Date updated: Monday 26th April 2021
If an employee creates a work or design where copyright or design rights subsist, who is the owner?

Unless there is agreement to the contrary, where an employee creator has created a work capable of copyright or design right protection during the course of their employment, these intellectual property rights will vest in the individual’s employer. For best practice, however, there should be provision in all employment contracts clarifying that the organisation is the owner of any intellectual property (IP) rights created during the employment relationship. This will direct the employees’ minds to the fact that they do not own IP rights in what they create in the context of their employment.

Determining the status of an employee is not based on what the title of the contract with that person refers to them as. The definition of “employee” is dependent on the relationship between the organisation and the individual. Account should be taken of the criteria which an Employment Tribunal or a Court would consider when determining employment status and organisations should take care that staff whom they consider to be employees might be independent contractors (see below).

Who owns the copyright or design rights when a work is created by a volunteer or freelancer?

A volunteer or freelancer is an independent party. The default position is that any IP created by them will be owned by them rather than the organisation engaging them, even in the case of commissioned works, where the organisation pays them to create works in which IP rights exist.

Organisations should therefore put in place agreements with all volunteers and freelancers which deal with IP rights in works created by them in the course of their duties. A properly drafted agreement would make provision for an assignment or licence of the copyright or design rights to the organisation. If there is no provision for this, then there may be an implied obligation to assign or licence the IP, although this might well involve a legal battle. In addition, there is always a risk that an innocent third party will acquire the IP from the freelancer or volunteer before the organisation decides to take steps to secure the IP. This would probably make it impossible for the organisation to take control of the IP.

Can I use any image on my website?

We have had a significant number of enquiries from clients who have received letters demanding a settlement payment or face litigation for infringing copyright by publishing images on their websites which they have copied and pasted from unknown sources.

Copyright is an automatic right which arises on creation of an original artistic work, which includes photographs and other images. It is an infringement to copy, distribute or reproduce artistic works without permission. Copyright is usually owned by the person who took the photo or the artist who made an artistic work; sometimes it is owned by the publisher or the person who commissioned the work (depending upon contractual arrangements which might exist).

Unintentional use of a work is not a defence to copyright infringement. Copyright gives the owner of the artistic work recourse to claim damages or an account of profits, legal costs and interest for the unauthorised use of their works.

We recommend that all clients audit their websites and ensure that all images used on their websites are owned by the organisation or that the organisation has an appropriate licence to use the image from the owner or image library or that the image is a free-to-use stock photo from a library such as “Pixabay”.

How do I protect my brand?

Your organisation's brand is likely to be capable of trade mark protection in one way or another. By registering your organisation's brand you are making it easier to stop someone attempting to mislead the public by using your brand. It might also reduce the chance that they will try.

A registered trade mark would usually be the organisation's name and logo, but there are other forms of trade mark, such as sound trade marks. In order for a sign to be registrable as a trade mark, it must be distinctive and not descriptive of the goods or services for which it is registered or of a geographical location.

A trade mark is used to identify the origin of the goods or services and is registered against specific classes of goods and services, known as a specification. It is essential that the specification is completed correctly, as it cannot be added to at a future date.

A trade mark can be registered in various jurisdictions, depending on where the organisation operates. If your organisation is national, an application can be made with the United Kingdom Intellectual Property Office, whereas if your organisation has a presence in the rest of Europe, then we would recommend that an application is also made with the European Union Intellectual Property Office.

A registered trade mark is capable of lasting indefinitely, providing that it is renewed every 10 years, although it can be cancelled for five years of non-use or if a successful application is made by someone who claims to have an earlier, conflicting trade mark. It is therefore essential to ensure that there is freedom to register and use a trade mark before filing an application by carrying out clearance searches.

If you do not register a trade mark, you might be able to rely on the law of passing off in the UK to protect the mark. In order to succeed in a claim for passing off, you will need to satisfy the following test:

  • there is a reputation and goodwill attached to the mark;
  • the public associate the mark with the organisation and its goods and services;
  • a third party has misrepresented to the public a connection with the organisation through use of a similar mark and that this has led to confusion of the public; and
  • this has caused damage to the organisation

Passing off is a much harder claim to prove than trade mark infringement due to the amount of evidence required of goodwill and reputation and of association of the mark with the organisation. Therefore, if you have a trade mark capable of trade mark protection, then it is worth registering to protect your organisation's name and reputation.

We are a charity which is setting up a trading subsidiary…

A trading subsidiary is a separate company incorporated to carry on trading activities for a parent charity. Therefore, if the trading subsidiary uses any of the parent charity’s branding it should have a trade mark licence from the charity. A licence can include trade marks and other IP rights as necessary to run the trading subsidiary and provisions can be made for a payment to the charity for use of the trade mark and other IP rights. This ensures that the charity is using its charitable assets appropriately, which involves maintaining control over the use of the charity’s trade marks.

The trustees of a charity must also carefully consider whether arrangements with non-charitable organisations in general are in the best interests of the charity and in accordance with the legal duties of the trustees. Where branding is shared by both the parent charity and its trading subsidiary or between a charity and a non-charitable, third party organisation, there is detailed guidance available from the Charity Commission on the website for trustees. It includes deciding whether shared branding is in the best interests of the charity, how to make it clear to the public that the entities are separate and specific rules regarding fundraising.