Intellectual property
| Author | Julian Bailey |
| Pages | 1377-1397 |
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CHAPTER 16
INTELLECTUAL PROPERTY
Introduction 1377
Copyright 1378
(i) Introduction 1378
(ii) Who owns copyright? 1380
(iii) Copyright licence 1381
(iv) Assignment of copyright 1384
(v) Infringement 1384
(vi) Remedies for infringement 1387
Ownership and possession of documents 1390
(i) Generally 1390
(ii) Express agreement 1391
(iii) Lien 1392
(iv) Remedies for refusal to hand over documents 1392
Condential information 1393
(i) Introduction 1393
(ii) Obligation of condence 1394
(iii) Contractual obligation of condence 1395
(iv) Permitted use of information 1396
(v) Breach of condence 1396
(vi) Remedies for breach of condence 1396
Introduction
16.01 “Intellectual propert y” is an umbrella term that refers to a range of rights recog-
nised at common law, in equity and under statute, which are concerned with the protec-
tion of the fruits of intellectual endeavour.1 e topic of intellectual property embraces
1 Intellectual property is a vast topic in itself, and will not be covered in exhaustive detail in this chapter. For works
of reference on intellectual property generally, see Cornish, Llewelyn and Aplin, Intellectual Property: Patents, Cop-
yrights, Trade Marks and Allied Rights (Sweet & Maxwell, 9th edition, 2019); Stewart, Van Caenegem, Bannister,
Liberman and Lawson, Intellectual Property in Australia (Lexis Nexis, 6th edition, 2017); Wong and Lee, Intellectual
Property Law and Practice in Hong Kong (Sweet & Maxwell, 2nd edition, 2017); Ng-Loy Wee Loon, Law of
Intellectual Property of Singapore (Sweet & Maxwell, 2nd edition, 2014).
INTELLECTUAL PROPERTY
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the law in relation to copyright, trade marks,2 patents and designs3 as its core areas in
which there is a statutory creation and protection of rights. Additionally, intellectual
property may be regarded as including cognate rights that protect human creativity, in
particular the law of condential information (or trade secrets).
16.02 Intellectual property rights come into play in the execution of construction and
engineering projects in multiplex ways.4 An area in which intellectual property issues
commonly arise is in relation to copyright in drawings and specications, usually where
there is disagreement over the entitlement of a person to use, or perhaps reuse, critical
documents. Allied to this is the issue of who owns the physical documents produced
for the purposes of a construction or engineering project. A further issue is the use
of condential information that is transmitted or created as part of a construction or
engineering project. ese are the principal areas of intellectual property covered in this
chapter.
Copyright5
(i) Introduction
16.03 Copyright is a property right, conferred by statute,6 which relates to original
works7 such as books, lms, plans and drawings, sound recordings and a range of other
2 A trade mark is a recognisable image or design which identies a particular business or product. Trade marks are
created by and protected under a system of statutory registration. As an illustration in the context of the building
industry, see Buildcorp Contracting NSW Pty Ltd v Build Corp Construction Pty Ltd [2019] FCA 90, which con-
cerned an infringement of a registered trade mark (pursuant to the Trade Marks Act 1995 (Cth)) of the construction
company “Buildcorp”.
3 e law concerning patents and designs is relevant to disputes over the right to use specialised construction
methods, techniques or designs: see, eg, Baygold Pty Ltd v Foamex Polystyrene Pty Ltd [2005] FCA 145, [2005] FCA
624 (patent); Digga Australia Pty Ltd v Norm Engineering Pty Ltd [2008] FCAFC 33 (design); SNE Engineering
Co Ltd v Hsin Chong Construction Co Ltd [2014] HKCFI 552 (patent); Dincel Construction System Pty Ltd v AFS
Systems Pty Ltd [2017] FCA 262, [2017] FCA 791 (patent).
4 One of the diculties that contracting parties often face when entering into constr uction and engineering
contracts is knowing whether the other party to the contract has the right to use certain documents, methods,
information or technology. It is for this reason that it is common for construction and engineering contracts to
contain warranties that each party shall not infringe any (or certain) intellectual property rights, and will indemnify
the other party should it commit an infringement of such rights, where the eect of the infringement may be to
cause the counterparty to incur additional cost or otherwise suer a loss: see, eg, JCT Standard Building Contract,
2016 edition, clause 2.22 (patents); AS 4000–1997 clause 10; FIDIC Red Book (2nd edition, 2017) clause 17.3.
5 See generally Tappin et al., Laddie, Prescott and Vitoria: e Modern Law of Copyright and Designs (LexisNexis
Butterworths, 5th edition, 2018); Davies, Caddick and Harbottle, Copinger & Skone James on Copyright (Sweet &
Maxwell, 17th edition, 2017); Lindgren et al, Lahore Copyright and Designs (Lexis Nexis, looseleaf).
6 Copyright, Designs and Patents Act 1988 (UK); Copyright Act 1968 (Cth); Copyright Ordinance (Cap 528)
(HK); Copyright Act (Cap 63, 2006 revised edition) (Sing).
7 A work is “original” for the purposes of copyright legislation where its expression is original, even if the work
does not in itself express any new or original ideas. A work may be “original” even if a plan or drawing represents
a compilation of previously known elements: Inala Industries Pty Ltd v Associated Enterprises Pty Ltd [1960] QdR
562 at 569–570, per Manseld CJ; Ownit Homes Pty Ltd v D&F Mancuso Investments Pty Ltd (1990) 6 Const LJ
161 at 164 [FCAFC] (5 BCL 64); Cala Homes (South) Ltd v Alfred McAlpine Homes East Ltd [1995] FSR 818
at 829, per Laddie J; Barrett Property Group Pty Ltd v Dennis Family Homes Pty Ltd [2011] FCA 246 at [120],
per Dodds-Streeton J; Coles v Dormer [2015] QSC 224 at [34], per Henry J. e question of originality is one
of fact and degree: Norm Engineering Pty Ltd v Digga Australia Pty Ltd [2007] FCA 761 at [120], per Green-
woodJ (armed on this point: [2008] FCAFC 33). See also Signature Realty Ltd v Fortis Developments Ltd [2016]
EWHC 3583 (Ch) at [51], per Mr John Baldwin QC; Milankov Designs & Project Management Pty Ltd v Di Latte
[2018] WASC 14 at [66], per Martino J.
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