​

 

A previous edition of IP Bits described how joint ownership of a patent can result in severe disadvantages for a research organisation joint owner. See Joint Ownership of Patents Does Not Result in Joint Benefits.

 

Unsurprisingly, joint ownership of copyright also has disadvantages for a research organisation joint owner.

 

Which copyright works do IP professionals mostly deal with?

 

1. Software

2. Datasets

3. Written materials such as training materials.

 

 

Background

 

Joint ownership is sometimes offered or conceded in the mistaken expectation that the joint owners will enjoy equal rights. But that is not necessarily the case.

​

Joint ownership sounds fair, mutual, equal, and collaborative. But joint ownership laws can operate unfairly.

 

We need to be aware of joint ownership laws not just in our own country but also in other countries.

 

When two or more organisations in the same country jointly own a copyright work, they are governed by the separate copyright laws:

 

1. in their own country for the copyright subsisting in their own country,

2. by US copyright laws for their copyright of the same work in the US,

3. and so on for each other country.

 

We do not necessarily need to know the copyright laws of every country. We need to:

 

1. know that there are different unharmonised laws on how joint ownership works, and

2. have a way for dealing with that.

 

 

Implications of copyright joint ownership (other than US)

 

In many countries (including Australia, New Zealand, Singapore, Malaysia, Hong Kong, Philippines, India), generally one joint owner of copyright:

 

1. cannot use or exploit the copyright work, and

2. cannot grant an exclusive or non-exclusive license

 

in each case, without the consent of the other joint owners.1, 2, 3, 4

 

Basically, a joint copyright owner cannot exercise any copyright rights individually. Copyright rights must be exercised jointly by all copyright owners.

 

The practical result is that no copyright joint owner can do anything with the copyright unless this is done jointly by all the joint owners or consented to by the remaining joint owners.

 

 

Implications of copyright joint ownership (US)

 

The law in the United States is quite different, where one copyright joint owner:

 

1. can, without the need for the consent of the other joint owners, use or exploit the copyright work, with no obligation to share profits or revenues, or pay a royalty 5

2. can grant a non-exclusive license of the copyright work without the consent of the other joint owners, but must account to the other joint owners for a “rateable share of profits” 6

3. cannot grant an exclusive license of the copyright work without the consent of the other joint owners. 7

 

 

Lack of international harmony

 

IP laws are largely harmonised internationally, the result of treaties implemented by national legislation in all treaty member countries.

 

But there is no harmonisation of joint ownership laws for copyright. This is largely because joint ownership of copyright is not generally covered in national legislation but rather by case law.

 

Without needing to consider the laws of every single country, we conclude that:

 

1. In many countries, joint copyright owners cannot use or exploit the jointly owned copyright without the consent of the other joint owners, but for their US copyright of the same copyright work they can, without the need for consent

2. In many countries, they cannot grant a non-exclusive license of the copyright work without the need for consent, but for their US copyright of the same copyright work they can, without the need for consent

3. In many countries, including the US, they cannot grant an exclusive license without prior consent.

 

The result is that the same joint owners, in relation to the same copyright work, have quite different rights over their jointly owned copyright work, depending on the country.

 

This impedes the grant of worldwide rights, which may be needed, for example, if commercialising software.

 

 

Providing for joint ownership contractually – but not addressing everything

 

Sometimes a collaboration agreement specifies that ownership of the IP arising from the collaboration will be joint, with nothing further provided.

 

That will often be insufficient. Without addressing the respective rights of the joint owners, they will have quite different rights or prohibitions depending on the country in which the rights are sought to be exercised. Certainly, they cannot exercise rights worldwide without the consent of the other joint owners.

 

The collaboration agreement, rather than being silent, should expressly provide for the joint owners’ rights.

 

 

When should there be (or not be) joint ownership of copyright?

 

As a rule, joint ownership of copyright is merited only when the staff of collaborators jointly author or create a copyright work.

 

Just as ownership of patents normally follows inventorship, so too does the ownership of copyright follow authorship.

 

If staff of two organisations jointly author, joint ownership is fair.

 

But if only one organisation’s staff author, joint ownership will be unfair to that organisation.

 

Joint ownership is sometimes sought (by a company) or conceded (by a research organisation) in the mistaken belief that it confers equal rights. But as we’ve seen, joint ownership does not, in practice, result in equal rights.

 

That is particularly so when one joint owner has the ability to use or exploit (such as a company), and the other joint owner does not (such as a research organisation).

 

This is why joint ownership always disadvantages a research organisation joint owner.

 

If authorship is by a single organisation, that organisation should solely own the copyright. A company that has funded or sponsored the research but not authored should have negotiated rights over the research outcomes, not ownership.

