Employee created rights and commissioned works in the field of trademarks

11 June 2018

This is our fourth international article featuring our trademark expert teams from across the firm in Canada, China, France, Germany, Russia, Singapore, the UK and the UAE.

In this article, we will address the topic of employee created rights or commissioned works in the field of trademarks, such as logos, stylised marks, or non-traditional marks such as packaging, get-up, icons, user interfaces, etc.



In such a situation, the trademark owner will need to consider the position under the relevant country law, in order to determine whether the copyright work is automatically owned by the trademark owner, or whether the ownership of the underlying copyrights or design rights have to be transferred to it through a more formal mechanism, such as a written assignment. Where rights are not automatically transferred, then steps should be taken to regularise the ownership as soon as possible and before trademark applications are made so as not to compromise the company's ability to take action (such as opposition or enforcement action against a third party) and to also avoid the right holder being held to ransom by the other rights holder.

This article looks at the rules which relate to the initial ownership of copyrights and transfer of copyrights in employee created rights and in commissioned works in the countries in which we have offices. The table below provides a snapshot.

Who automatically owns? Employee created work Commissioned works

Canada

Employer

Commissionee

China

Employee (the employer having a priority right to exploit the work within the scope of its professional activities).

There exists opaque exceptions under which the employer is the initial owner of copyrights in employee created works.

Commissionee

France

Employee

Commissionee

Germany

Employee (but limited implied license granted to the employer)

Commissionee (but limited implied license granted to the commissioner)

Russia

Employee

Commissionee

Singapore

Employer

Commissionee (but there exists an exception for photographs, portraits and engravings, in which case the first owner of the rights is the commissioning party)

United Arab Emirates

Employee

Commissionee

United Kingdom

Employer

Commissionee

It is therefore important for brand owners to know how they can ensure that they capture and own the underlying copyrights, before filing a trademark.

Underlying copyrights by country

Conclusion

There are many occasions where there is a cross-over between trademarks and copyright, where in ensuring the copyright ownership issues are sorted, it could strengthen your position in what may be seen as a trademark dispute.

Often in sending a letter of demand against a lookalike product for example, you may find that copyright in the artistic works on pack, or another design element, provide a stronger basis than your registered trademarks, as often the brand name differs for a lookalike.

In countries where it is well known that the costs of trademark protection are very high, such as the UAE, you could help to manage protection costs by securing registration for word marks, then relying on copyright for logo elements.

This article also shows the importance of ensuring you obtain underlying IP rights when you are "localising" your trademarks. For example, you may have a trademark which is an English word in a logo format, but in expanding across the globe, you may need to obtain adapted versions of your logo so that it contains the local language branding, such as the Arabic, Cyrillic or Chinese versions of your branding. Each such adaption may give rise to new copyrights. So it is important to ensure that you not only own the initial copyright, but that you secure ownership of any local language adaptations of the copyright works.

By ensuring that your stable of IP rights are in order and owned by your company, it gives you the greatest chance to take successful action against infringements and lookalike products, or in opposing potentially conflicting marks.

Footnotes

[1] Article L.111-1 of the Intellectual Property Code (IPC)
[2] Paris Court of First Instance, July 6 2017, n°16/00670
[3] Under French law, rights in a collective work i.e. "a work created at the initiative of a natural or legal person who edits it, publishes it and discloses it under his direction and name and in which the personal contributions of the various authors who participated in its production are merged in the overall work for which they were conceived" are vested in the natural or legal person under whose name the work has been disclosed (Articles L.113-2 and L.113-5 of the IPC)
[4] Paris Court of Appeal, February 14, 2017, n°15/09758
[5] Paris Court of First Instance, November 20, 2014, n°13/10238
See also: Aix-en-Provence Court of Appeal, April 13, 2018, n° RG 16/10122 ; Supreme Court, September 22, 2015 n°13-18.803
[6] Paris Court of First Instance, November 19, 2015, n°14/11106
[7] Paris Court of Appeal, March 10, 2017, n°15/09974
[8] The IPC only provides with little exceptions under which ownership in programs created by employees and journalistic works is automatically assigned to the employer (Articles L.113-9 and 132-36 of the IPC)
[9] Article L.7111-4 of the IPC
[10] This first requirement was extended to all contracts by law on July 7, 2016.
[11] Article L.131-1 of the IPC
[12] the right to authorize the communication of the work to the public by any means or process
[13] the right to authorize or the fixation of the work by any means or process to allow its communication to the public in an indirect way
[14] Article L.122-1 to L.122-12 of the IPC
[15] Article L.122-7 of the IPC
[16] the right of disclosure i.e. the right to divulge the work created, the right of paternity i.e. the right to have his name mentioned as the author of the work; the right of integrity i.e. the right to oppose to any modification or alteration of the work; the right of withdrawal i.e. the right to request that the work be returned provided that the assignee is duly indemnified.
[17] Supreme Court, February 16, 2010, n°09-12.262
[18] The Civil Code of the Russian Federation
[19] E. P. Gavrilov, Legal Protection of Trademarks and Copyright: Problems of Delimitation


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