Termination for Convenience: Copyright, BIM Files and Unpaid Fees
Architect D is appointed for a 200-unit residential development in Tseung Kwan O. The appointment is terminated by the employer 'for convenience' when design development is 60% complete. The employer has paid HK$9.2 million but withholds HK$2.8 million, alleging late delivery. The contract is silent on copyright and on the delivery of electronic files. The employer demands all CAD files, the Revit model and the consultant reports, and says it will appoint another architect to complete the design and lodge the plans with the Buildings Department. D has issued PDF drawings marked 'for information only' but refuses to hand over the native BIM model. D says it will retain all documents until the HK$2.8 million is paid. The employer threatens to sue and to report D to the Architects Registration Board for abandonment.
1. Who owns the copyright in the drawings and the BIM model, and what rights does the employer have after termination?
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Under the Copyright Ordinance (Cap 528), copyright in drawings and in a BIM model belongs to the author unless it has been assigned in writing. A commission to design does not automatically transfer copyright. The employer therefore owns the physical drawings and any site information it has paid for, but not the copyright. After termination, the employer will usually have an implied licence to use the drawings for the project for which they were prepared, but not to modify them or to use them on a different site. The position on the BIM model depends on the appointment and on any BIM protocol; if the contract is silent, D retains copyright in the model, but the employer may have a licence to use the model for the same project. The employer cannot assume that it can appoint another architect to alter D's drawings without D's consent, although in practice a new architect may prepare a fresh design.
2. Can D lawfully withhold the native files pending payment? Discuss the legal and professional position.
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D's refusal to hand over the native files is not automatically unlawful, but the legal position is not a simple lien. In Hong Kong, an architect does not have a general statutory lien over documents. The appointment may give a right to retain documents until fees are paid, but if the contract is silent, withholding may be a breach of the duty to cooperate on termination. The professional position is also important: the HKIA Code expects an architect to hand over information necessary for the project, especially where public safety or statutory approvals are involved. D can legitimately refuse to assign copyright or to license modification, but it should not use the files as a lever to extract an unrelated fee. A court may order delivery of documents necessary to complete the project, with payment secured separately. D should separate the fee dispute from the handover.
3. Recommend a practical resolution that protects D's fee position without breaching professional obligations.
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A practical resolution: D should offer to deliver PDFs and a read-only or licensed copy of the BIM model for the employer's use on the same project, with a written licence that preserves D's copyright and excludes modification by others. D should require payment of the undisputed portion of the fee, or agree a payment schedule or escrow for the HK$2.8 million. If the employer needs the native model for a new architect, D can negotiate a licence fee or a novation/assignment, but should not simply hand over the IP. D should also respond to the ARB complaint with evidence of the termination, the work done and the offer to cooperate. The aim is to avoid abandonment, protect the fee and preserve the client's ability to complete the project. Mediation or adjudication may be appropriate.