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Copyright transfer from employer to employee?

 
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playboy-bunnie
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PostPosted: Sun Nov 13, 2011 6:18 pm    Post subject: Copyright transfer from employer to employee? Reply with quote

Hello!

I've tried searching the forum, but my question goes a little beyond some of the previous threads.

I was 'employed' by a local University as part of their "Graduate Internship scheme" on a fixed-term post, at a local web company.
My contract was with the University; not the web company.

Now, I do understand that any works designed or built by me as an 'employee' would mean copyright would no doubt stay with my 'employer' - the web company.

The 'employer' at the web company went into Liquidation before my fixed-contract ended and I was made redundant and have since moved on.

He has since refused me the opportunity to use any of the works I created from scratch, in my portfolio.

I was wondering, looking at the IPO website, it states that sometimes copyright is a bit like actual property, where it can be transferred (via will or whatever).

Is it possible that as I was technically the one who created these designs / built some websites, that since the company no longer exists as an entity, that copyright of those works can transfer to me?

This has come to my attention since one of the ex-employees (actual employee) has used my work and some of the companies works, in his portfolio for his own company - doing web design and development. And found it odd that in his contract he is breaking a few 'regulations' - but I am not?

Confused
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playboy-bunnie
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PostPosted: Sun Nov 13, 2011 6:41 pm    Post subject: Reply with quote

If it helps, this is what it states in my contract with the University:

Quote:
STATEMENT PARTICULARS OF INTERNS

lssued in accordance with provisions of the Employment Rights Act 1996, the Employment Relations Act 1999 and the Employment Act 2002.


Quote:
COPYRIGHT

Subject to the following provisions, the University and you acknowledge section 1 and 215 of the Copyright, Designs and Patents Act 1988.

All records, documents and other papers (including copies and summaries thereof) which pertain to the finance and administration the University and which are made or acquired by you in the course of your employment shall be the property of the University. The copyright all such original records, in documents and papers shall at all times belong the University.

i) The copyright in any work or design compiled, edited or otherwise brought into existence by you as a scholarly work produced in furtherance of your professional career shall belong to you; 'scholarly' work; includes items such as books, contributions to books, articles and conference papers, and shall be construed in the light of the common understanding of the phrase in higher education.

ii) The copyrigh tin any material produced by you for your personal use and reference, including as an aid to teaching, shall belong to you.

iii) However, the copyright in course materials produced by you in the course of your employment for the purposes of the curriculum of a course run by the University and produced, used or disseminated by the University shall belong to the University, as well as the outcomes from research specifically funded and supported the University.

The above sub-clauses (i) - (iii) shall apply except where agreement the contrary is reached by you and the University. Where a case arises, or it is thought that a case may arise, where such agreement to the contrary may be necessary, or where it may be expedient to reach a specific agreement to the particular facts of the case, the matter should be taken up between you and your Dean of Faculty. By way of example, this sub-clause would apply where any question of assignment of copyright or of joint copyright may arise; other examples and guidance may be contained from time to time in the Academic Staff Handbook.


Bearing in mind that, yes I had studied at the University previously, but had worked since within the industry. I never had any 'scholarly' needs or produced any writings for a course; I wasn't on a course. The web company was just getting me in on the cheap lol.
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AndyJ
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PostPosted: Sun Nov 13, 2011 8:44 pm    Post subject: Reply with quote

Hi playboy-bunnie,
I'm not surprised you didn't find an answer to your problem elsewhere on the forums because it is quite a tricky one. Just to make it clear to others, here's what the Copyright Designs and Patents Act (CDPA) 1988 section 11 says: (I've highlighted the relevant bit)
Quote:
Section 11: First ownership of copyright.

11.-(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.

(3) This section does not apply to Crown copyright or Parliamentary copyright (see sections 163 and 165) or to copyright which subsists by virtue of section 168 (copyright of certain international organisations).


I would like to tackle the easy bit first. When a company (whether it is incorporated or not) ceases trading its assets, which can be both physical (desks, chairs, company cars etc) and intangible (goodwill, intellectual property etc) still belong to someone. Often these things will be sold off to pay any creditors. So, if copyright in the work you did during your internship belonged to the web design company, you would need a document signed by the owner which assigned the copyright to you, before you could claim ownership. Section 90 of the CDPA lays out how copyright may be permanently transferred:
Quote:
90. Assignment
(1) Copyright is transmissible by assignment, by testamentary disposition or by operation of law, as personal or moveable property.

