Ownership of intellectual property in commissioned works
This post will address ownership of intellectual property (specifically copyright) in commissioned works and cover the following four areas:
- What work can be commissioned?
- Who owns the copyright in commissioned works?
- What rights does the party commissioning the work have?
- What if the original author is still exercising rights in the work?
What works can be commissioned?
Any work can be commissioned – from software to music, films to photography (as long as the work can be produced in a tangible form and recorded).
Who owns the copyright in commissioned works?
Under the Copyright Designs and Patents Act 1988 (so for works produced after 1 October 1989) the author (or creator) of the work owns the first copyright in the work. This means that the author has the right to prevent others from copying his or her work and to seek redress should his or rights be infringed upon.
If a work has been commissioned there are different ways of approaching ownership of copyright in a work depending upon the type of work that has been produced:
- Literary, Musical, Dramatic and Artistic works
- Sound recordings, films, broadcasts and typographical arrangements
- Joint authorship
Literary, Musical, Dramatic and Artistic works
Unless there is an express or implied contractual agreement otherwise the ownership of the copyright in a literary, musical, dramatic or artistic work will remain with the original author. This means that if, for example, Mr Smith was commissioned to write a book by Penguin that he would retain ownership of the copyright in the book. This would probably be unsatisfactory to Penguin and they would therefore probably require an express contractual term indicating that they were either licenced or assigned ownership of copyright in the book.
Sound recordings, films, broadcasts and typographical arrangements
There are specific rules relating to the ownership of copyright in sound recordings, films, broadcasts and typographical arrangements. These are too complex to cover in detail in this post but will be covered in later posts.
As covered in a previous post, it is possible for ownership of copyright to be shared jointly by multiple authors should it not be possible to distinguish the work of each author from the other and should all parties have made a “significant and original” contribution to the work. There are specific rules relating to joint authorship in film, broadcasts, and computer software (relating to computer gaming).
What rights does the party commissioning the work have?
As stated above, for the commissioning party to own the intellectual property in the work (the copyright) there must be an express contractual agreement as to this. If the ownership of the copyright has been assigned or licenced to the commissioning party then the commissioning party assumes the rights that the original author of the work would have had – for example the ability to prevent others from copying their work and to further licence and assign rights in the work.
What if the original author is still exercising rights in the work?
If the ownership of the copyrighted work has been licenced or assigned to the commissioning party and the original author of the work is still exercising rights relating to intellectual property ownership in the work then the commissioning party can either:
- Seek an injunction against the original author; and/or
- Pursue the original author for damages as a result of their infringement of the commissioning party’s intellectual property rights
There are also other remedies that the commissioning party can exercise (depending on the nature of the infringement) which will not be covered in this post.