Contractor and Client Copyrights
The plaintiff had contributed a design for a system of classifying and selecting tracks to be played on a radio station. He did so under a consultancy contract.
Held: A Joint authorship claim required that the contributor had made some direct contribution to the words appearing in the eventual published item. A contribution of ideas was insufficient. What is essential is a direct responsibility for what actually appears on the paper. The defendant was to be licensed to use the copyright database, but only as was foreseen within the original arrangement. The court set out a classic statement of the law on the position of an original author of copyright works.
Lightman J set out the general principles governing the respective rights of the Contractor and Client in the copyright in a work commissioned by the Client: ‘(1) the Contractor is entitled to retain the copyright in default of some express or implied term to the contrary effect;
(2) the contract itself may expressly provide as to who shall be entitled to the copyright in work produced pursuant to the contract.
(3) the mere fact that the Contractor has been commissioned is insufficient to entitle the Client to the copyright. Where Parliament intended the act of commissioning alone to vest copyright in the Client e.g. in case of unregistered design rights and registered designs, the legislation expressly so provides (see Section 215 of the 1988 Act and Section 1(a) of the Registered Designs Act 1949 as amended by the 1988 Act). In all other cases the Client has to establish the entitlement under some express or implied term of the contract;
(4) the law governing the implication of terms in a contract has been firmly established (if not earlier) by the decision of the House of Lords in Liverpool City Council v. Irwin [1977] AC 239 . .
(5) where . . it is necessary to imply the grant of some right to fill a lacuna in the contract and the question arises how this lacuna is to be filled, guidance is again to be found in Liverpool. The principle is clearly stated that in deciding which of various alternatives should constitute the contents of the term to be implied, the choice must be that which does not exceed what is necessary in the circumstances . . In short a minimalist approach is called for. An implication may only be made if this is necessary, and then only of what is necessary and no more;
(6) accordingly if it is necessary to imply some grant of rights in respect of a copyright work, and the need could be satisfied by the grant of a licence or an assignment of the copyright, the implication will be of the grant of a licence only;
(7) circumstances may exist when the necessity for an assignment of copyright may be established. . . these circumstances are, however, only likely to arise 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. . .
(8) if necessity requires only the grant of a licence, the ambit of the licence must be the minimum which is required to secure to the Client the entitlement which the parties to contract must have intended to confer upon him. The amount of the purchase price which the Client under the contract has obliged himself to pay may be relevant to the ambit of the licence. . .
(9) the licence accordingly is to be limited to what is in the joint contemplation of the parties at the date of the contract, and does not extend to enable the Client to take advantage of a new unexpected profitable opportunity (consider Meikle v. Maufe [1941] 3 All ER 144).
Lightman J
Times 08-Apr-1998, Gazette 29-Apr-1998, [1998] FSR 622, [1998] EWHC Patents 333, [1999] ITCLR 256, [1998] ECC 488, (1998) 21(5) IPD 21047
Bailii
Copyright Designs and Patents Act 1988 10
England and Wales
Citing:
Cited – Tate v Thomas ChD 1921
Mr Peterman commissioned the plaintiff to write the music of a play and it was agreed that two others should write the libretto. This was done. Peterman devised the name of the play and the leading characters; he arranged the scenic effects and . .
Cited – Evans v E Hulton and Co Ltd ChD 1924
Passing on memories for use in a ghosted autobiography is not sufficient for a claim of joint authorship. Tomlin J considered whether a publication had been authorised by the copyright owner and said: ‘where a man sold the rights in relation to a . .
Cited – Cala Homes (South) Ltd and Others v Alfred Mcalpine Homes East Ltd (No 2) ChD 30-Oct-1995
A plaintiff may claim damages under section 97(2) in addition to claiming an account of profits, as his primary remedy. A person claiming joint rights in the copyright as author must contribute to the ‘production’ of the work and create something . .
Cited – Fylde Microsystems Limited v Key Radio Systems Limited PatC 11-Feb-1998
The plaintiff’s employee wrote computer software for use with telecommunications equipment. The defendant’s employee had set the specification of the software, reported errors and bugs, made suggestions as to the cause of some faults and had . .
Cited – Cescinsky v George Routledge 1916
In the case of a jointly authored copyright work, any consent or license to any act must be given by all the copyright owners. A non-consenting co-owner is entitled to an injunction against the infringing co-owner or putative licensee. Ordinarily . .
Cited – Cooper v Stephens 1895
. .
Cited – Massine v de Basil CA 1936
At issue was the copyright in the plaintiff’s choreography for a ballet to be part of the repertoire of the defendant’s ballet company.
Held: The contract was that of employer and employee, and accordingly the copyright vested in the defendant . .
Cited – Meikle v Maufe 1941
An implied licence is limited to what is in the joint contemplation of the parties at the date of the contract, and does not extend to enable the Client to take advantage of a new unexpected profitable opportunity.
Uthwatt J said: ‘It was . .
