REDRAFT 3 COPYRIGHT 1. Consulting Engineers are ... - Cesa

REDRAFT 3PURPOSE: To explain the implications of copyright legislation pertaining to a consulting engineer, includingprecautions in regard to cession of copyright.KEY WORDS: Copyright, Liability, Cession of copyrightCOPYRIGHTADVISORY NOTE 93/4(Reviewed January 2004)(Reviewed February 2004)1. Consulting Engineers are sometimes invited to do presentations to clients. Thesepresentations often contain design philosophy and in some cases even draft designs.It has been brought to our attention that some clients use the principles contained insuch presentations to their own advantage while they have undertaken the workdepartmentally and/or re-invited tenders based on the ideas of our members.2. Members are therefore advised to insist that any documents presented to clients bereturned and that it be brought to the clients’ attention that copyright subsists in alldocuments and drawings.3. The purpose of the Copyright Act, 98 of 1978 is to establish enforceable propertyrights for the creators of, inter alia, original works of expression.4. It should be noted that copyright is protected in terms of the Copyright Act (Act No 98of 1978) and that the consulting engineer can rely on the Copyright Act to enforcehis/her intellectual property rights.5. As far as consulting engineers are concerned, documents and designs produced bythe consulting engineer fall to be protected under the headings of literary and artisticworks. Remember that a literary work is not dependant on the quality of that work orthe mode or form that it is expressed in. “Artistic works” includes “drawings” defined inthe Act as “any drawing of a technical nature or any diagram, map, chart or plan”.6. Consulting engineers are advised to mark documents to the effect that copyrightsubsists in such documents. A suitable wording would be as follows:"Copyright vests in this document and no use or reproduction or duplication thereofmay occur without the written consent of the author".7. The nature of the copyright infringement can take 2 forms. Firstly, a primary infringementoccurs where actual copying or substantial copying occurs. A secondary infringement occurswhere a party is guilty of dealing in an infringing copy. A requirement for a secondaryinfringement is that the party dealing in such copy must do so with the knowledge that it is aninfringing copy.Patent and Design Acts. Ordinarily copyright vests in the author of the document. There arecertain exceptions to this. These include works by journalists, commissioned photographs,8. Copyright exists automatically. There are no formal requirements in the Copyright Act thatneed to be complied with in order to have copyright, unlike the Trade Marks Act and relevantPage 1

portraits, cinematograph film and most importantly works done or performed during thecourse and scope of employment under a contract of employment. It is for this reason thatcopyright vests in the consulting engineering practice or firm and not the actual employeewho produced that document or drawing. The attention of contract or casual staff should bedrawn to the fact that copyright is not vested in the author of the work, but in the firm wherethe contracted person is performing the same or similar duties as a member of permanentstaff.9. In the event that a consulting engineer is required by a client to cede the copyright in hisdesign drawings for a particular project, the situation may arise in which he could be heldliable for design shortcomings, if the design is re-used later by the client for another projectwithout reference back to the original designer. The possible liability was referred throughCESA’s Professional Indemnity Insurance Scheme Managers to Deneys Reitz,attorneys, and their opinion is given in paragraph 10.10. It is recommended that, in cases of the enforced transfer of copyright to a client, that theagreement between the client and consulting engineer contain a provision to the followingeffect:“The consulting engineer shall not be liable (either in contract or in delict) to the client or anyother party whatsoever as a result of the use of the consulting engineers’ designs, drawingsand specifications in any project or works other than those detailed in this agreement and theclient hereby indemnifies the consulting engineer against any claim which may be madeagainst him by any party whatsoever in any way arising out of the unauthorised use of suchdocumentation for such other purpose as aforesaid."11. CESA is firmly of the opinion that no cession of copyright should be agreed to by its memberfirms unless the client consents to incorporate such a clause, or similar wording, in theagreement of appointment, or in an exchange of letters between the parties.The contents herein are published for general information only and are not intended as specific professional advice,legal or otherwise. The merits of every situation should be considered separately and specific professional advice inrelation thereto should be sought.Page 2

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