Establishing first ownership of copyright in a work is usually straightforward. The general rule is that the author of a work is the first owner of copyright in it, and where the work is created by an employee during the course of their employment, the first owner is the employer. This applies where the work created is a literary, artistic, musical, dramatic or film work.
However, the waters of first ownership become muddied when an employee claims that the work was not created during the course of their employment. Such claims are usually based on the work having been created outside of an employee’s contracted hours or using personal equipment. This was the case in a recent claim heard by the Intellectual Property Enterprise Court (IPEC).
Penhallurick v MD5 Ltd
This case centred on the question of whether the claimant, an employee of the defendant, was the first owner of eight works, which included various versions of software and a user guide. The claimant asserted that he was the first owner of the works as they were created primarily at home, in his own time, and using his own computer.
As a result of the defendant using the works, the claimant issued a claim against the defendant for copyright infringement. In response, the defendant issued a counterclaim for breach of contract and copyright infringement in relation to the works.
In determining whether the works were created during the course of employment, IPEC took a number of factors into consideration. The judge in this case considered the claimant’s contract, his duties, and the instructions given to him by the defendant, and in doing so determined that the works created were integral to the claimant’s duties as an employee of the defendant. Therefore, although working from home was relevant to the question of whether the works were of a nature to fall within the scope of the duties for which the claimant was paid, it did not carry much weight.
Consequently, the judge granted a declaration that the defendant owns the copyright in the works.
This case provides employers with helpful guidance in relation to who the first owner is of a work created by an employee working from home and outside of his or her contracted hours. This is of particular significance given that, over the past twelve months, many employees have been working from home and sometimes outside of his or her contracted hours due to childcare commitments.
It is therefore possible that businesses will face issues and claims in the future regarding who is the first owner of copyright in works created by employees whilst they worked from home during the pandemic. To help ensure that such claims can be quashed when they arise, employment contracts should be reviewed to confirm an employee’s duties are clearly defined and intellectual property assignment clauses are included and effective. If there is any doubt as to whether employee contracts sufficiently cover this area, legal advice should be sought as soon as possible.