©ADEEL AMJAD
OWNERSHIP OF COPYRIGHT & EMPLOYEE WORKS:
UNITED KINGDOM, UNITED STATES, FRANCEGERMANY
Authorship and ownership have long been closely intertwined in copyright law. Indeed on of the notable features of the 1710 Statute of Anne was that it recognized authors as first owners of the literary property they created.
The question of who is the copyright owner at a particular point of time will depend upon what has happened to the copyright since it was first created.
It is also important to note that, while the law recognizes that a person other than the author may be first owner, the question of who is the author remains a distinct one (and an important one). A work made by an employee author, for example has duration dependent on the life of the author (i.e. the employee) even if the first ownership vests in the employer. Equally, issues of qualification and moral rights are determined by reference to authorship (not from ownership).
A. UNITED KINGDOM
So for as literary, dramatic, musical and artistic works are concerned, the treatment of creatorship and ownership follows a close pattern: the author of such a work is the person who first renders it into tangible form, and copyright vests in the author unless some other party has a better claim to it, such as, for example, an employer who had paid the author specifically to make it. While derivative works do not follow this pattern, some of the underlying principles are broadly the same.
Copyright in sound recordings and films vests in their ‘author’.
Sections 9(1) of CDPA, 1988 has given a specific definition to author.
‘Author’, in relation to a work, means the person who creates it.
Section 9(2)(aa) states that the author of a sound recording is its producer, whilst subsection 9(2)(ab) confers the status of author of a film jointly upon the producer and director.
Turning to Section 178, we find that ‘Producer’ means ‘the person by whom the arrangements necessary for the making of the recording or film are undertaken.’
Only the director enjoys moral rights.
Under the 1956 Act, only transmissions made by the British Broadcasting Corporation (BBC) and the independent Broadcasting Authority (IBA) attracted copyright.
Now the transmission of ‘pirate’ stations (as well as those of the many legitimate stations permitted to broadcast) will apparently be protected by copyright.
It may be, however, that an old principle – no enforcement of copyright in an iniquitous work (Attorney General v Observer 1990)– would apply to hamper ‘pirate’ broadcasters in the unlikely event that they brought proceedings for the infringement of copyright.
Ownership of copyright in broadcasts is conferred upon the person providing the programme and upon a person transmitting who has responsibility to any extent for content. Thus broadcasting copyright will frequently vest in joint owners.
The owner of ‘typeface’ copyright is not the person who makes the typographical arrangement of the work but the person who publishes it. It is clear from this that the interest protected is not the typesetter’s labour but the publisher’s investment.
In its dealing with entrepreneurial works, British copyright law has tended to concentrate on the person who made the arrangements necessary for the making of the work (the entrepreneur). In contrast, civil law systems have tended to focus on the persons who made creative contributions to the work. This difference has long been seen as an important point of contrast between the two systems. As a result of attempts to harmonize copyright law in Europe, this difference is slowly been undermined.
1-Initial Ownership
Because copyright arises upon creation of the work, the question of initial ownership is not complicated, as is the case with patents and registered designs, by any need to apply for a grant. But given the lack of any formal record, it may later be difficult to establish who is the copyright owner.Hence the proposal in the Gowers Review to make it easier to secure permission to use "Orphan works”.
With literary, dramatic, musical and artistic works, first ownership rests in the author or co-authors unless the exception concerning employment applies. There must be a contribution of “skill, labour and judgment” of the appropriate kind to its evolution. This is a simple than under the 1956 Act which also contained special provisions concerning employed journalists and certain artistic works made under commission. It is not, however, the solution proposed by the Whitford Committee, since it allows the copyright owner to have all the rights even when an unintended exploitation of the work materializes. Now that copyright is accorded (jointly) to the principal director of a film, he or she should fall to be treated like literary and other authors.
(Sections 9, 11, Copyright, Designs and Patents Act 1988)
2-Criteria for commissioned/employee works
For all the types of work under consideration, an employer becomes the initial owner of the copyright if it is made by his employee in the course of the employment and in the absence of contrary agreement. What falls within the scope of employment will depend upon the nature and terms of the job and the relation of the work to it.
