IP Clarity - Ownership of Copyright in Trinidad and Tobago
The issue of ownership of a copyright work is always a thorny one. Not because the law is uncertain, but because persons involved in collaborative projects tend to not have a frank discussion about intellectual property rights and more so ownership of those intellectual property rights. Clover® has discussed this issue with many clients across a broad spectrum of industries. Typically, disputes about ownership of copyright tend to arise in scenarios where:
· the creator is an employee;
· a person commissions the creation of a work;
· student university projects;
· collaborative ventures.
Ultimately, these problems result from the lack of a clear understanding about what the law on copyright says, the absence of a comprehensive contract and social norms that have developed into bad habits.
The law on copyright is very clear about who is the owner of a copyright work. However, it must be noted that these approaches are territorial and thus vary from country to country. What this means is that one should be careful about using copyright laws and concepts from Country A in Country B. One of the most common mistakes we see and hear at Clover® concerns the use of the ‘works for hire doctrine’ in Trinidad and Tobago. This US copyright concept is inapplicable in Trinidad and Tobago, and moreover is inconsistent with the statutory approach under the Trinidad and Tobago Copyright Act (TT CA). However, many contracts used by entities in Trinidad and Tobago include references to ‘works for hire’ because of the indiscriminate copying and pasting of contract provisions obtained on the internet. This poor contract drafting habit can prove costly where an employer claiming ownership of their employee’s work are unsuccessful because the employment works provision under the Trinidad and Tobago Copyright Act leads to a different conclusion.
Rules on Ownership of Copyright inTrinidad and Tobago
The general rule on ownership of a copyright work is that the author will be the first owner (section 26(1)TT CA). That is, the person responsible for making the original contribution will be the owner unless there is a contrary contractual agreement, or the creation of the work comes within the employment works provision (section 26(4) TT CA).
Where a copyright work is created in the course of one’s employment, the statutory rule dictates that the employer will be the owner of the copyright (section 26(4) TT CA). However, this outcome can be circumvented where the employment contract expressly provides for a different outcome. The crucial issue for determining whether an employer will own an employee’s work is rooted in the employment contract. If the creation of a work is the consequence of activities coming within one’s job description, this is a strong indicator that the employer will own the work. Similarly, using the employer’s resources to create a work is also a strong indicator that the employer will own a work created by an employee. As such, it is advised that persons scrutinise their employment contracts before agreeing to an employment opportunity.
The commissioning of a work in simple form relates to the scenario where Person A pays Person B to create a copyright work. This could be for the creation of a painting, the taking of photographs, design of a website, composing of a jingle etc. There is a common misconception that if Person A pays Person B for the creation of a work, Person A owns the copyright. This is incorrect in the Trinidad and Tobago context because there is no commissioned works provision. As such, in these scenarios, the general rule applies so that the author of the work is the owner, that is Person B who was paid to create the work.
If Person A, the commissioner of the work, wants to own the work, they must get an assignment of the copyright work from Person B. Assignments must be done in writing to be effective (section 28(2) TTCA). However, where an assignment is not completed the commissioner may yet receive an implied licence to use the work, but it is advised that this approach should not be relied upon because it will involve litigation to get a declaration from the court.
One common example where this issue arises repeatedly is the commissioning of wedding photographs. Brides and grooms often complain about the use of their photographs in the portfolio of the photographer or even in advertisements. However, in most instances there was never an assignment of copyright and as such the photographer is free to use the photographs without the permission of the couple, except where there may be privacy limitations or the risk of passing off where the subject of the photograph has goodwill in their persona. The best way to avoid this problem is to take an assignment of the copyright in the photographs, but this often costs more, and rightfully so as the photographer is the initial owner of the copyright in the photographs.
Another area where ownership of copyright is frequently discussed is in the context of universities pertaining to both students and academic staff. Many universities have an intellectual property policy that will dictate ownership of academic work. The rule of thumb is usually that students and academic staff own the copyright in their academic work. However, where there are funded research projects, the contracts governing that project usually dictate that the university will own the research and other output such as potential patents.
In the absence of an intellectual property policy or any contrary contractual provisions signed by students and/or staff, the ownership of copyright in a work will vest with the researcher and not the university. Again, the importance of thoroughly reading the agreements that one has to sign is emphasised and in this context it is also important to read accompanying documents and policies, namely the intellectual property policy.
Contracts and Social Norms
The lesson to be learned from the plethora of disputes concerning ownership of copyright works is that contracting before engaging in any collaborative creative activity is essential. A written contract should be signed to ensure all parties are on the same page re ownership of copyright.The social norms in many creative industries lead down the dangerous road of no formal agreements and in most instances zero discussion about copyright and ownership of copyright. Many persons have indicated that it is awkward to discuss these issues before a project commences or that it creates a bad vibe. However, the frequency of ownership disputes suggests that engaging in the awkward conversation is worth it given the potential risks at play.
Clover® strongly recommends that all creators formalise their agreements for collaborative projects in the form of a written contract. Moreover, that contract must include a clear provision on ownership of copyright. It is always better to be proactive in this regard as resolving ownership disputes can be very costly, time consuming and often leads to reputation damage and broken relationships.
Clover® can assist in negotiating your copyright deals, contract review and drafting and dispute resolution.