Schools, colleges and universities, like any organisation or business, frequently use and create Intellectual Property (IP), for example drawings, photographs, logos, etc. as part of their activities. It needs to be clear who owns the IP which is used or created to make sure that the rights vesting in it are owned by the correct entity and can be protected. Alan Harper explains the general rules in relation to the ownership of the main types of IP.
Copyright seeks to protect the form of expression of ideas. It protects, for example, written works, scripts, drawings, sound recordings, films and broadcasts. This IP right arises automatically upon creation of a copyright work.
In relation to copyright works, the general rule is that the author of the work, defined as the person who creates the work, will be the owner of that copyright.
Where a work is made by an employee in the course of their employment, the employer will be the first owner of the copyright work, unless there is any agreement in place to the contrary. Employment contracts should deal with the ownership of IP which may be created to ensure that it is owned by the appropriate entity.
Where work is commissioned from a third party contractor, the default position is that the contractor will own the copyright, even though the commissioner has paid for the work to be done. As a result, it is essential to deal with the position on ownership of copyright in advance and contractually where work is commissioned to avoid problems later on.
A trade mark, or ‘brand’, is a sign which is used to differentiate one individual’s goods or services from another’s. Trade marks are broad and can protect, for example, names, labels, slogans and jingles.
Trade marks are a registered right, so it is important to know whether your logos and labels etc. are capable of registration. If you can register your mark then this will grant you the exclusive use of the mark in connection with the goods or services for which they are registered, which will prevent anyone else being able to use that trade mark. Trade marks are owned by the registered proprietor. It is important to consider whether you also own the copyright in the subject matter of your trade mark – see above.
Design rights protect the appearance of functional products which have no aesthetic appeal.
The basic rule is that the designer is the first owner of design right in his or her work. Designs created by employees in the course of their employment will be owned by their employer, in the first instance.
Unlike copyright however, if work is commissioned, the first owner of the design right in the work will be the commissioner, although it is always best to agree the position of ownership contractually so as to avoid any uncertainty.
Patents protect the way things work and the methods for doing things. Patent applications can only be made by the owner of the invention, and the owner is generally the inventor, or their successor in title.
Although some inventions may be made by inventors in the course of their employment and their name will appear on the patent specification as inventors, their employers will usually own the patent. In the UK, an invention will belong to an employer if it was made in the course of the normal duties.
In the absence of express contractual provision to the contrary, the ownership of an invention made by an independent contractor will vest in the contractor. It is vital that ownership is dealt with in the contract.
Some people creating IP for education institutions may be volunteers. Volunteers will not qualify as ’employees’ or ‘third party contractors’, and so different rules apply. It is very important that the ownership of IP is established contractually from the outset.
Intellectual property, just like a physical asset, needs to be protected. To do so, you must bear in mind the ownership position of your IP to guarantee that you have rights to use it and, if required, enforce it.