Stevenson, Jordan v Macdonald & Evans (1952) 69 RPC 10
A senior executive in a firm of management consultants wrote public lectures about the budgetary control of firms; he was held entitled to the copyright in them. In the Stephenson Jordon case, the employer was allowed copyright in a chapter written as part of an assignment for a particular client of employer.
Byrne v Statist co. 1914
A journalist undertook a piece of translation and editing from the Portoguese as a special task outside his normal hours of employment; it made no difference that the piece was for an advertisement in his employer’s newspapers.
Noah v Shuba [1991] FSR 14
This was a copyright infringement action in relation to a book called “A Guide to Hygienic Skin Piercing” written by claimant Dr. Noah.
Dr. Noah was an employee of the Public Health Laboratory. It was less clear as to whether the book was written in the course of his employment.
In this case, the decisive factor was that the employee had created the work at home in the evenings and at weekends.
*** It should be pointed out that the mere fact that a work is made at home or that the employee makes use of their personal resources does not necessarily mean that it will fall outside the scope of the employee’s duties. Ultimately, the question of whether a work is made within the course of employment depends upon the contract of the employment.
Robin Ray v Classic FM plc (1998) FSR 622
In this case a consultant was commissioned to advise on the composition of music and catalogue the music library for the commissioning radio station. Part of the aim was to assist in assessing the popularity of the music. The consultant created a database based on the information provided and granted licenses of his work elsewhere. Although the documents were provided by the commissioner for the benefit of the consultant to
carry out his task, it was by virtue of the commission that allowed the consultant to hold on trust the copyright in the documents for the purpose of carrying out his role.
It was held a minimalist approach should be adopted where a license can be implied to give efficacy to the contract. Only where the client also needs to exclude the creator and third parties from using the work is an assignment of copyright likely to be implied. ----(Putting the boot in by Charles Swan)---- Overriding the statutory requirement of writing is an instance of the long standing willingness of courts to qualify formalities in the interests of justice, an attitude stretching back at least to the Statute of Frauds 1677. Nevertheless, such an implication is to be made only where it is necessary. Unless the Commissioner can show that he needed to exclude the author from using the work and the ability to enforce the copyright against the third party, he will only have an implied license to use for the purposed of the commission.
The distinction between servants and independent contractors – between those under contracts of service and contracts for services – is a familiar part of the principles governing vicarious liability and it has become increasingly important with the growing variety of labor laws.
It was in the context of copyright that Denning L.J. suggested that the old test of whether the person contracting for the work could exercise control over how it was done was becoming obsolete; the question ought rather to be whether the person performing it was doing so as an integral part of the business.
Under the former law, the employed journalist was permitted to have copyright in exploitation of his work beyond the purpose of which it was created, and there was some case for making this a general rule.
Instead amid loud cries of “anomaly” from the newspaper industry, the 1988 Act cut away the exceptions and all employees were left to bargain for special arrangements or to demonstrate that they arise by implication.
(Important Criticism)
Critics have suggested that by granting first ownership of works made by employees to employers, British law fails to provide creators with sufficient additional incentives to create. It is also said that British law also fails to acknowledge the natural rights which employee-authors have in their creations. In so doing, it is said that British law fails to follow the underlying rationale for copyright.
In response to arguments of this sort, it is suggested that employer may not create work; they provide the facilities and materials that enable the act of creation to take place. In so doing, they make an important contribution to the production of new works. It is argued that granting first ownership to employers encourages employees to invest in the infrastructure that supports creators.
3- Equity and Implied Licenses
To determine whether an implied term can be inferred it will be necessary to establish whether the implied term:- Is reasonable and equitable;- Necessary to give business efficacy to the contract;- It must be obvious; - Capable of clear expression without contradicting express terms of the contract.
Where it is necessary to imply the grant of some right, it must not exceed that which is necessary. Ownership in equity will arise in those circumstances where although copyright belongs to the author at law, the work might in fact be said to be held on trust by the employer.
