The owner of copyright in a "work" has the exclusive right to produce, reproduce, perform, publish or authorize the work — generally the right to prohibit others from copying the work without permission. However, when it comes time to enforce copyright, problems may be encountered due to the owner not having correctly perfected their ownership or not having tracked information that may be required to effectively enforce their rights. In what follows we discuss a few issues that may help to ensure your ability to effectively perfect ownership in and enforce copyright.
Ownership of copyright. As a general rule, the author of a work is the first owner of copyright in a work unless the author is an employee who creates the work in the course of their employment. In addition, the author is the owner of moral rights in the work. Moral rights include the author's right to be associated with the work and the right to the integrity of the work. Copyright and moral rights in Canada will generally last for the life of the author plus 50 years. Copyright may be assigned or licensed but the assignment or license must be in writing and signed by the owner. Moral rights may not be assigned but may be waived. To make matters more complicated, if the author is the first owner of copyright, the rights will revert to the author's estate 25 years after the author dies, regardless of any agreement to the contrary.
In light of the basis for copyright being creation by an author, it is important that the author be identified and information regarding the author be tracked and maintained. This should be done even when the author is an employee, since the term of copyright is dependent on the longevity of the author.
Independent contractor. In the case of works created by an independent contractor/consultant, the first owner of copyright will be the author or the company by which the author is employed. Accordingly, it is important that the parties determine where they want the copyright to lie before the work is created.
If the intent is that the legal person hiring the contractor will own copyright in the work, the contractor must assign the copyright, and the assignment must be in writing and signed by the first owner (the author or employer thereof). Conversely, if the intent is for the independent contractor to maintain copyright ownership, consideration should be given to entering into a formal license agreement that clearly sets out the terms pursuant to which the work may be copied and used. There have been many disputes when informal agreements are used as to the scope of the purchaser's rights to copy and use the work. This can be avoided with a detailed license agreement at the outset.
Employee vs. independent contractor. While the distinction between an employee and an independent contractor may generally seem clear, in some situations the distinction may be difficult to make. This has resulted in many copyright ownership disputes in the past.
Three conditions must be met for the first owner of copyright to be an employer:
- the author of the work must be employed under a contract of service or apprenticeship;
- the work must be made in the course of employment by the author; and
- there must not be any agreement to the contrary.
There is no universal test for determining whether there is employment under a contract of service or apprenticeship. Courts may consider, by way of analogy, jurisprudence of tax and labour law. The analysis is fact-specific, but the central question is whether or not the author is performing services as a person in business on his/her own account. The jurisprudence suggests various factors to consider when determining if an individual is an employee or independent contractor, including:
- ownership of tools;
- control or direction (relationship of subordination);
- risk of loss or chance of profit; and
- the degree of integration of the worker into the workings of the employer.
Exceptions. In addition to the foregoing, certain exceptions are provided to the general rules regarding ownership. For instance in the case of photographs or portraits ordered from an independent photographer or painter, the purchaser is the first owner of copyright. As another example, where the work is an article or other contribution to a newspaper, magazine or similar periodical, the author retains rights other than with respect to reproduction in a newspaper or periodical.
It is easy to see how determining where copyright ownership lies is not always clear and simple. The best way to ensure perfected ownership of copyright in a work is to identify the author and consider the type of agreements that are appropriate in light of the nature of the relationship with the author and the nature of the work. As a general rule, all employers should have a clear employment agreement in place that expressly outlines in writing the duties and rights of each employee. The agreement should be drafted to clearly address copyright ownership and moral rights issues. However, an agreement will not alleviate the need to specifically identify the author and to track author and ownership information and agreements since enforcement may be required a significant time after the work is created.
With respect to moral rights, consideration should be given to obtaining a waiver from the author, but it is not always in the best interest of an owner to have moral rights waived since the rights are enforceable by the author and may give another basis for pursuing an infringer. Accordingly, where the author, a close associate or a legal entity controlled by the author owns the copyright, it may be advisable not to waive the rights.
Conclusion. Ownership is fundamental to being able to assert and protect copyright in a work. Accordingly, it is best to properly document the ownership position of all involved parties before creative effort is expended, and essential to track authorship and ownership from creation to the end of the term of the rights. If that is not done, the "owner" may find that they do not have sufficient information or perfected rights to enable them to enforce their rights in the future.
Brian P. Isaac and Jayda A. Sutton, Toronto
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.