ABSTRACT
This research gives a detailed comparative analysis of the copyright law between the United Kingdom and Zambia in relation to theinfringement of architectural works. Furthermore, the aim of this research provides an overview of the remedies available for intellectual property infringements. In the earlier parts of this research, some of these remedies have been mentioned. This chapter highlights the similarities and differences of the remedies available tothe creators of architectural works.
Key words – Intellectual Property Rights, Copyright, Zambia. United Kingdom.
From the time in memorial there has been litigation since 1990 over what constitutes a building that can be protected as an architectural work.206 This may reflect the fact that architects and other designers create a wide variety of structures. 207 Recognizing the difficulty in using the term building, the legislative history attempts to refine the definition of architectural works.208 It states that obviously, the term building encompasses habitable structures such as houses and office buildings.209 It also covers structures that are used, but not inhabited, by human beings, such as churches, pergolas , gazebos, and garden pavilions.210 Thus, according to legislative history, if the structure is meant to be inhabited by a human being, even temporarily, as in the case of a gazebo, it is a building and qualifies as a copyrightable architectural work.211 The legislative history, however, does not resolve all ambiguities.212 Generally, the history restricts the definition of building to exclude bridges, dams and related non-habitable three dimensional structures from protection. This exclusion raises two major questions. The first question being that is this distinction necessary? and if so, how can an architect know whether his or her work will be categorized as a protected architectural work or as anon-protected non-habitable three dimensional structure? Excluding non-habitable three dimensional structures from copyright protection possess problems for architectural works that blur the line between architecture and non-habitable three dimensional structures.213 A practical example is the bridge-like sculpture mimicking the Statue of Liberty’s crown in Battery Park City in Manhattan, which fits both definitions.214 It is habitable like a pergola or gazebo and therefore, isa building under the Copyright law’s legislative history, at the same time, it is a lookout and thus it probably qualifies as a non-habitable three-dimensional structure that would not receive protection under the legislative history.215 This goes to show the limitations in the protection of most architectural works, which in turn infringes on the rights and interests of creators of architectural works.216
It can be opined that many bridges across the world are monumental and deserve as much protection as buildings. For example, architects recognize the Golden Gate Bridge and the Bay Bridge in California as valuable works of architectural designs.217 Since the legislative history precludes the protection of certain works of architecture such as bridges, these works should be afforded copyright protection because the legislative history creates an inappropriate distinction between architectural works and non-habitable, three dimensional structures.218
The United Kingdom Copyright Law
Copyright law protects original architectural drawings and plans as literary works of the United Kingdom Copyright Designs and PatentAct.219 However, a work of architecture , being a building or a model is also protected by copyright law as an artistic work as provided for under the United Kingdom Copyright Designs and Patent Act.220 Section 4(1) (b) of the United Kingdom Copyright Designs andPatent Act defines a building as including any fixed structure or part of a building or fixed structures.221 This was established in the case of Macmillan Publishers Ltd v Thomas Reed Publications Ltd.222 This definition includes for example a modern addition to a building from another era, such as the Clore Gallery at the Tate Britain in London.223 However there is no need for architectural works to have artistic quality.224In principle, the same protection is afforded to a simple square office block as to the Houses of Parliament, although it would be harder to argue that the design of the simple office block is original.225
The Zambian Copyright Act provides for the protection of a work of architecture being in the form of either buildings or models as an artistic work.226 However in contrast to the United Kingdom copyright Designs and Patent Act, the Zambian Copyright Act does not define the term building. This has a negative impact with regard to the protection of architectural works by the copyright law in Zambia. Since the Copyright Act does not define the term building, it makes it difficult for creators of architectural works to identify exactly which works of architecture are protected by the law. Therefore, infringers can copy buildings with no fear of action being taken against them irrespective of whether or not certain architectural works are protected by copyright. 227 This infringes on the rights and interests of the creators of architectural works. Generally, this illustrates that the scope of an architect or engineer in relation to copyright protection is still quite limited in Zambia. The Zambian copyright law does not clearly state what constitutes the infringement of architectural works. It can be opined that there is no case law setting precedent to define what copyright infringement of architectural works is. Basically similarities in terms of expression of ideas is what is looked at when a claim for infringement of architectural works is brought before the courts. Thus an infringer can easily argue that they did not copy the work from another author, but that their work is based on their own ideas.
The rationale for the earlier lack of copyright protection for buildings was that the constructed building, as depicted in the plans, was in fact the idea expressed in the plans.228 As we have seen from the previous chapters of this research, whilst copyright law protects architectural drawings and plans, it does not protect the ideas and concepts embodied in them.229 It can be argued that in this way, the development of architectural ideas and concepts is encouraged without restriction.230 In a nut shell ideas cannot be taken and applied in works of architecture.231 This is done to prevent the monopoly of the common stock of architectural ideas.232 It can be argued that the law is not there to protect the field of architecture from development of ideas evolving from prior concepts233.
