A recent case sheds some light on the requirement that an
assignment of copyright be in writing signed by the copyright owner
in order to be enforceable.
In a business or personal context frequently one party will
contract with another person to create a work for which the
requesting party will pay. Many examples exist such as a contract
to prepare advertising material and related photographs or to
develop a website or to create or modify a computer program. Since
the requesting party will have possession of the resultant work and
typically legal ownership there is an expectation that the
requesting party will also own the copyright in the work.
The Copyright Act
The relevant provisions of the Act are not aligned with the
expectation of ownership of copyright. The Act provides that,
subject to an exception for works made in the course of employment,
the author of a work is the first owner of the copyright in the
work. The copyright owner is entitled to exercise the rights set
out in the Act, including the right to authorize others to exercise
those rights. In addition, the author is entitled to exercise the
moral rights associated with the work.
The term "author" is not defined, but generally the
author of a work is the person who actually creates it. In most
cases it will be readily apparent who the 'author' of a
work is but there are some situations which are unclear. In these
situations it must be determined who exercised the skill and
judgment resulting in the expression of the work in material
The Act allows the owner of copyright to assign the
copyright in very broad terms but no assignment is valid unless it
is in writing signed by the owner of the copyright or by their duly
Problems can arise in situations where there is in effect an
assignment but it is not signed. In appropriate cases the courts of
the United Kingdom have been prepared to avoid the technical
application of the requirement for writing by imposing an
"equitable" assignment. However, Canadian courts have
generally taken the position that they had no power to make such an
assignment in light of the wording of the Act. But they have
granted implied licenses in favor of the commissioning party to
avoid injustice when appropriate in the facts of a case.
A recent decision of the Federal Court of Appeal has addressed
this issue and added some clarity. In this case the defendant
entered into a contract to have a computer programmer modify an
existing program owned by the defendant, but the contract was not
signed by the programmer. The programmer acknowledged that that the
assignment clause of the unsigned contract governed his
relationship with the defendant.
The Trial Judgment
The programmer sued the defendant for infringement after the
defendant hired another programmer to further modify the program.
The trial judge found that the programmer was the author of the
copyright in the program as he exercised the skill and judgment
required to express the ideas and concepts into programming
language. While the wording of the contract was sufficient to
amount to an assignment of copyright it was not signed and not
effective in light of the requirements of the Act. The signed
writing requirement is a substantial legal requirement and not a
mere rule of evidence.
To avoid an unjust result the trial judge said that programmer
had granted an implied license to the defendant to use the program.
The license did not need to be in writing and was a defense to a
claim for infringement.
An appeal from the trial decision was dismissed. The Federal
Court of Appeal observed that the purpose of the Act was to strike
a fair balance between the public interest in the creation and
dissemination of works of art and the intellect, on the one hand,
and obtaining a just reward for the creator, on the other hand.
With this objective in mind Parliament stated that an assignment of
copyright is not be valid unless it is in writing signed by the
owner of the copyright.
To protect copyright owners, the Act requires that they consent
clearly to the assignment of their interest in their right. This is
why the Act requires the holder of the copyright to indicate his or
her informed consent to the transfer of the right in writing
bearing his or her signature. The case law consistently holds that
an assignment cannot be set up against the owner of a copyright
unless it is in writing signed by the owner of the right in
While a number of commentators aspire to the U.K position with
the ability to grant and enforce an "equitable"
assignment such an approach adds uncertainty since enforceability
depends on the reaction of a judge to the facts of the case. The
current position at least has the benefit of providing more
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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