Attorney General v Guardian Newspapers (1988)
In this “Spy-Catcher case”, the ex M-15 officer, who wrote memoirs in flagrant breach of the confidence owed to the Crown, was said by Members of the House of Lords to be under such an obligation.
Where a work is made by an officer or servant of the Crown in the course of their duties, copyright in that work belongs to the crown and not to the author of the work. (sec. 163,164)
Griggs Group Ltd v Evans [2005]
In the particular circumstances of Griggs where a logo was commissioned, it was held that the minimalist approach should not be adopted since ‘in order to give business efficacy to the contract, it will rarely be enough to imply a term that the client shall enjoy a mere licence to use a logo and nothing more… He will surely need some right to prevent others from reproducing the logo.’ The creator was the legal owner but Griggs was the owner in equity and therefore the legal title should be assigned to Griggs. (Putting the boot in by Charles Swan)
4. Employees and Films
Subsection 9(2)(ab) confers the status of author of a film jointly upon the producer and director.The copyrights in sound recordings, films, broadcasts, cable-casts and typographical formats are conferred upon the “authors” who are responsible for organizing production of the material.
A & M Records v Video Collection 1995
The management company of the skater, Torville and Dean, commissioned the recording of the music for one of the pair’s skating routines. The company was held to be the makers of the resultant sound recording, rather than the person with whom it contracted to organize the writing of the musical arrangement, the hiring of the musicians and technicians and the arrangements for the studio. It was the former who took the essential initiative and investment risk.
5. Employees and Computer program
Work by a computer programmer as a partner has been treated as impliedly assigned in equity to the partnership and a similar conclusion is possible where designs are fully commissioned.
6. Moral Rights
ss. 79, 82, Copyright, Designs and Patents Act 1988
B. UNITED STATES
1. Initial ownership
s. 201, US Copyright Act (17 USC) :
(a) INITIAL OWNERSHIP.—Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are co-owner of copyright in the work.
(b) WORKS MADE FOR HIRE.—In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.
(c) CONTRIBUTIONS TO COLLECTIVE WORKS.—Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the
2 (a),(b)author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.
2. Work made for Hire
s. 101, U.S. Copyright Act: A “work made for hire” is—
a work prepared by an employee within the scope of his or her employment; or
a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwards, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.
Community for Creative Non-Violence v Reid, (1989)
The Court, in an opinion by Justice Thurgood Marshall, noted that there are two distinct categories of persons to whom the work-for-hire doctrine applies: employees, or contractor for nine specific types of work, with written acknowledgment. Congress having left out a definition, "employee" was understood to be common-law master-and-servant definition. The Court then looked to traditional factual determinations about the relationship between the parties (hired party’s control over accomplishment of the task; provision of tools; right of artist to employ his own helpers; whether creation was in hirer’s line of business; hirer’s control over when and how long hired party is to work; method of payment; tax treatment of the hired party, etc.). Based on this examination, the Court found that the defendant fell into neither category, so the work was not work-for-hire.
Carter v. Helmsley-Spear Inc. (1996)
This is an early case of authors attempting to exercisers their moral rights under the Visual Artists Rights Act (VARA). VARA was passed in 1990 and added several new rights for artist in the US including the right of authors to prevent mutilation of works they retain the copyright on.The District Court for the Southern District of New York granted the artists an injunction under VARA prohibiting removal of the work. That decision was appealed to the Second Circuit. The Second Circuit found that the sculpture was a work made for hire and vacated the injunction.
New York Times Co. Inc., et al. V. Tasini, et al, (2001) 533 US 483.
Freelance authors sued The New York Times and others regarding the reproduction of material they had written in electronic databases (such as the archives at nytimes.com or on LEXIS-NEXIS) without compensation. It was held that :-
Section 201(c) does not authorize the copying at issue here. The Publishers are not sheltered by §201(c) because the Databases reproduce and distribute articles standing alone and not in context, not “as part of that particular collective work” to which the author contributed, “as part of … any revision” thereof, or “as part of … any later collective work in the same series.”
C. FRANCE