NIPC Law

A question that I am often asked at pro bono IP clinics as well as in my practice is who owns the copyright in a commissioned work when the graphic or web designer or software house fall out with their customer. The basic principles were set out by Mr Justice Lightman in  Robin Ray v. Classic FM Plc   [1998] ECC 488, [1998] EWHC Patents 333, [1998] FSR 622, (1998) 21(5) IPD 21047, [1999] ITCLR 256 and amplified and clarified by the Court of Appeal in  R Griggs Group Ltd and Others v Evans and Others [2005] EWCA Civ 11. The issue arose again in  Atelier Eighty Two Ltd v Kilnworx Climbing Centre CIC and Others   [2015] EWHC 2291 (IPEC). In Atelier a graphic designer called Rik Kirk made the logos shown above in August 2011. At that time he was an executive director of the design company Purple Penguin Design Ltd. of Timperley near Altrincham. He was asked to create those logos by one Lionel Bunting who was then a director of both the claimant A...

Although there is not much law in this case, the Court of Appeal's decision in Meridian International Services Ltd v Richardson and others [2008] EWCA Civ 609 (4 June 2008) serves as an object lesson in the need for agreeing who will hold title to a computer program or other copyright work. It is a case that the sort of people who consult me should bear in mind. That is because big companies are usually much more likely to address this issue during negotiations than SME (small and medium enterprises). In April 2006 the claimant company agreed to supply a financial forecasting system to a division of GlaxoSmithKline. That agreement contained a warranty that the claimant owned the intellectual property in the system. It outsourced the development of the software to the defendants but failed to make sure that it would acquire title to the copyrights and other IPR that might subsist in the defendants' work. Consequently, the claimant was in breach of warranty and in effect ...