Cited – Blair v Osborne and Tomkins and Another CA 12-Nov-1970
Two neighbours engaged an architect to draw up plans for a building at the rear of their houses. He charged them the full RIBA rate for the plans. They did not ask the architect to build the house or supervise the project but handed the plans to a . .
Cited – Stovin-Bradford v Volpoint Properties Ltd 1971
The Client agreed to pay only a nominal fee to his architect for the preparation of plans.
Held: There could be implied a licence to use the plans for no purpose beyond the anticipated application for planning permission. . .
Cited – Liverpool City Council v Irwin HL 31-Mar-1976
The House found it to be an implied term of a tenancy agreement that the lessor was to be responsible for repairing and lighting the common parts of the building of which the premises formed part. In analysing the different types of contract case in . .
Cited – BP Refinery (Westernport) Pty Ltd v The Shire of Hastings PC 1977
(Victoria) The Board set out the necessary conditions for a clause to be implied into a contract.
Held: Lord Simon of Glaisdale said: ‘Their Lordships do not think it necessary to review exhaustively the authorities on the implication of a . .
Cited – Philips Electronique v British Sky Broadcasting Ltd CA 1995
There is a presumption against adding terms to a contract. The presumption is stronger where the contract is in writing and represents an apparently complete bargain between the parties. Sir Thomas Bingham MR set out Lord Simon’s formulation, and . .
Cited – Barnett v Brabyn (Inspector of Taxes) ChD 5-Jul-1996
Re-statement of character of contracts of employment and services and difference. The form of contract is important but not conclusive. It is necessary to look at the terms of the contract as a whole concentrating on the substantive rights and . .
Cited – Harold Drabble v Hycolite Mfg Co 1923
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Cited – Merchant Adventurers Ltd v Grew 1973
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Cited by:
Cited – Sean Sweeney, Graham Edward Camps v Macmillan Publishers Limited, Danis Rose ChD 22-Nov-2001
The claimants were trustees of the estate of James Joyce, and complained at the publication of unpublished parts of the work Ulysses in a readers edition by the defendants. Published works are protected for fifty years after the author’s death, but . .
Cited – R Griggs Group Ltd and others v Evans and others ChD 2-Dec-2003
An advertising agency was requested to provide a logo. It employed an independent designer. Who owned the copyright, in this case of the AirWair logo? The defendants had taken an assignment of the copyright from the first author. The claimants . .
Cited – Meridian International Services Ltd v Richardson and others ChD 18-Oct-2007
The claimant had contracted to finalise and update software written by the defendants. They claimed that the contract included an implied clause that the defendant’s copyright was assigned to them by the agreement.
Held: The claimant had not . .
Cited – Grisbrook v MGN Ltd and Others ChD 16-Oct-2009
The claimant sought an order committing officers of the defendant company for having failed to obey a court order requiring the defendant to cease infrigement of his copyright in photographs. He operated as a photographer of celebrities selling . .
Cited – R Griggs Group Ltd, R Griggs and Co Ltd, Airwair Ltd v Evans, Raben Footwear Pty Ltd, Lewy, Lewy CA 25-Jan-2005
The claimants distributed Doc Marten footwear. They asked an agency to prepare a logo. The agency paid an independent contractor to prepare it, but did not take an assignment of copyright to it. The contractor sold the rights in the logo to the . .
Cited – Bio Pure Technology Ltd v Jarzon Plastics Ltd And, Anthony Elliott (Patent) IPO 31-Mar-2005
IPO Bio Pure had approached Jarzon about a new plastics clamp they wished to produce. Following discussions between the two sides, Jarzon produced drawings which incorporated the main invention of the patents and . .
Cited – Paymaster (Jamaica) Ltd and Another v Grace Kennedy Remittance Services Ltd PC 11-Dec-2017
(Court of Appeal of Jamaica) The parties disputed the ownership of copyight in certain computer software, and also an allegation of the misuse of confidential information. . .
Cited – Clearsprings Management Ltd v Businesslinx Ltd and Another ChD 14-Jul-2005
The parties disputed the ownership of copyrights in a computer software program. . .
Cited – Easy Live Auction Ltd v Lottbridge Systems UK Ltd Nom 12-Apr-2012
Full Decision – No Action . .
Cited – Celebrity Pictures Ltd and Another v B Hannah Ltd PCC 19-Jul-2012
The parties disputed ownership of the copyright in certain photographs. . .
Cited – Atelier Eighty Two Ltd v Kilnworx Climbing Centre Cic and Others IPEC 30-Jul-2015
Dispute as to copyright in logos . .
Cited – Martin and Another v Kogan and Others IPEC 22-Nov-2017
The parties disputed whether joint authorship of the screenplay for a film, ‘Florence Foster Jenkins’. The claimant now sought a declaration of sole authorship of film screenplay, and the defendant cross-claimed for a declaration of joint . .
Cited – Kogan v Martin and Others CA 9-Oct-2019
Dispute over the authorship of the screenplay of a film.
Held: ‘the judgment cannot stand. The judge has adopted an erroneous approach to the evidence, failed to make important findings of primary fact, failed to take account of material . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Leading Case
Updated: 01 November 2021; Ref: scu.135900