susceptible to be protected by this international convention. Who has signed this Convention? Today we are going to say that there are more than 176 countries, the latest data we have is from 2018, that have signed this convention.
I took the license to search among the countries that have signed; and they are here, Argentina, Brazil, Chile, Colombia, Costa Rica, Mexico, Peru and Uruguay have signed this agreement, being these countries in turn members of the BIM Network of Latin American Governments. So this would be the international legal framework that affects all the members of this group, so that when an Author registers or wants to preserve this right, he can address to all the countries that are members and therefore have its protection.
IPR in the context of public procurement in the European Union
Q: How does the European Union approach the integration of BIM in public procurement and the transfer of rights?
A: Regarding contracts in the public sector, there are many regulations, but we are going to go into commenting on two regulations which are the DIRECTIVE 2014/24/EU, which talks about public sector contracts, and the Spanish Law 9/2017 on Public Sector Contracts (LCSP),
How does the European Directive deal with BIM? In Article 22.4 it talks about contracts, and says that for public works contracts and project tendering they may require the use of specific electronic tools such as electronic design and implementation tools or similar tools. Here it does not literally use the term BIM, but the spirit of the legislator at that time was already talking a lot about BIM, but it was not clear because it was a very marketing term at that time, but it did have an effect on this methodology and it was included in the directive.
Regarding the intellectual property rights in relation to the architectural work or architectural and engineering work, the forty-first additional provision (41st) of the LCSP, clearly states: ‘The nature of intellectual services is recognized to the services of architecture, engineering, consulting, etc.’. This recognition allows the works to have the prior consideration of being susceptible to intellectual property rights.
Likewise, the Fifteenth Additional Provision.6 (15º.6) of the LCSP indicates: For public works contracts, works concession contracts, service contracts and project tenders, and in mixed contracts combining elements thereof, contracting authorities may require the use of specific electronic tools, such as digital building information modeling (BIM) tools or similar tools…”
Without going into a deeper analysis of these sections, we can indicate that the European Union and Spain contemplate the use of BIM for public works projects and the protection of IPR.
Transfer of Intellectual Property Rights in Public Contracts
Q: How is the transfer of intellectual property rights handled in public contracts?
A: In article 308 of the LCSP, it contemplates IPR and establishes, unless otherwise stipulated in the bidding documents and administrative clauses, that intellectual or industrial property rights will entail the assignment of these to the contracted administration. That is to say, it is telling you, ‘hey, we know that, in the specifications, although we do not put it in writing, the projects that participate in the public sector, their exploitation will be in charge of the Public Administration and its agencies’. If they don’t say anything in the bidding documents, the work is being handed over.
The curious thing is the second part of the paragraph that says, ‘in any case’, regardless of the above, that is, even if the assignment of intellectual property rights is excluded, the contracting body may always authorize the use of the corresponding products between agencies and entities. Let’s imagine that in the specifications it says that we exclude the assignment and, therefore, you do not have to assign it to me. This second paragraph says that it is not going to take it into account. In the end, if I (Public Administration) pay you for a work or a service that is susceptible to be covered by intellectual property rights, I will keep it and I will exploit it.
Use of unlicensed software
Q: What are the risks of using non-legal software in BIM projects?
A: If illegal software is used, we assume that it would be directly infringing the IPR of the software owner, which constitutes a criminal and civil offense with serious consequences for the infringer.
We have to take into account that, if we develop a project assignment with illegal BIM software, several negative situations can occur. Obtaining the project as a result of an order will be flawed, since the means to obtain it are illegal. This can also be detrimental to the client’s project use or exploitation. In this sense, the client will always be able to claim damages from the offending professional.
Other negative consequences, apart from the possible claim of the software owner and the customer, would be that a competitor, in the case of competing in the same project, would find out that its competitor has cheated by using illegal software, in which case it could be susceptible to claim the damages caused, according to the Unfair Competition regulations.
A final thought
I would like to highlight some topics for reflection on the risks involved in the lack of IPR registration, and I believe that the main ones are plagiarism and the use of unauthorized content, i.e., that they actually copy the project, take something that is mine and present it as their own. Also misuse; for example, I am an architectural firm, I agree with someone a specific use of a BIM project, and then they use it for other purposes or outside of what was agreed. There is also the issue of BIM software, which ones are pirated and which ones are commercial. These points affect the market a lot.
To fight them, we have civil, criminal and administrative actions. If one of the bidders violates the law, European and Spanish legislation has the tools to take action. In addition, unfair competition law allows us to take action against infringements.
Sometimes it happens that some people publish things without authorization, claiming to have participated in BIM projects in which they have no authorization to publish and they are giving the market to understand that they are the authors or co-authors. Nowadays, a screenshot with encryption can serve as judicial proof, and so we can legally proceed to claim.
So how to protect intellectual property rights? The work has to be original for it to be a probable right, but it also has to be registered, either in physical or digital support. If we don’t register it, someone can plagiarize and register it first, which could cause you to lose the rights.
In a judicial procedure, at least in Spain, an electronic evidence must be irrefutable, otherwise, it can be questioned or refuted. My suggestion is: if you have something created, register it before putting it into circulation. It is cheap and so you have the right protected.
In conclusion, if you have a right and you do not protect it, it is as if that right does not exist.
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