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  • February 10, 2021

    Construction and Copyright, Part 2: Practical Considerations

    Construction attorneys need to be familiar with intellectual property principles and copyright matters associated with their clients’ businesses. In part 2 of this two-part series, Bryan Kroes discusses additional practical copyright considerations, including trademarks and patents.

    Bryan T. Kroes

    In Part 1, we discussed copyright basics and architectural plans as one asset that could be protected by copyright. See Construction and Copyright, Part 1: Don’t Forget about IP.

    Here in Part 2, we discuss additional practical copyright considerations, including that designs and architectural works aren’t the only copyrightable material to come out of the construction process.

    Photos and Videos

    Many construction companies want to promote their business using “before and after” or progress photographs of their work. If the construction company hires a third-party photographer or videographer to photo-document the construction site, absent an understanding to the contrary, the photographer owns the photos or video, not the construction company.

    Bryan T. Kroes Bryan T. Kroes, Marquette 2013, is a senior associate with Hurtado Zimmerman SC, Wauwautosa, where he practices in construction, real estate, municipal bond finance, and entertainment law.

    In these situations, a contract should be developed identifying the construction company’s right to use the photographs and the rights that are conveyed and retained by the photographer or videographer.

    In the construction contract with the owner, the construction company should also identify whether it has a right to use pictorial depictions of the owner’s property, and to what extent it can use those works.

    Marketing Materials

    Going hand and hand with photographs and videos are a construction company’s marketing materials.

    If a construction company creates their own marketing materials – whether website content, pamphlets, presentations, sales sheets, or literature – all may be afforded copyright protection.

    Although notice via a copyright symbol (©) is no longer required under U.S. copyright law, it is never a bad idea to label all copyrightable marketing materials with the copyright symbol, to put the public on notice as to the company’s ownership of the copyrighted works.

    If a company utilizes it in-house staff to create its copyrightable works, whether designs, marketing materials, websites, presentations, contracts, templates, or company-specific literature, the company should establish either via employee handbook or separate agreement whether the works are works made for hire, and as such, owned by the company or the individual author.

    Using Outside Copyrighted Material

    While a good deal of original content may be created for marketing purposes, companies should be careful to not use any elements in their marketing materials that are owned by someone else.

    A common misperception is that if a photo, video or song is found online, then it is fair game to put it in your marketing materials or on your website. To the contrary, just because you found a nice photograph or song online that fits your marketing or presentation aesthetic, does not mean you can use it without permission from the owner. You will have to either obtain a license or find an alternate work to use.

    Finding the perfect licensable photo, video, or music for your marketing materials is actually a lot easier than you may think. In fact, Wisconsin is an underrated hotbed of creativity, and there are many wonderfully talented artists, photographers, videographers, and musicians who would love to discuss using their services for your marketing materials.

    Other Copyrightable Materials

    Copyright protection can also extend to other items a construction company uses in its day-to-day business – including contracts, proprietary documents, and certain forms so long as there is a de minimis expression of originality. If you create an original use or arrangement of words, then there is no reason you cannot claim a copyright in that particular arrangement. In fact, many of the construction contract suites (i.e., AIA and ConsensusDocs®) claim a copyright in their contracts.

    While many companies use existing project management or accounting computer programs, or software such as ProCore® or QuickBooks®, occasionally, a construction or design company may have an in-house staff person who develops a new computer program or software to aid in project management or accounting.

    In such cases, copyright protection for that new program or software – to the extent it is original and does not infringe on another copyright – can and should be explored. A word of warning, however: if the new program or software incorporates or interfaces with elements of another existing program or software to improve functionality, then that new program or software may actually be infringing.

    What Cannot Be Copyrighted

    While there are many things that can be given copyright protection, a few things cannot:

    • ideas – the expression of an idea can achieve copyright protection, but the idea itself cannot;

    • website domain names;

    • facts and commonly known information, including historical facts;

    • functional aspects of a work. For example, if an aesthetic design has been dictated by functional concerns, that design may not achieve copyright protection;

    • works of the U.S. government; and

    • blanks and forms that do not contain a degree of creativity or original expression.

    This list is not exhaustive, but merely representative.

    Trademark (Not Copyright)

    Another misconception is that you can copyright a business name, title, slogan, or logo. Trademark, not copyright law, affords protection for those items.

    Like copyrights, trademarks are a federally protected intellectual property right. The Lanham Act1 defines federal trademark protection and trademark registration rules, in addition to granting the United States Patent and Trademark Office (USPTO) administrative authority over trademark registration.

    Trademarks – along with their closely-related cousins, service marks and trade dress – include any word, name, symbol, device (including even sounds and scents), or any combination thereof, used to or intended to identify and distinguish the goods or services of one seller or provider from those of others, and to indicate the source of goods or services.

    Simply put, a trademark is a brand name. Generally, a person or entity obtains trademark rights and ownership via continued use – registration makes a public record that a mark is being used. To obtain a federal trademark registration, the registrant must show use of that source designator in interstate commerce.

    Wisconsin also has its own state-specific trademark registration, codified in Wis. Stat. chapter 132.

    Patent or Trade Secrets (Not Copyright)

    Copyright law also does not cover methods or systems of operation – for those, look to patent or trade secret law.

    United States patent law is codified in Title 35 of the U.S. Code, and is authorized by the U.S. Constitution, Article One, Section 8, clause 8. The United States Patent and Trademark Office (USPTO) holds administrative authority over granting patents.

    Any person who invents or discovers a new or useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent after a successful patent prosecution.

    Wisconsin’s Uniform Trade Secret Act, located in Wis. Stat. section 134.90, is meant to provide rights and remedies for espionage, theft, bribery, misrepresentation, and breach or inducement of a breach of a duty to maintain secrecy over information, including a formula, pattern, compilation, program, device, method, technique, or process.

    Conclusion: Something to Keep in Mind

    Copyrights and other intellectual property may not be the first thing to come to mind in the context of construction law, but they certainly are important to ensure a well-rounded and complete set of legal services.

    This article was originally published on the State Bar of Wisconsin’s Construction and Public Contract Law Section Blog. Visit the State Bar sections or the Construction and Public Contract Law Section web pages to learn more about the benefits of section membership.


    1 15 U.S.C. § 1051, et seq.

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