15.11.17

Intellectual Content Ownership: Employees and Contractors

Lisa Rhooms
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Intellectual Content Ownership: Employees and Contractors

In Jamaica, there appears to be a common misconception concerning works which are eligible for copyright protection and which are created by employees in the course of their employment, and by contractors while engaged. This misconception is that the copyright in the works, created by these categories of persons, automatically belongs to the employer or the party engaging the contractor, as the case may be. While this might be the case in other jurisdictions, as discussed below, this is not so in Jamaica, and this article seeks to clarify the position in Jamaica in relation to these employee and contractor copyright works.

Show me the contract: No “course of employment” concept

Where an employee creates a work during the course of his or her employment, the copyright in that work does not, without something more, vest in the employer. The Copyright Act, 1993 (amended in 2015), provides in section 22 that “…the author of a protected work is the first owner of any copyright in the work unless there is an agreement to the contrary.” This section does not then go further to provide for an exception for works created in the course of employment as in the United Kingdom (UK) for instance, and should therefore not be confused with the UK position. One of the only exceptions to this rule in Jamaica was created by the 2015 amendment which specifies that where works are created by an employee engaged by the Government of Jamaica, under a contract of service, the Government is the owner of the copyright unless there is an agreement to the contrary.

Therefore, since Jamaica has no real “course of employment” concept, in order to reap the benefits of works created by employees while they work, an employer should ensure that there is “an agreement to the contrary”, which dictates ownership of the copyright in the work. Since the Copyright Act speaks only of an “agreement”, it follows then that this agreement may be either oral or in writing, and need not have any specific form. However, in order to concretize the intention of the parties, agreements are best put in writing, and settled from the very beginning of the employment relationship. Therefore, it is often useful for the employee’s contract of employment to contain an intellectual property clause which sets out, from the commencement of the contract, that the copyright in any intellectual creation will belong to the employer. If it is not possible to implement an intellectual property clause into the employment contract, to cover the copyright ownership in all, or in specific types of intellectual creations, over the term the contract, at the very least, an employer should be careful to have a written agreement for each copyright work created, which states that the employer is the owner of said work.

“Work for hire”? What “work for hire”?

As with employees’ works, the copyright in works created by contractors will be owned by the contractor unless there is a contrary agreement, and this is notwithstanding the contractor has been paid for the performance of the contracted work. This is so as the Copyright Act does not provide for the concept of “work for hire”, which is specially provided for in the United States (US), for example. The concept of “work for hire” in the US covers a situation where the person who has engaged the contractor is not only the owner of the copyright in the work, but goes as far as to denote said person as the author or creator of the work. Further, in the US, the person for whom the work has been created owns the copyright in this contracted work unless there is an agreement to the contrary. This is similarly not to be confused with the treatment of a contractor’s intellectual creation in Jamaica, where the polar opposite holds true, in that, if there is no contract, there is no copyright to be had for the party who has engaged the contractor, as the copyright will vest in the work’s creator or author, who is its first owner. However, there is also an exception, as with employees of the Government. Where a person is contracted by the Government under a contract for services, the copyright in the intellectual works created under the contract will be owned by the Government, unless otherwise agreed.

Therefore, since the concept of “work for hire” is not yet provided for by the Jamaican Copyright Act, the written intention of the parties as to the ownership of the copyright in a contracted work is crucial. This is especially so, and most prudent where the employer has paid for the services which produced the copyright work, and is desirous of obtaining the fullest benefit of the work though ownership of the copyright therein.

Conclusion

In light of the foregoing, it is essential to properly understand how Jamaica treats with works created by employees and contractors. While it may be believed otherwise, since there is no real concept of works created in the “course of employment”, nor is there any true notion of a “work for hire”, it is vital for there to be an agreement on the intention for copyright ownership as soon as is practicable. It is important to note that although there is no stated form which such agreement should take, it is best that it be in the form of a written contract, which sets out the ownership terms from the very beginning of the engagement. In conclusion, it cannot be any further stressed that if there is no agreement, there is no copyright for the business and therefore, careful consideration must be given to the importance of contracting for employees’ and contractors’ intellectual content.

Lisa Rhooms is an Associate at Myers, Fletcher & Gordon, and is a member of the firm’s Commercial Department. Lisa may be contacted via lisa.rhooms@mfg.com.jm or www.myersfletcher.com. This article is for general information purposes only and does not constitute legal advice.