Copyright Ownership: Exploring Employer-Employee Relationship

INTRODUCTION

Remember the story affiliated with the famous – Taj Mahal, an exceptional creation yet the creators are only remembered with severed hands and blood. This is quite the picture of how the Indian copyright laws are treating the employees who try to become such exceptional creators. Unlike the U.S.A., the ownership disputes in India and the U.K. are heavily subjected to judicial interpretations. The status quo of intellectual property rights of the employees working under an employer ahead of them is a sinking ship surrounded by Pirates. The Copyright Act, 1957[1] (Copyright Act) of India grants exorbitant powers to employers which nearly set aside any claims of the employees on any intellectual property created by them (eligible for copyright protection as mentioned in Part III of the Copyright Act) “in the course of employment”.

CONTRACT OF SERVICE AND CONTRACT FOR SERVICE

In the realm of the Copyright Act, the relationship between the employer and its employee, i.e. the very nature and scope of the employment is a key mitigating factor that decides whether the ownership of the intellectual property created by its author will be awarded to him or his employer. Section 17 of the Copyright Act, clauses (a) and (b) are limited in their extent, however, as per section 17 (c) of the Copyright Act, the employer becomes the first owner of the copyrighted work created by his employee (author) “in the course of author’s employment under a contract of service or apprenticeship”[2] subject to any contrary agreement. This means that if an employee makes any copyright then the owner would have the title of that intellectual property unless there is an agreement stating otherwise.

It surely gave rise to the question of whether a person can only acquire a copyright being unemployed or if is there any way which let the author of the work accredit himself for his efforts. Here comes, the concepts of “Contract of service” and “Contract for service” or the “Work for hire” doctrine.

• Contract of Service: This phrase simply denotes a common employment where a person has to commit to his work in a certain working hours period until he resigns as per the pre-agreed terms or in common understanding a “nine to five” job. As per the explicit provisions of the Copyright Act, every work created by an employee is by default owned by the employer if no contrary terms were agreed upon in the employment contract.
• Contract for Service or Work for Hire: The “work for hire” doctrine has emerged from the U.S.A.-based precedents namely – Boucicault v. Fox[3] and Wheaton v. Peters[4] which further evolved into “work made for hire”. This refers to commissioned works wherein an independent contractor or service provider is hired to accomplish a particular task. In general, any work commissioned for consideration would be simply owned by the person who commissioned the same as also evident from the plain interpretation of section 17 (b) read with section 17 (c) of the Copyright Act. It was observed in the Indian Performing Right Society Ltd v. Eastern Indian Motion Pictures Association and Ors.[5] that if the independent service provider (here music composer) agrees to provide certain services in lieu of consideration then it would automatically transfer his ownership rights to the person who commissioned the work (here the Producer of the cinematograph) under the scope of section 17 (c) of the Copyright Act.

WHEN DOES THE EMPLOYEE OWN THE COPYRIGHT?

Following the passion while earning a livelihood has become a new common for the general public nowadays. People being employed are also being engaged in other innovative and creational activities dreaming of gaining the rewards they deserve for their contribution to society with their intellectual talent. Though employers enjoy being the privileged ones in Copyright ownership yet there are circumstances where an employee can secure his creations in some manner:

• Pre-existing Copyright Work: Concerning intellectual property of the copyright, created by the employee before joining a job would be solely owned by him and not the employer. The same has been highlighted in T. Thomas Vs. Malayala Manorama Co. Ltd.[6] wherein the latter party was claiming certain cartoon characters created and used by the former, however, the Kerela High Court held that because the disputed intellectual property had been already existing before Mr. Thomas joined the Publisher (Manorama Co.), thereby section 17 (c) could not be applicable on the same after Mr. Thomas left the Manorma Co.

Therefore, merely using a pre-existing copyright work during employment does not entitle the employer to own the same under the purview of the Indian Copyright Act.

• Copyright Work not being part of the Duty: The question that who would own a Copyright work created during the employment but was not affiliated with the obligations, duty, or part of the job was considered by the Delhi High Court in Neetu Singh Vs. Rajiv Saumitra & Ors.[7] wherein a book was the subject matter of the main dispute as the same was created by Plaintiff during her employment as one of the directors of the Defendant’s Coaching Centre, who published it without her consent presuming protection under the section 17 (c) of the Copyright Act. The Hon’ble Court awarded the title in favour of the Plaintiff on the grounds of the work created by her not being a part of her employment obligation or duty.

Therefore, it is unambiguously clear that any work that has been done outside the purview of the course of employment would be entitled to its original author or creator and the employer cannot claim over such intellectual property under the Copyright Act. Even the U.K. follows the same approach which has been reflected vide a recent judgement of Michael Penhallurick Vs. MD5 Ltd.[8] wherein a dispute arose over a technique called “Virtual Forensic Computing” which was claimed by the Plaintiff, however, the Court found that the creation of the software was explicitly part of the duty and obligation of the Plaintiff under his course of employment that allows the employer (MD5) as the first owner of the intellectual property.

CONCLUSION

On the pretext of the above-mentioned, it is clear that the Indian Copyright regime is more employer-friendly while resolving any dispute of title arising between the employer and the employee. Various defences are being taken up to shield such inclination including the employment includes the hiring of intellect, ideas, and thereby the creations of the employee but these all just seem to be some abruptly vague excuses to favour wealth over creativity and mostly profess a message of the stone-age principle of “Might is Right”. It cannot be denied that there might be people always couching till the right time to pounce upon and abuse the process by filing frivolous claims but still not justiciable to snatch away the very moment of credit one deserves just because he was not well-off to sustain all by himself while working on his ideas. It demotivates and restricts the creativity of the people who hide in a sheep-flock just because running that extra mile would not bring any rewards to them and merely distress and dejection.

The Indian judiciary has to restructure the scope and extent of the Copyright laws in India. It must be checked upon how apt is to apply six-decade-old legislation in contemporary times and whether would it be doing justice in a world where India is trying to promote innovations, creativity, and new ideas or do we require a reformative approach in such laws which are the heart of intellectual properties that resemble the intellectual growth of the nation.

Author:- Kamal Singh Rautela, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.

REFERENCES:

• https://amlegals.com/doctrine-of-work-for-hire-under-the-copyright-law/#
• https://law.resource.org/pub/us/case/reporter/F.Cas/0003.f.cas/0003.f.cas.0977.2.pdf
• https://blog.ipleaders.in/doctrine-work-hire-copyright-law-critical-survey-us-cases/#:~:text=The%20emergence%20of%20the%20work%20for%20hire%20doctrine,In%20the%2019th&text=From%20the%20U.S.%20Supreme%20Court’s,the%20scope%20of%20their%20employment.
• https://blog.ipleaders.in/understanding-the-employer-employee-tussle-in-ownership-of-intellectual-property-rights/
• https://www.indialawoffices.com/legal-articles/who-is-the-owner-of-copyright-employer-or-employee

[1] The Copyright Act 1957 (14 of 1957)

[2] The Copyright Act 1957 (14 of 1957), s 17 (c)

[3] Boucicault v. Fox [5 Blatchf. 87.]

[4] Wheaton v. Peters [33 U.S. (8 Pet.) 591]

[5] Indian Performing Right Society Ltd v. Eastern Indian Motion Pictures Association and Ors.,1977 AIR 1443

[6] V.T. Thomas Vs. Malayala Manorama Co. Ltd., CMA  No. 230 of 1987

[7] Neetu Singh Vs. Rajiv Saumitra & Ors., CS (COMM) 935/2016

[8] Michael Penhallurick Vs. MD5 Ltd., [2021] EWHC 293 (IPEC)[8]