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Copyright ownership in employment contract

 
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laser3322
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PostPosted: Mon Sep 12, 2011 4:24 pm    Post subject: Copyright ownership in employment contract Reply with quote

Hi,

My employer is trying to get me to sign a amendment to my employment contract. One of the points is:

"I assign to XXXXX all rights to any inventions and copyrights that I may produce while employed by XXXXX"

I fully accept that all works created as part of my employment are owned by my employer, but the way I read this everything I create will be owned by my employer including the photos I take while on holiday that have nothing to do with my employment. I raised this point with my employer but the comment I got back was that UK law states that I will be the owner of everything I produce that is not part of my employment, so I should just sign it. I asked why they can't just state that in contract, but I was ignored.

While I am sure my employer has no intention of owning the copyright to my holiday photos I don't want to sign something that would give them that right.

Would I be assigning away my rights as owner of everything I create if I signed this or would this be ignored due to UK law and I would own the rights to everything that I created that was not part of my employment?

Thanks
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AndyJ
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PostPosted: Mon Sep 12, 2011 5:35 pm    Post subject: Reply with quote

Hi Laser,
I agree that this clause has been sloppily drafted and certainly does sound ambiguous. What it should say is "in the course of my employment" which is close to the wording used in the Copyright Designs and Patents Act. By using that wording, should there ever be a dispute, it would be clear to a court or tribunal that the contract could be interpreted within the existing caselaw.
Your employer's comment is slightly unhelpful, because the existing law on copyright, database right, registered and unregistered design right already gives the employer ownership of anything created 'in the course of employment'.
But of more concern is the bit about inventions (ie patents). The Patents Act 1977 section 39 says that an employee owns an invention unless it was made during the course of normal duties or duties specifically designated to the employee, and the circumstances were such that an invention might reasonably be expected to result from the work, or the employee had a duty to advance the interests of the company in this way. In other words, if you worked in, say the sales department but in your lunch break you invented a method for making your employer's product more economically, you would own the right to patent it, not the employer. The new clause in your contract aims to close that loophole. But section 42 says that any contractual term which tries to alter (as your employer's clause appears to do) your rights under section 39, is unenforceable:
Quote:
42 Enforceability of contracts relating to employees’ inventions.

(1) This section applies to any contract (whenever made) relating to inventions made by an employee, being a contract entered into by him—

(a) with the employer (alone or with another); or

(b) with some other person at the request of the employer or in pursuance of the employee’s contract of employment.

(2) Any term in a contract to which this section applies which diminishes the employee’s rights in inventions of any description made by him after the appointed day and the date of the contract, or in or under patents for those inventions or applications for such patents, shall be unenforceable against him to the extent that it diminishes his rights in an invention of that description so made, or in or under a patent for such an invention or an application for any such patent.

...


So I suggest that someone in HR has dreamt up this wording, as any lawyer would know this was a meaningless clause as far as patents are concerned, and ambiguous as regards other forms of intellectual property.

incidently, if you are employed to dream up inventions, you should be aware that even when the section 39 conditions apply (ie your employer owns the rights to anything you are employed to invent or develop) section 40 provides that a form of statutory compensation may be payable for any thing you invent which is of outstanding benefit to the employer. An independent arbitrator will decide the level of compensation.
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laser3322
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PostPosted: Mon Sep 12, 2011 8:51 pm    Post subject: Reply with quote

Hi Andy,

Thanks for the quick reply. I will suggest the alternative wording to them and see what they say. Interesting what you say about patents. As it happens I do work in sales, so I will have to make sure that I put my lunch breaks to better use Very Happy
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AndyJ
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PostPosted: Mon Sep 19, 2011 9:43 am    Post subject: Reply with quote

By way of reinforcing the point about how important it is to correctly draft the IP clause of an employment contract, here's what the World Intellectual Property Organization (WIPO) said in the conclusion to an article about a multi-million dollar dispute between two American toy manufacturers:
Quote:
The dispute holds an important lesson about the significance of well-drafted employment agreements. If Mr. Bryant’s employment contract had been more precise, the case might not have ballooned to such proportions or included claims for trade secret misappropriation. The two obvious problems with the agreement were failures to include 1) an express assignment of ideas; and 2) clear language defining the scope of “at any time during my employment.” Practically speaking, Mattel could have ensured all the employee agreements assigning rights were identical and created and communicated clear guidelines for employees, to reduce confusion as to where Mattel's ownership rights stopped and where the employees' began. As illustrated by this case, for businesses that thrive on their IP assets, carefully drafted employment agreements can make the difference between millions gained or lost.

For anyone who wishes to read the whole article, it can be found here.
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