The “I” in BIM

November 27, 2018

1915

Patrick Cantrill and Vicky McCombe of law firm Womble Bond Dickinson examine the intellectual property rights surrounding the ownership of data used in BIM projects

Data is big business for BIM projects. An article from May 2017 in The Economist described the dependency of the global economy on data flows. Whether these are being used to develop AI, improve manufacturing, enhance medical research, reveal individual consumer preferences or are applied, as they are, in every other walk of life, they “…have created new infrastructure, new businesses, new monopolies, new politics and – crucially – new economics”.

Increasingly, questions arise as to who owns the databases that hold the data and who can use it.

Much of the commentary around BIM projects has focused on Information Models (IMs) and how these can help realise efficiencies in construction, with the conversation now moving to the advantages of IMs in the operational phase of a built asset. The information contained within those models and the value it potentially has to the building owners, together with businesses such as the designers, contractors and consultancies involved in developing the databases that form part of the IM, is likely to become increasingly important as built assets become smarter.

So what do those involved need to consider to ensure they have the intellectual property rights to enable them to use or exploit the IMs and the databases that sit within them?

There are two main intellectual property rights which need to be considered – copyright and the sui generis database right.

Firstly, let’s look at copyright. Copyright protects various literary, artistic and other works and the governing legislation in the UK is the Copyright, Designs & Patents Act 1988 (as amended), (the CDPA).

Under the CDPA, in the absence of any agreement to the contrary, the first owner in any vested copyright is treated as the author of the work unless such was created in the course of his or her employment, in which case the employer is deemed to be the copyright owner. Computer programs are treated as literary works and thus copyright forms the basis for the protection of such.

An IM may be developed by designers and consultancies engaged by the building owner or, say, the developer of a construction project and, therefore, asset owners should make sure they have an express licence to use such copyright or that the copyright vests in them. Equally, if those developing the IM intend to use the databases within it for other projects, they will need to make sure they retain the necessary rights.

Secondly, we need to consider database rights. Database rights are unique to the UK and the rest of Europe, introduced across the European Union about 20 years ago. A database right is targeted at protecting the investment that goes into the accumulation of data rather than copyright, which narrowly serves simply to protect the underlying structure of the database itself, not the data that populates it.

The definition of a database is a “systematic arrangement of individually accessible independent works or data”. Consequently, the IM may be a database in its own right but it could also contain other databases and, further, databases may have been used to create the IM itself.

The owner of the original work created by the IM will be the person who arranged for the work to be computer generated. In relation to its individual components, if the work remains distinct from any other work in the model then ownership is unaffected so the author still owns that part.

Subject to some permitted acts, a person can infringe a database right if they extract or re-utilise all or a substantial part of the contents without consent.

If a database is jointly owned then none of the owners can do anything with it without the consent of the other owners. Database rights are therefore complex and could cause obvious difficulties for a building owner or a consultant looking to use an IM or parts of it on other projects. Again, there should be clear documentation between the relevant parties as to ownership of the IM and, before using databases to create a model, the requisite consents should be obtained.

As businesses build these IMs and look at how to use the data contained within them, careful thought should also be given as to who may have copyright or database rights in them and to making sure they can use and exploit them, particularly as models become more sophisticated.

Patrick Cantrill