BIM - Protecting IP (Intellectual Property)

Intellectual Property: When working in a collaborative design and construction environment, protecting Intellectual Property (IP) has to be considered. If the collaboration includes an advanced level of Building Information Modelling (BIM), the potential loss IP can be very high. But there are some good information sources available to assist professionals.

Within this article where possible, I will quote (in italics) official sources and let you (the reader) determine the outcome. All information should be read in context with the original source.

NOTE: the comments below are in reference to Australian sources, thus readers outside Australia should be aware the implications may be different depending on local laws.

Quote sources:
IP Australia - http://www.ipaustralia.gov.au/
AIA BIM & IPD Steering group - http://www.bim.architecture.com.au/
Australian Copyright Council - http://www.copyright.org.au/

IP Meaning: Let’s identify the Australian meaning of IP. Extract from the government “IP Australia” website:

“Intellectual property (IP) is the property of your mind or proprietary knowledge and can be an invention, a trade mark, a design or the practical application of your idea.”

To get started in getting your head around IP and BIM, I would suggest referring to the Australian Institute of Architects (AIA), BIM/IPD Steering Group’s document titled: “L1 - BIM and Intellectual Property”. This was made publicly available in August 2012 from the website: http://www.bim.architecture.com.au/. This is a very informative, short and concise document. I’m just going to cover a few other items not elaborated in the above document:

IP Ownership: (extract from IP Australia)

“Ownership is based on being able to show that you are the 'author' or 'creator' of the IP. You may also become the owner by having the IP rights assigned to you.

Absolute title to an IP right cannot be guaranteed…………  IP is always open to a challenge in court from another person who believes that they can show that certain criteria were not met in the original application process. The best defence against this is proper planning and management.”

IP Types: IP can come in many forms, each with different legal protection and meanings. Below is another very useful abstract from the IP Australia website: 

NOTE: It is recommended readers, thoroughly investigate and understand the contents of the IP Australia website. It was updated in December 2012 and is very useful for this topic.

What's protected	Type of IP protection	What it means	Example
Product designs	Registered design	The visual appearance of a product is protected, but not the way it works.	Ipod kitchen appliances footwear fashion items
Logos, words letters, numbers, colours, a phrase, sound, scent, shape, picture, aspect of packaging or branding - or any combination of these	Trade mark	A trade mark identifies the particular goods or services of a trader as distinct from those of other traders.	Qantas® Lonely Planet®
Inventions and new processes	Patent	A patent protects how an invention works or functions.	Polymer bank notes Anti cervical cancer drug, Gardasil
Drawings, art, literature, music, film, broadcasts, computer programs	Copyright	The owner's original expression of ideas is protected, but not the ideas themselves.	Typefaces and fonts
Trade secrets and confidential information	Other	These types of IP rights give creators certain rights and privileges depending on the type of IP protection.	Coca Cola has used trade secrets to keep its formula from becoming public for decades.
New plant variety	Plant Breeder's Rights	Plant Breeder's rights protect the commercial rights of new plant varieties	Cotton plants with insect resistance and the pink iceberg rose

In the building / construction industry, the most applicable “Protection Types” for everyday use is Copyright and what they define as “Other” (i.e. confidentiality agreements). Let’s have a look at them:

Copyright: (extract from IP Australia)

“An intellectual property right which protects the original expression of ideas, not the ideas themselves.” Copyrights may include the following:
       Books, films, music, sound recordings, newspapers, magazines, artwork.

Copyright also protects originally created: 

       typographical arrangements, databases, media broadcasts, computer programs, compositions of other people's work such as academic journals or CD compilations

The moment an idea or creative concept is documented, on paper or electronically, it is automatically protected by copyright. Because it is automatic in Australia, there is no official registry or application process for copyright protection.”

So how does this relate to our industry? Original Drawings, Sketches & Texts are also covered (just not directly mentioned above). Below are some court transcriptions freely available on the Australian Copyright Council website:

“Copyright in building plans

The Full Federal Court observed that in order for there to be an infringement it is not necessary to show there has been direct copying. Indirect copying is sufficient for an infringement to occur. It said for example, that copyright in a two-dimensional drawing may be infringed where the copying is carried out from a three-dimensional version of the drawing. It also accepted that copyright may be infringed where a person conveys information to anther person, who then carries out the copying.”

Databases and Copyright: Below is an extract from “Databases, Compilations, Tables & Forms” – “INFORMATION SHEET G060v11, February 2012” published by the Australian Copyright Council.

As much of BIM is database driven, the below is very relevant:

Court transcription:
“a 2009 decision by the High Court of Australia concerning Channel Nineʼs television schedules (known as “electronic program guides”) casts a great deal of doubt on the extent to which copyright will subsist in compilations that essentially contain only information.
In order for copyright to subsist in a work, the Copyright Act requires that the work be “original”. The judgments in the High Court case note that, in copyright terms, originality means that the literary work “originated” with the author – the author must not have copied it from someone else. The Court went on to say that the amount of skill, labour or expense expended by an author is not necessarily indicative of an “original” work.”

The document then concludes:

“the following broad principles indicate that a compilation is protected by copyright:

• the individual or individuals who created the compilation can be identified;
• the creators used sufficient intellectual effort and creativity; and
• the creatorʼs intellectual effort and creativity is expressed in the resulting compilation.”

Trade Secrets and Confidentiality: When it comes to ideas, processes, workflows; i.e. “secret trade knowledge”; if a patient is not an appropriate method of securing IP, a confidentiality agreement may be considered. This is a legal signed agreement between parties, to not disclose specific information outside the confinement of a defined group.

Anyone in the industry whom has worked on Defence work or large tender bids may have had to sign a confidentiality agreement. One of the most famous trade secrets is the recipe for Coca Cola, and to date this method has worked in keeping the ingredients a secret. Confidentiality agreements can be used on specific projects or within an organisation. More information on Trade Secrets is available here: IP Australia

Conclusion: To claim IP Protection on an item it must be “Original”. You need to be able to identify exactly who created it (having the original IP item archived, including authored date will also help).  If it was created by multiple parties, it then becomes the IP of the authoring parties, and no one individual party can claim ownership (unless there is a predefined agreement).

From the above you can see there is no Black and White with IP law. As it is so grey, in the event there is an infringement, going to court may be the only way to resolve it. Thus weighing up the monetary value of the IP is essential in your IP protection plan. Even if the claimant wins the legal case, there are costs incurred. 

Other useful links:

Business.gov.au