When an employee claims to own his employer's software,
the analysis will turn to whether that employee was an
"author" for the purposes of the Copyright
Act, and what the employee "contributed" to
the software. This, in turn, raises the question of what
constitutes "authorship" of software?
What kinds of contributions are important to the
determination of authorship, when it comes to software?
Remember that each copyright-protected work has an author, and
the author is considered to be the first owner of copyright.
Therefore, the determination of authorship is central to
the question of ownership. This interesting question was
recently reviewed in the Federal Court decision
in Andrews v. McHale and 1625531 Alberta
Ltd., 2016 FC 624. Here, Mr. Andrews, an ex-employee
claimed to own the flagship software products of the Gemstone
Companies, his former employer. Mr. Andrews went so far
as to register copyright in these works in the Canadian
Intellectual Property Office. He then sued his former
employer, claiming copyright infringement, among other things.
The former employer defended, claiming that the ex-employee was
never an author because his contributions fell far short of what is
required to qualify for the purposes of "authorship"
under copyright law. The ex-employee argued that he
provided the "context and content" by which the
software received the data fundamental to its
The evidence showed that the
ex-employee's involvement with the software included such
things as collecting and inputting data; coordination of
staff training; assisting with software implementation; making
presentations to potential customers and to end-users;
collecting feedback from software users; and making
suggestions based on user feedback.
The evidence also showed that a software programmer engaged
by the employer, Dr. Xu, was the true author of the software. He
took suggestions from Mr. Andrews and considered whether to modify
the code. Mr. Andrews did not actually author any code, and
the court found that none of his contributions amounted to
"authorship" for the purposes of copyright. The
court stopped short of deciding that authorship of software
requires the writing of actual code; however, the court found that
a number of things did not qualify
as "authorship", including
collecting and inputting data;
making suggestions based on user feedback;
problem-solving related to the software functionality;
providing ideas for the integration of reports from one
software program with another program;
providing guidance on industry-specific content.
To put it another way, these contributions, without more,
did not represent an exercise of skill and
judgment of the type of necessary to qualify as authorship of
The court concluded that: "It is clearly the case in
Canadian copyright law that the author of a work entitled to
copyright protection is he or she who exercised the skill and
judgment which resulted in the expression of the work in
material form." [para. 85]
In the end, the court sided with the employer. The
ex-employee's claims were dismissed.
Field Law acted as counsel to the successful defendant 1625531
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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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