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Karl
Senior Member
USA
914 Posts |
 Posted - Apr 30 2006 : 10:58:48 AM
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Intellectual property on the job: A tricky issue for employers
By Dianne Daley
Sunday, April 30, 2006
The question of who owns the intellectual property rights (IPRs) in material generated by employees or independent contractors is frequently being asked in board rooms across Jamaica.
When this question is posed after the fact, a blurry or disturbing answer can result in executives racking their brains to recall the circumstances in which the material was created, tearing down their offices to locate, possibly, a non-existent contract or finding the lawyer to blame.
The 40-million gallon ethanol plant at Petrojam's Marcus Garvey Drive plant.
The answer, of course, varies based on the particular circumstances in which the material in question was created, the nature of the relevant intellectual property, the time when the material came into being, the existence or non-existence of an agreement on ownership of IPRs and so on. Some IP laws are very clear on the issue of ownership as a starting point, while others may leave the question hanging.
Here is a look at the situation on ownership of IPRs in copyright material, industrial designs, inventions and trademarks as provided by the relevant laws of Jamaica, and a little advice that may reduce the anxiety about who owns IPRs on the job.
Copyright
Under the Copyright Act of 1993, the author is deemed by statute to be the first owner of the copyright unless there is an agreement to the contrary. Where a work is made by more than one author, the authors are deemed to be co-owners of the copyright.
The initial step in determining the first in the chain of title to copyright is knowing who authored the work. Under the Act, 'author' means the person who created the work. For example, in respect of a computer program, the author is the person who writes the program. For an artistic work, other than a photograph, it is the artist; for a photograph, it is the photographer.
For a computer-generated work, the author is deemed to be the person/entity who undertakes the arrangements necessary for the creation of the work. The publisher is the author of a typographical arrangement of a published edition. In respect of sound recordings and films, the author is the person/entity who undertakes the arrangements necessary to make the recording or film. In relation to broadcasts, the author is the person making the broadcast, ie the person/entity transmitting the programme to the extent that he/it is responsible for the contents.
There is no statutory exception to the first ownership rule for works created under employment or by commission. There is no work for hire exception under the Jamaican law. Therefore, unless there is an agreement to the contrary, copyright initially belongs to the author.
An agreement to the contrary usually takes the form of a written contract or other instrument. It may also be implied from the circumstances. However, other than by Will or Operation of Law, legal title will only pass by assignment. An assignment of copyright must be in writing and signed by or on behalf of the assignor in order to be valid.
A statutory exception to the first ownership rule exists where a work is first published by or under the direction or control of a specified international organisation. In such a case, the copyright may vest in the international organisation which would be deemed the first owner of copyright if (i) the author did not reserve the copyright by way of agreement, or (ii) the work was made in such circumstances that if it had been first published in Jamaica the organisation would have been entitled to the copyright in the work.
No Order has yet been made under the Copyright Act specifying the international organisation(s) to which this provision would apply.
For certain works created before Jamaica's Copyright Act of 1993 came into force, one will have to go to the UK Copyright Act of 1911 for guidance on ownership. Although the principle of first ownership applied under the 1911 Act as a general rule, there were some exceptions.
In relation to artistic works, for example, where in the case of an engraving, photograph, or portrait, the plate or other original was ordered by some other person and was made for valuable consideration then, in the absence of any agreement to the contrary, the person by whom such plate or original was ordered was deemed to be the first owner of the copyright.
Where the author was in the employment of some other person under a contract of service or apprenticeship and the work was made in the course of his employment by that person, the employer is, in the absence of any agreement to the contrary, deemed to be the first owner of the copyright.
Given the absence of statutory exceptions for works done within the scope of employment or by commission under the current Copyright Act, employers may need to ensure that employment and commissioning contracts appropriately address the issue of copyright ownership.
In the case of government employees, the Staff Orders specify that copyright belongs to the government in respect of work, documents or reports produced within the scope of employment, using facilities, personnel, resources from government or resulting from contracts between a government ministry, department or agency and a contractor in which the ownership has not been specified.
Industrial Designs
Under the Designs Act of 1937, the author of a new and original design is deemed to be the proprietor thereof. There are no specific provisions relating to ownership of designs created under employment.
However, in respect of designs created by commission, the law provides that where the author has created the design on behalf of an approved society (meaning a society, institution or organisation of a public, philanthropic, or self-help character approved by the responsible minister of government) whether for consideration or otherwise or on behalf of another person for a good or valuable consideration, that society or other person is deemed to be the owner thereof.
As the law is silent on ownership of new and original designs created in the course of employment, a corporation would need to acquire ownership by way of a written assignment from the employee. Assignments may be recorded in the Register of Designs.
Trademarks
By virtue of the Trade Marks Act of 1999, a registered trademark gives clear title to the proprietor and tends not to give rise to ownership disputes as with other forms of intellectual property. Rights in a trademark can usually be verified through searches of trademark registers which indicate who the proprietor is as well as changes in ownership which are effected by written assignments.
Disputes have, however, arisen where trademarks are unregistered or have been conceptualised and/or registered by a third party, when the intention was for the corporation to own them. This has occurred with program names, personality trademarks, stylised marks and logos. A logo or stylised mark may have artistic elements protected by copyright which may reside in the artist who created it.
The moniker of a disc jockey or radio host may become a popular programme name and trademark.
It is critical in such instances to ensure that there are agreements which address who owns all the relevant rights.
Patents
Some modern patent laws contain provisions on ownership of inventions created by employees in the course of employment. Jamaica's Patent Act of 1857 is silent on this issue. Under the Jamaican law, the applicant for a patent may be the inventor or his/her assignee.
The law provides that any patentee may assign to any person/entity his/her right, interest and title in the invention in the Jamaican patent, whether totally or partially. Assignments of patents must be written and recorded.
It remains to be seen whether the proposed new patent legislation which is intended to implement standards outlined by the WTO TRIPS Agreement will address this issue.
Some advice
Given the provisions or, in some instances, the lack thereof, on IPRs ownership on the job, employers may need to rely on contractual tools in securing their proprietary interests.
For consultants, outsourcers and other independent contractors close attention needs to be paid to contractual provisions on IP rights to ensure that they reflect the mutual intention of the parties, afford the corporation what it needs to properly exploit the resulting material and carry an appropriate or commensurate value. In respect of employees, properly drafted employment contracts and internal policies outlining ownership of IPRs created on the job would provide greater certainty in the work environment.
In the final analysis, the best approach to ownership of IPRs on the job is to have a written agreement between the relevant parties before the fact and to make sure your lawyer is on spot to advise you.
Dianne Daley is an attorney-at-law and the Intellectual Property Partner of the law firm Foga Daley & Co
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Karl |
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Intellectual property on the job: A tricky issue..