Remedies for the Infringement of Intellectual Property Rights
One thing to bear in mind is that an infringement of an intellectual property right is a tort and the general principles applicable to remedies for torts apply also in the context of intellectual property rights.234 For these intellectual property rights provided for by legislation, the remedies are set out in that legislation as interpreted and applied by a substantial body of case law.235
In some cases, the legislation itself provides some guidance. A practical example is in determining whether additional damages are available for copyright infringement, the court must take into account all the circumstances including the flagrancy of the infringement and the benefit accruing to the defendant by reason of the infringement.236 Part three of the Copyright Act provides that an infringement of copyright shall be actionable in the court at the suit of the owner of the copyright.237 The remedies for the infringement of intellectual property rights can be classified into two broad categories namely civil remedies and criminal sanctions.238 The civil remedies are in the form of damages, injunctions and delivery up.239 On the other hand criminal sanctions are in the form of fines and prison sentences.240 These remedies are common and similar under both the United Kingdom and Zambian copyright law.
A person whose rights in intellectual creations have been infringed is entitled to relief by way of damages, injunctions, account for profits, delivery up or any other remedy which is available in relation to the infringement of any other property right. Damages are meant to compensate the copyright owner for any actual loss incurred which may be based on royalties or lost sales.241 Damages are awarded where an injunction is not sufficient. The general rule is that the intellectual property holder should receive monetary compensation which in turn restores him to the position they would have been in if the infringement had not occurred.242 The intellectual property holder is only entitled to receive damages for the actual loss suffered.243 This principle of law was established in the case of Claydon Architectural Metalwork v DJ Higgins and Sons,244 where it was held that secondary damages associated with flow problems caused by the defendant's act were far too remote to warrant compensation.
There are some defenses that can be raised in a suit for infringement of intellectual property rights. Under the Copyright Act, innocence is a defense to infringement which if successfully pleaded deprives the copyright owner of the right to damages.245 A number of remedies are common to all forms of intellectual property rights as earlier mentioned, although there are differences depending on their jurisdiction. For instance, additional damages that are available for infringements of copyright and related rights and under the United Kingdom unregistered design right, though this form of damages is not available for other rights, such as patents.246 These additional damages are compensatory in nature and the courts may award them as the justice of the case may require.247 An injunction is an equitable remedy which is an order to stop a person from making infringing copies or to destroy the devices used from making infringing copies.248 The first objective of an injunction is to preserve the status code. The second objective is that the injunction must be speedy. Injunctions do not depend on prima facie evidence. The last objective is that injunctions are premised on the size of the parties to the case. The ingredients of an injunction where pronounced in the case of American Cynamid v Ethicon.249 An injunction will not be granted where damages would be an adequate remedy.250 Claimants may see the grant of an injunction as a natural and automatic right, however this is not the case.251
The remedy of account of profits is made available to a claimant as an alternative to damages to recover the net profits or to an account of the profits the infringer has made from the infringement.252 This can be the only available remedy where damages cannot be claimed if the defendant did not have reasonable belief of the subsistence of copyright in a work.253 The case of Performing Rights Society Ltd v Francis A. Hickey, T/A Bar-B-Que Drive-in Restaurant,254is instructive to show the instances when the court may award this relief. In this case the court took into account the defense put up by the defendant and held that the plaintiff was not entitled to any damages but an account of profits in respect of the infringement. The plaintiff may also be entitled to a relief of delivery up of the infringing articles.255This is an order by the court that infringing copies or articles designed or adapted for infringing copyright be delivered to the court for disposal.256 Section 28 (4) of the Copyright Act provides for destruction orders. For architectural works, it is unlikely that they would order the demolition of the building because of the cost involved, hence the remedies are likely to be in monetary compensation.257In contrast the United Kingdom copyright law provides for more civil remedies as compared to the Zambian copyright law other than the common civil remedies mentioned above. Another remedy for architectural works would be to register a caution under Section 54(1) of the United Kingdom Lands Registration Act of 1925, against the property which is alleged to infringement of copyright of architectural plans owned by an architect.258
Some Acts of Parliament governing intellectual property rights provides for criminal sanctions as remedies against the infringement of intellectual property rights. This could be a prison or a payment of a fine or both. For instance, the Copyright Act in Section 28(1) provides that if a person commits an offence of first conviction he is liable to one hundred thousand penalty units or twenty thousand penalty units for each infringing copy, whichever is greater or to imprisonment for a term not exceeding five years.259 Generally in-practice, usually an infringer is charged a fine and if he is not able to pay, he may then be imprisoned.
Unlike the legislative history, both Acts provide for the protection of architectural works, but do not automatically exclude non-habitable three-dimensional structures from copyright protection. Therefore, courts should grant protection to these works and place less emphasis on the legislative history. Both the United Kingdom and Zambian legislation provide a similar level of copyright protection. The fact that the United Kingdom has specific legislation does not mean the level of protection afforded to architectural works is higher. Both systems comply with the requirements of the Berne Convention. An advantage of the United Kingdom system is that the definition of building in Section 4(1)(b) is very broad260. On the other hand the Zambian copyright Act does not define the term building, which is a limitation when it comes to the protection of architectural works.
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About the Authors
CHOLA MUSONDA MUSATWE
LLB (UNZA), LLM (ZCAS UNIVERSITY), PGD (POSTGRADUATE DIPLOMA IN TEACHING METHODOLOGY) (NIPA)
Lecturer in Law and Business Studies
AND
COUNSEL COLLINS NKUMBWA, Esq.
CIP (NIPA), LLB (UNZA), LLM (UNZA), AHCZ, ASCZ, PhD Cand.
Lecturer of law and Commissioner of Oaths