The doctrine “Work made for hire” deals with the ownership
of Intellectual Property(IP) Right between the Employer or Hirer (contextually
each of them hereinafter referred to as “Owner”) and author or inventor or
creator, or patentee or grantee (contextually each of them hereinafter referred
to as “Creator”) wherein the Creator relinquishes or transfers his/her ownership rights in the IP through the employment
contract or work contract between the Owner and Creator.
This doctrine, generally,
emphasis on written contract by way of implied or explicit terms of transfer of
IP rights and consideration paid by the Owner to the Creator for such work which
are qualified as IP under relevant IP laws. To have absolute ownership rights or
to ensure vesting of all the economical or exploitable rights in the Owner from
the Creator, the generally adopted means are ownership, usage and assignment
clause in the service contract or contract for work by having the exclusive
license, assignment of IP rights (with waiver of the moral or personal rights),
etc. The law protects the absolute rights of Creator by having this doctrine as
one of the exception to the protection of rights of Creator which is generally
accepted and recognized in its limited sense among the common and civil law
nations. This doctrine is been extensively applied to resolve conflict of
ownership rights so that intellectual efforts can be commercially exploited and
utilized for the betterment of the society with some nation wise conflicts or established
exceptions. There is presumption that all the work done pursuant to employment
contract shall qualify under this doctrine and shall be considered as general
rule or principle (refer the paragraph hereafter articulating the thought “dock
this doctrine across various legislations”).
While the above simplifies
the application of this doctrine but still the world is full of various
interpretation due to the variances of facts and circumstances. Appropriate
forums and courts have come out with ratio
decidendi to justify their judgment or differ from the precedents. In other
words, the decisions are unique and intellectual piece of jurisprudence, and as
a writer of this paper, I would like to have the honour of adding a new category
of IP to qualify each such judgment or speaking order as a “Judicial IP”.
Let me read
aloud some questions that blogs my mind;
If the IP is owned by the
Owner as per this doctrine, then who is liable for claim due to infringement of
IP laws by the Creator at the time when work was performed, may be under
influence of Owner or otherwise? Is the Owner or Creator liable to
pay? In my view, Owner is the first party to face and pay the claim, as
he owns the IP to commercially exploit pursuant to application of this doctrine
but if any such infringement amounts to conviction of common law and statutory
offences including criminal liability requiring malafide intention (mens rea)
for such offences and / or abatement of offence or involvement in the offence
would determine the offenders guilty of such offence and punishment thereof. Hence,
this doctrine does not bypass the statutory and legal duty of the Creator or
Owner under any prevailing law but keeps intact the moral and legal rights by limiting
the waiver or transfer to ownership rights in IP. (Refer the following paragraphs for details)
While lawsuits are filed
to stop the continuation of infringement of IP rights and damages are claimed as
compensation to the loss due such infringement, for e.g. recently Oracle has
filed a lawsuit stating Google’s Android infringes the Oracle’s copyrights and
patents related to Java. The facts brims around that Google has partially admitted
the copying of small number of lines of Java code in Android by employee and states
that the same have been removed. Further, use of substitute open-source set of
independently developed class libraries (Apache Harmony) application
programming interfaces (API) that mimic Java’s API was been utilized and the same is not
subject to copyright protection but the claim of $1 billion as damages
for prior uses of Android could fundamentally change the legal standing of
programming languages from their current status as generally free instruments
to create software applications, to an altered status as products themselves
that must be licensed by platform developers, hardware manufacturers, app
programmers, and all the other participants in the food chain. Similarly, lawsuit filed
by Nokia against Apple for infringement of patent also ended with an out of
court settlement between the two. It is interesting to note that infringements
of IP Laws are result of claim over the IP created under the work made for hire.
Does this doctrine apply
to work (IP) created within the term of contract of service but not within the
scope of employment? In my view, the IP
created within the scope of contract shall at all times be IP of Owner but the
work which is not pursuance to the performance of Creator’s work or not within
the scope of the assignment agreed under the contract for work between Creator
and Owner shall at all times be free and outside the scope of this doctrine,
like an Inhouse Legal Counsel writing a book out of his independent research or
from his residual memory or doctor making an invention out of his own independent
research. The working hours, employment or contract term, employer infrastructure,
etc cannot be considered under work made for hire and hence no waiver or transfer
of the ownership rights can presumed towards such work.
Under IP Laws, copyright
law is the only legislation which does not compel registration to protect the
work enumerated for protection under copyright law. It is the only law which can
protect the work from day of its conception with a reasonable existence as sufficient
evidence to protect the work created.
The readers are advised
to refer various IP right laws, to understand relevant provisions under various
legislations across the globe. I have tried to dock this doctrine across various
legislations as hereunder:-
1. S/17 (c) of Indian
Copyright Act, 1957 employer’s ownership is presumed to be on the work made
in the course of the employees’ employment, unless anything contrary is agreed
between the two.
2. 17 U.S.C. § 201(b) (2000) (US
Copyright Act), this section states that the original authorship attributes
to the Employer of author or commissioner of the work; as authorship is all the
vested rights hence no residual rights can be retained with the original creator
of work; and also 17
U.S.C. § 101 for circumstances which results in works made for hire; Supreme
Court case “Community for Creative Non-Violence v. Reid” whereby independent contractor is excluded from
definition of “Employee” to qualify under this doctrine.
3. The common law countries (CLC) like United States
(as above), Australia (Section 35 of the Australian Copyright Act of 1968), and
United Kingdom (Copyright, Designs, and Patents Act, 1988, c. 48 § 11 (Eng.)) as
a general rule all the rights in work vests with Employer, in due course of his
employment) [i]
4. The Civil Law Nations(CLN),
use of the term “author’s rights” in CLN instead of “copyrights” as in US, lays
emphasis of protection of authors rights in his work.
a. In France only
natural person is considered as author, irrespective of its employment status,
while under contract the same can be transferred (C.IP Article L111-1, General
Rule). Exception to this General Rule is L-113-9 which excludes “computer software
prepared under instructions of employer”.
b. Similarly, in Germany (Article
43 of the Copyright Law) law runs parallel as French law but keeps open the
contract to the contrary for employers.
c. In China, the General principle is similar to other CLNs i.e. “ownership
originally vests in the author of the work” as protected under Copyright Law,
2001 (P.R.C) but there are many exceptions like Article 11, deals with collective
works; Article 16, right to have priority to exploit work within the scope of
authors assigned professional activities; With respect to Computer Software,
there are Regulations for the Protection of Computer Software, Article 3, 10 (June
4, 1991), whereby ownership of software vests with the employer when the
software is created pursuant to employee’s duty or by making exclusive use of
employer’s resources
d. In Japan (Article
15(1) of the Japanese Copyright Law provides that authorship of an employee “in
the course of his duties” is attributed to the employer “unless otherwise
stipulated in a contract, work regulation, or the like in force at the time of
the making of the work.”
[i] The
points 3 and 4 are summarized from the article published on the below link:- http://www.sutherland.com/files/Publication/803e946d-83fe-4f38-8eaa-ec2fbf9b3782/Presentation/PublicationAttachment/11e6c1f9-66f4-4151-b480-251781227c39/WorkforHireLaws.pdf
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