(2) An assignment or other transmission of copyright may be partial, that is, limited so as to apply-

(a) to one or more, but not all, of the things the copyright owner has the exclusive right to do;

(b) to part, but not the whole, of the period for which the copyright is to subsist.

(3) An assignment of copyright is not effective unless it is in writing signed by or on behalf of the assignor.

So copyright assignment must be in writing unless it is transferred by the law (as in the case of section 11 quoted above), or by the normal laws of inheritance. From what you have said, none of these three things have been used to transfer copyright to you. Obviously I cannot comment on the situation concerning the other ex-worker who is now using some of the company's designs. He may have a licence to use this material, or it may be as you suggest that he has just appropriated it without regard to the legalities.

The key question - who was your employer or indeed were you self-employed? - is probably more to do with employment law than copyright law. All the CDPA says on the subject can be found in Section 178 Minor Definitions which says:
Quote:
"employed", "employee", "employer" and "employment" refer to employment under a contract of service or of apprenticeship;


Thanks for including the relevant part of your contract* with the University. Whilst that is pretty clear where you stand with the University over copyright, it is less helpful in the situation you describe. As you were an intern I assume that there were no wages or salary involved. Was anyone paying your NI contributions? You mention that there was a fixed-term contract. Is this the same document that you quoted from over copyright? If there was a separate written contract detailing your working relationship with the web company, this is likely to hold the key to this problem. Alternatively if there was some sort of agency agreement between the university and the company, that would also help to clarify things. If you were to all intents and purposes an agency worker and there was no specific agreement between you and the web company over intellectual property ownership, I think it would be fair to assume that Section 11(2) would not apply in your case. As employment law is not my speciality I would be loath to go into specifics on this aspect. I would suggest talking to the University staff to see how they understand your employment situation.

If it appears that the University was your employer, and the internship was arranged to further your professional development as seems likely, then I think the statement "The copyright in any work or design compiled, edited or otherwise brought into existence by you as a scholarly work produced in furtherance of your professional career shall belong to you" would apply to the work you undertook whilst at the web design company.
If you were not employed by either the web company or the university (for instance if you were being treated as if you were self-employed, or in full time education) then you would undoubtedly be the first owner of the copyright in your work.


* Incidently I suspect there is a typo in the first line under the heading Copyright, which should read "Subject to the following provisions, the University and you acknowledge section 11 and 215 ... ". (Section 215 deals with the owneship of design right in a similar way to section 11.)
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playboy-bunnie
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PostPosted: Mon Nov 14, 2011 1:43 pm    Post subject: Reply with quote

Wow thanks for such a detailed response Andy.

Just to quickly some of your questions raised....

AndyJ wrote:
The key question - who was your employer or indeed were you self-employed?


Good question, the *only* contract I had, and signed, was with the University, *not* the web company.

If I use HMRC's calculator to determine if I would be employed / self-employed with this web company, it reckons self-employed!

AndyJ wrote:
As you were an intern I assume that there were no wages or salary involved.


I was paid a salary, from the University payroll, but it was less than a *normal* job in this position would pay (i.e. an interns wage), this included the usual NI / tax deduction.

AndyJ wrote:
You mention that there was a fixed-term contract. Is this the same document that you quoted from over copyright?


Yes, all from the one contract I had.

AndyJ wrote:
...If there was a separate written contract detailing your working relationship with the web company, this is likely to hold the key to this problem...


Nope, nothing, zip.

I appreciate your knowledge more lies in copyright / IP, so I guess I'll contact the University to clarify my position and that may clear up a few of the above questions.

Thanks again Andy!
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AndyJ
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PostPosted: Mon Nov 14, 2011 5:02 pm    Post subject: Reply with quote

Hi p-b
Based on that additional information I would say there is little doubt that you were employed by the university and not the web company. Assuming that the university take the same view as me on what their contract says over copyright ownership (why would they want to own copyright in the design of a website?) then you should be free to use your designs for your portfolio and as the basis for future work.
Bear in mind that the clients of the web design company will have a licence to use 'your' designs by virtue of whatever deal thay had with the now defunct design company. However I think it would be perfectly acceptable and ethical for you to offer to provide ongoing maintenance on the site(s) which you designed, if that's what you would like to do.
Good luck for the future
Andy
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