Real property is a developer’s bread and butter, but intellectual property (IP) can be just as important to an established developer as their bricks and mortar.
This article explores how developers can leverage both asset types to secure and grow their portfolio and discusses potential issues developers should be aware of to protect themselves and their developments. If you require advice about how you can harness your brand’s IP and ensure your developments are free from any IP restrictions, please reach out to Align Law.
What is IP law and why is it important?
Protecting and registering your IP means that you can enforce your rights to profit from your ideas and brand identity, allowing you to capitalise on your recognisability and reputation in the marketplace. The language of IP is familiar to many – trademarks, copyright and patents – but the distinctions can sometimes be blurred. Trademarks cover your right to words, phrases and ideas whereas copyright covers artistic work which can include art like paintings and drawings, or buildings and their designs. Patents, on the other hand, protect new inventions.
Case Study 1: The Melbourne Walk Redevelopment
Align Law worked on securing the ‘Melbourne Walk’ name for Steadfast Capital’s iconic redevelopment of the Walk Arcade – the first major development of this famous strip in over 50 years.
Just off Bourke Street Mall, the 3,600 square metre site leaves a big footprint in the city’s centre. A great development starts with a great name.
Working alongside logo and brand designers, we navigated the complexities of a geographically descriptive name to secure the trademark for Melbourne Walk's unique identity.
How is IP law changing in Australia?
Earlier this year, IP Australia adopted the Madrid Goods and Services List (MGS List), bringing Australia into line with the World Intellectual Property Organization (WIPO) standard. Comparing to the previous system, the Trade Mark Goods and Services list, the new MGS List requires trademarks to be registered under more specific banners. Whilst this will create a more efficient system for Australian companies seeking to register and protect their trademarks, the increased specificity under the MGS List will require trademark owners to ensure their registrations protect all the areas of their trademark’s intended use. A prudent trademark owner would seek professional legal advice to ensure a seamless process for its company/ product branching out globally.
Do I own the IP associated with my development plans and drawings?
IP covers the obvious categories of company names, logos and designs but it also extends to protect plans and drawings associated with real property developments under the Copyright Act 1968 (Cth) (‘the Act’). Artistic work is protected by the Act and is defined to include ‘a building or a model of a building, whether the building or model is of artistic quality or not’ which poses some challenges for developers of real property.
When buying sites subject to development approval, it is imperative to ensure that the use of the plans and drawings associated with the development are not restricted by copyright. While development approvals usually pass on to the purchaser, they do not necessarily pass on free from any copyright restrictions that the designer might still lay claim to. Ensuring the plans and drawings are unencumbered prior to the sale can save headaches at the development stage, especially if amendments are required further down the line.
Developers should be aware of these copyright protections when contracting architects or engineers to draw up plans. Architects own the copyright of their plans but there is an implied licence for the client that commissioned the work to be able to use the plans they requested. But remain wary and get your legal advice on your agreements – some contractors may include clauses in their agreements that restrict this implied licence, limiting who can use the plans they provide or whether the developer can pass them on prospective purchasers or third parties.
Case Study 2: Copying or Coincidence
This collide between real and intellectual property was litigated in Carlisle Homes Pty Ltd v Tick Homes Pty Ltd [2018] FCA 973. Carlisle Homes’ general manager left the company and was employed by their competitor, the parent company of Tick Homes. Carlisle Homes claimed that Tick Homes subsequently produced plans with too many similarities, including:
- carveouts in living areas to allow televisions to be nested in the wall;
- open plan kitchen, eating and living areas;
- the location and dimensions of the alfresco dining area;
- the kitchen layout including a kitchen island bench with sink and dishwasher in it and a bench to the rear featuring the cooker and rangehood; and
- the location and dimensions of the master bedroom with an ensuite bathroom and walk-in robe.
While these similarities may seem frivolous as they are common features of many house plans, the Federal Court found that Carlisle Homes had established a prima facie case of breach of copyright. The matter ultimately settled without a definitive conclusion from the courts, but cases like these reveal the nuances of IP laws that developers should remain aware of.