#1682 - Copyright Ownership And Duration - Intellectual Property Law

3. Ownership and Duration

Rules on ownership:

Exceptions to the basic principle:

(i) S.11(2): Where the work was made by an employee in the course of his employment the copyright first vests in the employer. [Reverses usual state – can contract out of it. Issues: is a person an employee or independent contractor? Was work created in course of employment?]

(ii) S.11(3): copyright vests in a designated international organisation.

(iii) S.163: work attracts Crown or Parliamentary copyright.

S.178 of the CDPA defines an ‘employee’ as being in employment under a contract of service or of apprenticeship.

NB. In France there is no presumed transfer of ownership of economic rights to the employer. Employers have to negotiate with employees to agree a transfer of rights.

The indicia of a contract of service, as opposed to a contract for services, were explored:

• Beloff v. Pressdam [1973];

Facts: Ms B had written a memorandum, excerpts of which were used by D in its ‘Private Eye’ publication.

Issue: Was Ms B an employee of ‘The Observer’ newspaper? If so, she had created the memorandum in the course of employment and her employer owned copyright in the literary work, such that she did not have standing to bring the action against D.

Decision: Ms B was an employee and had a contract of service.

Indicia: Control. Salary. Holidays. Uses the company’s resources.

Employee must have created the work in course of his employment in order for ownership to vest in the employer:

• Noah v. Shuba [1991];

Facts: Dr N was employed as a consultant epidemiologist at the PHLS. He had written, ‘A Guide to Hygienic Skin Piercing’ at home in the evenings and weekends, but had used the PHLS library and secretarial assistance. Guide was first published by PHLS. D had written and published an article which reproduced substantial extracts from Dr N’s guide. Dr N brought proceedings alleging copyright infringement. D argued the owner of the copyright in the guide was not Dr N, but his employer.

Decision: Work not written in course of his employment so he retained copyright as author.

• Byrne v. Statist [1914]; Employee on FT made translation from Portuguese in his own time. Held he was the owner of copyright.

• Stephenson Jordan v. McDonald & Evans [1952];

Facts: Accounted employed by claimant gave lectures which were recorded in a book.

Decision: Held copyright in lectures did not belong to the employer even though the employer had paid to secretarial work in helping to write them, because the accountant was paid to advise clients, not write lectures. But one report in the book was written to advise clients and the copyright for that did belong to the employer.

NB. If there is an agreement to the contrary, ownership of the copyright works created in the course of employment remain with the employer.

Even if employee does own copyright of work, if there is a fiduciary duty or contract employee may hold it on trust:

• AG v. Guardian Newspapers (No. 2) [1988]

• Griggs Group v. Ross Evans, Raben Footwear [2004]; G makes Dr Martens boots under licence from German trademark owners. Wanted to combine 2 logos – commissioned R to design 2 logos. R tried to assign the copyright to a co. called Raben, who were competitors of Griggs and bore them a grudge following litigation in Aus. Held G were beneficial owners, but R held it on a trust. Odd facts!

Rules on duration:

Duration of Copyright - CDPA ss. 12-15A

S.12 CDPA – Artistic, drama, music… New works...