#15016 - Copyright Authorship Term - Intellectual Property Law

Important concept

• Determines who holds the rights

• Can affect whether a work qualifies for copyright protection

• Affects the term of protection (70 years after death)

No definition in Berne Convention

• But can infer that authors of literary and artistic works must be natural persons

  • Since the works must be intellectual creations of the author and the author must have a lifespan else the term could not be calculated

CDPA s9(1): Author is the person who creates the work

• i.e. contributes the originality

• Walter v Lane (1900): Since the reporter expended skill and effort in transposing Lord Rosebery’s speech into writing, he was an author of a copyright work

CDPA s9(2)

• Author of Sound recording is producer (s9(2)(aa))

• Film: producer AND principal director (s9(2)(ab))

  • Principal director added in because of a EU Harmonising Directive

• Broadcast: person making the broadcast (s9(2)(b))

• Typographical arrangement: publisher (s9(2)(d))

• Definition of producer: “person by whom the arrangements necessary for the making of the sound recording or film are undertaken” (s178)

  • Bamgboye v Reed (2004): Producer is determined by who provided the financial arrangements or instigated the process

S104-105: Evidential Presumptions

• Any name listed as author on (or in) the work is presumed to be correct unless the contrary is proved

CDPA s10(1): Works of joint authorship are produced by collaboration where “the contribution of each is not distinct from that of the other author or authors”

• Results in joint authorship and joint ownership (affects the rights of each owner)

• C was hired by D as consultant to advice on repertoire and catalogue its library

  • C’s catalogue (using his own factors, including a “tingle” factor) was later used in D’s automatic database which D licenced to foreign stations

• D claimed that they could exploit the work, C disagreed

• Lightman J: D didn’t have the right to licence the database

  • Even if D had been a joint author, it was a tenant in common and therefore could not do any restricted acts without consent of ALL the co-owners

• C brought a claim of joint authorship of the musical work due to his organ part

• UKHL: C’s organ part and the solo qualified as an “original contribution” to the work so C was given 40% copyright over the work

  • Not estopped from asserting copyright even though it was already 40 years after the work was created

• NOTE: Unlike Godfrey v Lees (1995) where C was estopped from revoking the implied licence of a work created 14 years ago (because it was a harsher claim?)

• D had written the script of the play and C had directed the first production

• C claimed joint authorship from contributions and suggestions made during rehearsals regarding changes to plot and dialogue

• Park J: C was not a joint author, identified 3 requirements

  • Contribution of a joint author need not be equal but must be significant

  • The contribution must be “towards the creation of the work”

    • Any other contribution, even if significant, is insufficient

  • Joint author need not “put pen to paper” himself

  • In this case, burden of proof was on C since D was listed as sole author on the script itself (s104 presumption)

    • C contributed to the “interpretation and theatrical presentation” and not the creation of the dramatic work which D had already written beforehand

• Beckingham v Hodgens [2003] EWCA Civ 143

  • C contributed the violin part of a song

  • CA: Joint authorship does not require “the existence of a common intention as to joint authorship”, as long as there is a “common design to produce the work”

• Example of separate contributions: each author contributes a different chapter to a book

• US requires that the contribution be “merged into inseparable or interdependent parts of a unitary whole”

• NEW introduction (Nov 2013, based on EU Directive)

• Different from joint authorship

• Covers a collaboration of musical and literary works that are “created in order to be used together”

CDPA s11(1): General rule is that the first owner of copyright is the author

But 3 EXCEPTIONS:

1. EXCEPTION: Works of Crown of Parliamentary copyright, which are owned by Her Majesty s163

2. EXCEPTION: For works made by an employee in the course of employment, copyright is owned by the employer (s11(2))

   1. Applies to literary, dramatic, musical and artistic works and films

3. EXCEPTION: Copyright vests in designated international organisation (s11(3)) NOT IMPT

• In France, there is no general rule of automatic transfer of ownership to employers

  • Employers have to negotiate for a transfer of copyright

• Employees can have a contract of service or apprenticeship

  • Beloff v Pressdram (1973): Control and skill required are factors in determining a contract of service, as well as regular salary and provision of resources

• The work must have been created in the course of employment

• C was a consultant epidemiologist at the Public Health Laboratory Service (PHLS) and wrote a guide in his own time using PHLS library and secretarial assistance, which was first published by PHLS

• D wrote an article reproducing substantial extracts from C’s guide

• Mummery J: C owned the copyright

  • He could not have been ordered to create the work nor was it part of his duty to do so

  • In any case there was an implied term of the contract (in line with long practice) for employees to retain copyright in articles they wrote in the course of their employment

A management engineer wrote a book using information he gained while working for his firm, first as an employee, and then an executive officer. Some was from the text of lectures that he wrote and delivered, and some was material he acquired while on an assignment. He died before publication. The Copyright Act 1911 section 5(1) said that the author of a work is the first owner of a copyright. But if the author was under a contract of employment and the work was in the course of employment the employer would own the copyright in absence of another agreement. His old firm claimed the copyright

Denning LJ held the engineer simply put together his know how of the profession and had not betrayed any mystery of the firm’s business or disclosed trade secrets. His contract was mixed, partly of and partly for services outside the contract. His lecture work was not covered by the Act, but the material acquired while on assignment did fall within the Act. The publishers should be restrained from printing that section, which was severable.

• Where the copyright owner cannot be identified/located by the person who wishes to use the work

  • Given that copyright arises without formality the user has to assume that the works are protected by copyright

• Big problem in the UK: 5-10% of holdings in most public sector institutions consist of such orphan works

• Orphan Works Directive 2012

  • Orphan works whose authors cannot be identified/located after a diligent search

  • Member States must allow reproduction and communication by certain institutions (libraries, educational establishments, archives, etc.)

  • Authors must be fairly compensated if they subsequently come forward

• Since Oct 2014, new Regulations have introduced a scheme allowing the use of orphan works in the UK

  • Licence for reproduction can be granted by the IPO if a diligent search produces no information on the location/identity of the author

  • Licensing fee is kept by the IPO to be distributed if the author later comes forward

  • IPO keeps a register of orphan works for authors to use to identify their works

Assignment: Transfer of ownership

• Can be partial

  • Transfer a limited number of rights

  • Transfer ownership for a limited period of time

• S90(3): Requires signed writing

Licence: Grant of permission to carry out certain restricted acts

• Exclusive licence: Licensee can carry out the relevant acts to the exclusion of all others, including the one granting the licence

  • Requires signed writing

  • S101: Exclusive licensees have the same rights and remedies as copyright owners (can bring enforcement proceedings) but not against the owners

• Sole licence: The copyright owner remains free to exercise the licenced rights

• Non-exclusive licence: Licensee cannot exclude the owner or 3^rd parties

Usually, copyright will vest with the author

• Since commissioned works are produced under a contract for services and not a contract of service (employment)

• Commissioning parties usually specify terms of assignment or licence, but the Court can also imply such terms

Robin Ray v Classic FM [1988] FSR 622

• Lightman J: There was an implied licencing term given to D

  • “the mere fact that the contractor has been commissioned is insufficient to entitle the client to the copyright”, he must show entitlement under an express or implied term of the contract

  • Any implication of terms cannot go beyond what is necessary (minimalist approach)

    • So if a licence is sufficient, that will be granted instead of an assignment

  • Assignment will only be implied if the client needs to use the work AND exclude the contractor AND enforce the right against 3^rd parties

    • E.g. where the purpose is to sell copies of the work without competition or the work was derived from...