 

 

What should copyright joint owners do?

 

If there is truly joint authorship of a copyright work between two organisations, and one of them is a company, it will be difficult to avoid ownership being other than joint.

 

Rather than leaving unharmonised joint ownership laws to operate, which will disadvantage the research organisation's joint owner, the joint owners need to contractually agree on their rights and obligations over the jointly owned copyright, operating in the same way across all countries.

 

Some ways of dealing with joint ownership contractually:

 

1.  Contractually agree that no joint owner may exercise any rights, unless they exercise those rights together, or consent.

 

The effect is to apply the UK/Australia/New Zealand/Singapore/Hong Kong model to all countries, including the US, and other countries whose joint ownership laws follow the US

 

Where the joint owners are universities or other research organisations, they customarily enter into an Inter-Institutional Agreement, normally without controversy.

 

This first option is therefore common between research organisation joint owners.

 

2.  Contractually agree that the US model will operate worldwide, for all countries where copyright subsists.

 

Choosing this model makes the joint owners competitors. Each joint owner will be able to exploit the copyright work without consent and without accounting for or sharing profits.

 

The result is not dissimilar to joint ownership of patents: A joint owner without the capacity to exploit, such as a university or research organisation, will be disadvantaged when the other joint owner has the capacity, such as a company. See Joint Ownership of Patents Does Not Result in Joint Benefits.

 

3.  Contractually agree that each joint owner may use or exploit, and license, both non-exclusively and exclusively, without the need for consent, and without the obligation to account for profits or to pay a royalty.

 

This will put the joint owners on a level playing field, with a research organisation, while unable to use or exploit, able to license, without a company joint owner’s consent.

 

4.  One joint owner granting a license to the other joint owner.

 

Anticipating that the license may be terminated before copyright expires, agreement additionally should be recorded on how to regulate the joint ownership relationship in the event of termination, that is, 1, 2 or 3 above.

 

5.  One joint owner granting to the other an option to negotiate a license.

 

Similarly, anticipating that the option may not be exercised, or a license may not be granted, or a granted license may be terminated, agreement additionally should be recorded on how to regulate the joint ownership relationship in each case, that is, 1, 2 or 3 above.

 

You may be interested in other issues of IP Bits dealing with IP ownership:

​

• Making the Ownership of IP Less Controversial

• Royalty Traps #2: A Regretted Joint Ownership Concession

• Royalty Traps #1: A Tale of Two Licenses: A Regretted Concession of IP Ownership

• Negotiating Joint Ownership Proportions

• Joint Ownership of Patents Does Not Result in Joint Benefits

• Solving IP Ownership Controversies in Collaborations

• Are University IP Policies Legally Binding?

• Who Should Own the New IP under an MTA?

• Controversies about the Rights to Confer on a Research Sponsor

• Negotiating IP Ownership in Research Agreements #1

• Negotiating IP Ownership in Research Agreements #2

• "I Don't Give You Permission to Sell my IP" said the Student

• Don't Assume You Own the IP - Visiting Scientists Part 1

• Don't Assume You Own the IP - Visiting Scientists Part 2

 

 

Footnotes

 

1. This is the common law in the United Kingdom: Cescinsky v George Routledge & Sons Ltd [1916] 2 KB 325, Powell v Head (1879) 12 Ch. D. 686 which have been followed in Australia: Seven Network v TCN Channel Nine (2005) 222 ALR 569 and is likely to be followed in other countries whose legal systems are similarly derived from the UK, including New Zealand, Singapore, and Hong Kong.

2. Malaysia - section 27 of the Copyright Act 1987 permits a copyright joint owner to grant a license without the need for consent

3. Philippines – Articles 178.2 and 180.3 of RA 8293 Intellectual Property Code, and Article 486 of RA 386 Civil Code of The Philippines

4. India - Cescinsky v George Routledge & Sons Ltd [1916] 2 KB 325 and Powell v Head (1879) 12 Ch. D. 686 followed in Goldmines Telefilms Pvt.Ltd vs Reliance Big Entertainment Pvt.Ltd, AIR 2015 (NOC) 158 (BOM.), 2014 (6) ABR 245

5. Oddo v. Ries 743 F.2d 630 (9th Cir. 1984)

6. Shirley Goodman v. Lee 78 F.3d 1007 (5th Cir. 1996); Corbello v. DeVito 832 F. Supp. 2d 1231 (D. Nev. 2011)

7. Davis v. Blige, 505 F. 3d 90 – (2nd Cir. 2007).

 

​

​

​

 

​

 

​

​

​