INTELLECTUAL PROPERTY LAW SPECIALISTS

TRADE MARKS - COPYRIGHT - PATENTS - DESIGNS - MEDIATION SOFTWARE AGREEMENTS - PLANT BREEDERS RIGHTS - PRIVACY GROWER AGREEMENTS - IP DISPUTES - CONTRACTS FOR SERVICE

What if your employees steal your IP?

Normally, the person that creates a work (copyright work) is the owner of the copyright in it.

In order for another person (an assignee) to take ownership of the copyright work, it must be assigned from the creator/owner of the copyright work (the assignor) to the assignee.

Under s 196 (3) of the Copyright Act, “An assignment of copyright (whether total or partial) does not have effect unless it is in writing signed by or on behalf of the assignor.”

This is a crucially important aspect of copyright law, that there needs to be a written assignment deed or agreement assigning the copyright work in order for the assignment to be effective. If you have engaged an independent contractor or an employee to prepare any form of copyright work for you, make sure you have a written assignment deed or agreement assigning the copyright in the work to you and consenting to a breach of any moral rights in that copyright work, and waiving the right to sue for a breach of those moral rights.

Fortunately, if you have not yet done so, there is some recourse for employers. Under s 213 of the Copyright Act, “Where the work was made by the author in pursuance of the terms of his or her employment by another person under a contract of service or apprenticeship, that other person is the owner of any copyright subsisting in the work.” That is, even without a written document, such as an employment contract or an assignment deed or agreement, in place, the employer will be deemed to be the owner of the copyright in works created by an employee in the course of their employment.

If the employee attempts to destroy, use without consent, or otherwise misappropriate the copyright in works created by them in the course of their employment, you as an employer do have recourse against them, starting with a cease and desist letter. Just make sure you maintain clean hands at all times. For example, you should attend to payroll at the usual time and refrain from making any defamatory allegations of intellectual property infringement.

If you have any questions about copyright, intellectual property infringement, assignment of intellectual property rights, and the intellectual property clauses of contracts for service, Tarr Law is here to help. Please reach out to us on 0477 914 319 or hayley@tarrlaw.com.au.