Authorship and ownership of
copyright
Turin, October 2011
Dr E Derclaye
Sections of the act and case law
• S. 9, 104-105 - Kenrick v Lawrence,Walter
v Lane, Cala Homes v McAlpine,Cummins
v Bond, Ray v Classic FM
• S. 10 - Donoghue v Allied Newspapers,
Heptulla v Orient Longman, Bamgboye v
Reed, Brighton v Jones
• S. 11 - Byrne v Statist, Stevenson Jordan
& Harrison v McDonnell & Evans, Noah v
Shuba
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Joint works
• 3 conditions:
• Common design (plan, collaboration) but
no need to intend to create a joint work
only need to collaborate in
creation/execution of the work
• Contributions must not be distinct
• Significant contributions but don’t need to
be equal
(c) E. Derclaye 2000-2011
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Employee works
• Employee
• Course of employment
• Agreement to the contrary
– Contract: of service>< for services
– Control and power
– Integral part of the business
– Who pays for NI, pension, taxes, provides
equipment, wages>< fees, takes financial risk
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Byrne v Statist [1914] 1 KB 622
• “He did not make the translation in
pursuance of any duty owed by him to the
Financial Times as one of their staff, or in
the course of his employment by them, but
his employment to translate was an
independent engagement quite outside his
ordinary duties, and was done entirely in
his own time.” (Per Bailhache J. at 623).
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Stevenson Jordan & Harrison v
McDonnell & Evans [1952] 69 RPC 10
• “(…)[U]nder a contract of service, a man is
employed as part of the business, and his
work is done as an integral part of the
business; whereas, under a contract for
services, his work, although done for the
business, is not integrated into it but is
only accessory to it.” (per Denning, L.J.)
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Commissioned works
• BP Refinery (1978)):
• “for a term to be implied, the following conditions
(which may overlap) must be satisfied:
– (1) it must be reasonable and equitable;
– (2) it must be necessary to give business efficacy to
the contract, so that no term will be implied if the
contract is effective without it;
– (3) it must be so obvious that "it goes without saying";
– (4) it must be capable of clear expression;
– (5) it must not contradict any express term of the
contract.”
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Ray v Classic Fm
• “It seems quite clear to me upon the true construction
of the consultancy agreement in its matrix of facts that
the limits of what was contemplated at the date of the
consultancy agreement were that the plaintiff's work
would be used for the purpose of enabling the
defendant to carry on its business as set out in recital
A. namely to broadcast in the United Kingdom. The
only necessary implication to give purpose and effect
to the consultancy agreement is accordingly the grant
of a license to the defendant to use the copyright
material for the indefinite future for this purpose and
for this purpose only.”
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Fisher v Brooker
• Judge declared MF was co-author of the musical work
for 40% + revoked his licence to exploit the work in 2005
• CA reversed: it was unconscionable to revoke his licence
– acquiescence and laches meant that MF had no
copyright
• HL reinstated the judge’s ruling:
• There must be some detrimental reliance for laches to
apply (length of delay and nature of acts done in interval)
• MF’s very long delay in asserting his claim in fact
considerably benefited defendant => it outweighs any
disadvantage to him resulting from the delay
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Fisher v Brooker
• There is no equivalent in English intellectual
property law to the doctrine of adverse
possession in relation to real property and there
is no statutory limitation in English law to claims
to copyright => mere passage of time without
asserting one’s copyright does not
extinguish the copyright
• In addition, laches can only bar equitable relief
and thus not a declaration of a property right
recognised by statute, such as copyright
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Assignment and licensing
Dr Estelle Derclaye
Turin, October 2011
Assignments
• The main provision as regards assignments
is s. 90
• Concept: Assignment means transfer: this
means the copyright goes, leaves from A to
B. A (the author if he is the first owner for
example) is not the copyright owner anymore.
• Possible to assign copyright in future works
• Form: royalty or a lump sum, can be for some
rights only
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Assignments
• Conditions: in writing and signed by or on behalf of the
assignor, clearly identify work(s), consideration
• What if orally? The equitable rule applies i.e. so long
as there is consideration, an oral contract purporting to
assign will be enforceable
• Exception to these rules: for film production: when
there is a contract between an author and a film
producer, the author is presumed to have transferred
his/her rental right to the film producer (s. 93A);
springs from Rental right Directive art. 2(6)
• Moral rights are non assignable between living people,
s. 94, but are on death (s. 95).
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Licenses
• Permission to do an act that would otherwise be
prohibited without the consent of the copyright
owner
• Exclusive and non exclusive: difference
• Exclusive licensee can sue infringers even without
the copyright owner; action can be brought by both
the excl. licensee and the copyright owner
• But formality to accomplish: licence must be in
writing and signed by or on behalf of the licensor
• Implied licences: see Ray v Classic FM
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