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.
Commissioned Works
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 form.
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 authorized agent.
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.
The Decision
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.
The Appeal
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 question.
Comment
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 certainty.
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.
