Copyright ownership and employees

21 May 2010

By Ben Evans

Who owns copyright works created by an employee?

In the UK copyright law is governed by the Copyright, Designs and Patents Act 1988 ('CDPA'). Section 11 of the CDPA states as follows:

"(1) The author of a work is the first owner of any copyright in it, subject to the following provisions.

(2) Where a literary, dramatic, musical or artistic work, or a film, is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to any agreement to the contrary."

As a general rule the author of a work is the person who created it, there are however some exceptions to this which are set out in section 9 of the CDPA. For example in the case of a sound recording the author is the producer, in the case of a film the producer and director and in the case of a computer generated work the author is the person who made the arrangements necessary to enable the creation of the work.

The provisions of section 11 CDPA can be contracted out of provided that the contract is made prior to the creation of the copyright work i.e. it cannot be done retrospectively. Unlike assignments of copyright there is no requirement for said contract to be in writing.

Of course in order apply the rules in sections 9 and 11 it is essential to understand who is and who is not considered to be an employee. This is not a straightforward area but basically the steps are 1) to ascertain if there is contract of employment (Parsons v Parsons [1979 FSR 254]); and 2) where there is a contract it must be established if it is a contract 'of service' (employment contract) or a contract 'for services' (self-employed). As a general rule where it is a contract for services copyright will be owned by the contractor.

Having identified that a party is an employee it must then be determined whether or not the work was created 'in the course of employment', there is significant case law on this area but the recent case of Burrows v Smith and Crush [2010] EWHC 22 (Ch) provides a particularly good illustration of how this area is treated.

Mr Burrows created a game concept called 'Traktrix', at the time of creation Mr Burrows was a freelancer, later however he applied for a job at Circle Studios. As part of the application Mr Burrows pitched a number of game ideas (but not Traktrix). Mr Burrows was successful in the application and upon being taken on board he pitched a new game which was very similar to Traktrix, although he didn't admit to having come up with the concept some time earlier. The company made a number of changes to the concept and came up with 'Traintrax', unfortunately for them the company went into liquidation and Traintrax was bought by Mr Smith on behalf of Crush Digital Media Limited. Mr Burrows brought proceedings against both Mr BUrrows personally and against Crush Digital Media Limited. The court held that whilst some copyright in the concept of Traktrix may be owned by Mr Burrows there was no evidence that Crush actually used the infringing copy.

Ben Evans is a trainee solicitor at Lawdit.