‘A Design Director, who doesn’t design’ – further guidance on what counts as ‘during the course of employment’
When copyright works are created by employees, during the course of their employment, the law provides that they generally belong to the employer. However, what counts as ‘during the course of employment’ is often not clear-cut.
A recent case, concerning the design of greetings cards, has provided helpful guidance on the factors that may be relevant. These include:
(a) The terms of the contract of employment
(b) Where the work was created
(c) Whether the work was created during normal office hours
(d) Who provided the materials for the work to be created
(e) The level of direction provided to the author
(f) Whether the author can refuse to create the work/s, and
(g) Whether the work is “integral” to the business.
This list is not definitive and no single factor is likely to be determinative. The tribunal must assess all the relevant factors, and determine, on balance, whether the work was created in the course of employment. It is also important to bear in mind the purpose for the existence of this the legal provision – that is, that copyright should vest in the entity for whom the work was created and who paid for it.
There were two points of particular interest concerning this issue:
- Firstly, that the name of the designer appeared on the products. This creates either a presumption that they were designed outside of the course of her employment, or that even if they were not, she was the owner regardless (due to an agreement with the employer). The defendants were unable to rebut these presumptions.
- Secondly, that the designer’s role was as ‘design director’ and the defendant alleged that this must mean part of her role for the company was to design cards. However, the designer produced evidence that her role was more concerned with the managerial and administrative side of the business – in particular, she was not under an obligation to design cards at all and was therefore a ‘design director who didn’t design’. The judge agreed, highlighting that job titles are not necessarily relevant.
Bearing all the circumstances in mind, the designs were created outside of the designer’s employment and she owned the copyright in them.
This case concerned the ownership of copyright and the rules do vary slightly for different IP rights. However, generally:
It is important to look at all the circumstances when deciding whether IP was created during the course of employment. The first question is usually whether there is an ‘employment relationship’ at all (which was not discussed in this case). The second question is whether the employee has created the IP during the course of that employment.
This includes looking at employment contracts and any other agreements between the employee and employer as to what their role includes. Employers should always make sure that contracts are as clear as possible to ensure that they cover all creations that they are engaging the employee to create. Contracts should also be kept under constant review as the employee’s role changes within the organisation.
This article was written by Peter Byrd. For more information please contact Peter on +44 (0)20 7427 6754 or at firstname.lastname@example.org
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