You will remember the refrain: under English law the concept of 'work for hire' does not exist. 'Work for Hire' is a term commonly found in US law where copyright in a commissioned work will vest in the commissioner (or "Client") and not the person commissioned to create the work (or "Contractor").
The question arises whether there are ever any circumstances when an English court will go as far as imputing an assignment of copyright into a contract for a commissioned work, where none exists in the signed agreement.
UK law indicates that:
- a contractor is entitled to retain copyright in default of some express or implied term to the contrary
- a contract may expressly provide as to who shall be entitled to copyright; and
- the mere fact that a contractor has been commissioned is insufficient to entitle the client to copyright.
Circumstances may arise where the courts might imply an obligation on the Contractor to assign copyright in the work if the Client
needs in addition to the right to
use the copyright works, the right to
exclude the Contractor from using the work and the ability to enforce the copyright against third parties.
Examples of when this situation may arise include:
- where the purpose in commissioning the work is for the Client to multiply and sell copies on the market for which the work was created free from the sale of copies in competition with the Client by the Contractor or third parties
- where the Contractor creates a work which is derived from a pre-existing work of the Client, eg when a draughtsman is engaged to turn designs of an article in sketch form by the Client into formal manufacturing drawings, and the draughtsman could not use the drawings himself without infringing the underlying rights of the Client
- where the Contractor is engaged as part of a team with employees of the Client to produce a composite or joint work and he is unable, or cannot have been intended to be able, to exploit for his own benefit the joint work or indeed any distinct contribution of his own created in the course of his engagement.
It is under the principle outlined in paragraph (2) above that the courts imputed into a contract between a designer and his client (manufacturers of Dr Martens boots) an implied obligation on the Contractor to assign copyright in a design which combined two separate trade marks, one of which (AirWay) was owned and one (Dr Martens) was licensed by the Client.
Perhaps it is fair to say that the exception proves the rule. It is however always better to agree ownership and use of copyright in a contract!
For more information contact robert.bond@speechlys.com