(Joint) ownership of intellectual property in film productions
In this post we’re going to take a look at the legal situation relating to ownership of film productions. This can be a potentially tricky area, as the recent case of Slater v Wimmer, which was covered in this post, demonstrated.
Determining ownership under intellectual property law
When two (or more) persons come together to work on a film production, the issue of the ownership of intellectual property rights should be one of the first things that is talked about. Early agreement on the ownership of copyright can avoid much heartache at a later date. However, this often isn’t the case – the parties involved are often friends, or they don’t want to deal with potentially acrimonious issues, or they just don’t get round to it (or just don’t think of it).
If there is a dispute over who owns the intellectual property in a film production the first thing that should be considered is: “Is there a contract between us and, if so, what are the terms of this contract?”. In this spirit, we’re going to take a look at the following issues:
- Is there a contract?
- What are the express terms of the contract?
- What are the implied terms of the contract?
Is there a contract that deals with the intellectual property law issues?
A contract can be oral or written, express or implied. It’s always safer to get a written contract drawn up but the parties involved often don’t want to involve themselves in the expense of getting a lawyer to draw up such an agreement. That’s fine – and understandable. However, it’s recommended that what the parties agree on (including payments, intellectual property ownership, the scope of the film production, the duties of the parties etc.) is written down in some format so that it can be used if a dispute arises at a later date.
If it is clear from the conduct of the parties that they agreed to embark on a film production together then a contract between them will normally be implied. However, the interesting issue then falls to what the terms of the contract actually are. There can be two “types” of terms in a contract – express and implied.
What are the express terms of the contract?
Express terms can be oral or written. If the terms regarding the ownership of the copyright are written down it obviously makes it easier to determine what they are and act on them at a later date. If the express terms are oral then this makes the situation a little more difficult. If there is a dispute as to oral express terms of the contract then the Court will have to determine what the situation is based upon the particular facts, the evidence of the parties involved, and the conduct of the parties involved.
What are the implied terms of the contract?
Terms regarding the ownership of copyright in a film production can be implied into a contract by both common law and statute.
Terms can be implied under common law by:
- Usage or custom
- Previous course of dealings
- The intention of the parties (with reference to the “business efficacy” or “officious bystander” test”)
Terms relating to the ownership of intellectual property rights can also be implied into the contract through statute – in the case of copyright under s.10 of the Copyright Designs and Patents Act 1988 (“CPDA 1998”). Under s.10 CPDA 1988 the owner of the copyright is the author or creator of the work. Under s.10(1) it is possible for more than one person to be the owner of intellectual property rights in a film production – if the film was made after 1 July 1994 then the owner of the copyright is the producer and the director (unless there is an express agreement otherwise).
Problems with the ownership of film productions
There’s simple ways of avoiding problems relating to the ownership of copyright in a film production: get legal advice and/or make sure that the terms of the agreement are written down, including those relating to the ownership of the intellectual property.