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Is Shipping Container "Pop Up" Design Intellectual Property?

Author

Stephen Del Percio

*This article originally appeared at our sister publication, the Green Real Estate Law Journal.

Container architecture frequently – and inherently – intersects with green building practices. Here in New York City, for example, the New York Center for Sustainable Energy opened earlier this fall in Brooklyn: designed by Gensler, the structure was built from used 40-foot steel shipping containers as a net zero educational and electric vehicle charging station for Brooklyn Bridge Park. More generally, people seem intrigued by the design possibilities implicated by these large – and frequently colorful – steel structures that have been manipulated in many interesting ways. But a pending lawsuit against a pop-up shopping mall in New Zealand – built with shipping containers – now has some commentators wondering about the future of this type of architecture. At a minimum, the dispute also presents a good opportunity to reflect on certain key provisions in design and construction contracts.

London's Boxpark shopping center is being promoted by its development team as "the world's first pop-up mall" and is slated to open in the city's Shoreditch neighborhood before the end of the year. Featuring a collection of local businesses and small retailers, the mall is built entirely from converted shipping containers. But according to its developer, Roger Wade, a 60-container pop-up mall in Christchurch, New Zealand has stolen Boxpark's design concept. Mr. Wade claims that the Christchurch developers actually visited Shoreditch in May "to discuss a potential Boxpark joint venture in Christchurch." Now, he and his team are "surprised to hear that apparently the world's first pop-up mall is now happening in Christchurch. This is blatant breach of the Boxpark intellectual property rights. Boxpark has now instructed legal action against the owners of City Pop-Up Mall for intellectual property rights infringement."

Twenty-seven local retailers are currently installed at the Christchurch mall (dubbed Re:START and pictured below) while the city's permanent mall is rebuilt after New Zealand's devastating February earthquake (which gave rise to Re:START). Although local residents are thrilled to have a new shopping destination, the Atlantic's Cities blog reports that "Wade and his development groups are not likely to back down from what they see as an outright theft. As members of an intellectual property rights protection organization called ACID – Anti-Copying in Design – it's expected that they'll push as hard as they have in order to get either some sort of licensing deal or even shut down the project."

In a globally soft commercial real estate market, pop-up stores are becoming increasingly popular and the term itself generic. So Re:START's decision in late October to remove all references to "pop-up mall" from its promotional materials seems both curious and overcautious. According to Re:START developer Paul Lonsdale, the move "was a precaution until the specific details of Wade's complaint could be clarified." Mr. Lonsdale also claims that Re:START's configuration is in the shape of two separate horseshoes, while Boxpark's is the shape of one large box. "It will be very hard to say it's a copy because it doesn't look anything like Boxpark," Mr. Lonsdale said. "The only thing that aligns these things together is they both use containers."

So what – if anything – might this mean from a legal perspective? For construction lawyers, the story is a powerful reminder of how critical ownership of documents provisions are when negotiating design and construction agreements. Obviously the idea of container architecture is nothing new. But the particular layout of the London pop-up mall might be. If Mr. Wade can prove that he owns the design of how the containers are arranged, and that design was reproduced without his consent, perhaps he has a legitimate claim against the Re:START project. The details that we would only likely uncover in the event of an actual lawsuit are what specific rights Mr. Wade received to the design under his agreement with Boxpark architect Anton Tritt and whether any of those rights were breached (either by Mr. Anton or Re:START itself).

From a green building perspective, the story is also reminiscent of an insurance claim reported by Frank Musica back in 2006, where an architect specified an "innovative" solar panel system that turned out to be patented by another designer and triggered a suit against the specifying architect. Although patents are not the issue here (contrary to a note in the Atlantic's article), the dispute emphasizes the importance of provisions relating to intellectual property in design and construction agreements. We'll be keeping an eye out in the event that things move beyond this initial verbal sparring between the two developers.