Can an employee claim to own the employer's software?
An "author" of a work is the first owner of copyright.
To determine ownership, it's necessary to determine which
contributions will be considered "authorship" for the
purposes of owning copyright in software. The recent decision in
Andrews v. 1625531 Alberta Ltd. et al, 2016 FC 624 (June
3, 2016), considered this question in the context of a claim by an
ex-employee, Mr. Andrews, that he contributed to, and therefore was
a joint author of the employer's software products. The
employee went so far as to register copyright in his own name in
the Canadian Copyright Office. Since the Copyright Office
doesn't perform any "gatekeeping" functions, the
ex-employee was able to obtain a registration which purported to
relate to the employer's software products. As if this conduct
wasn't bad enough, Mr. Andrews 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 functionality.
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. Dr. Xu
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
Collecting and inputting data;
Making suggestions based on user
Problem-solving related to the
Providing ideas for the integration
of reports from one software program with another program; and
Providing guidance on
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 software.
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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The Federal Court of Appeal earlier this year remitted a decision to the Federal Court to clarify an ambiguity in a judgment issued on summary trial relating to recidivist sale of counterfeit Chanel merchandise.
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