02 October 2015 #Commercial
Imagine you had a genius idea for a computer software programme, like an app (more officially known as an application!), and then commissioned a developer to create a software programme. For one reason or another, the ownership of the copyright (generally the main intellectual property right to software) comes into question, and you have to determine who owns it. Before we move any further, we should probably explain that copyright aims to protect the form of expression of your idea (in this case, the software) and not your idea, per se.
So what do you do where you have no written proof (e.g. a contract) to give you a helping hand; how do you decide who owns the copyright to the software? Is it you, the one who bore the idea for its creation? Or the person who realised the idea, brought it to life? Or some other third party?
In fact, various types of copyright to software can be owned by various people. If the developer used other sources, such open-source (which is common), to create the software, the developer cannot really transfer to you the copyright to those elements.
Aside from any copyright owned by third parties, in the absence of an agreement that states otherwise, copyright will, by default, belong to the person who created it. Although, in an employee/employer relationship, there is a presumption that the employer owns the copyright, you will still need a carefully drafted employment contract to specifically exclude the employee’s rights to be named as the author on all reproductions of the work, object to certain alterations and derogatory treatments. When it comes to commissioning a developer, however, only a carefully drafted software development agreement can protect your position, as the default position will not give you any rights in relation to copyright.
All may still not be lost and the law can be of assistance in moving away from the default position and giving you what you want, which is, essentially, ownership of the copyright. If, for example, the software was developed only for you, based on your ideas, for you to use to the exclusion of others, if it is the foundation of your commercial activities, then you may well be in a position to show that you own the copyright. There are no hard and fast rules as to how the law might help in this regard, it is all about demonstrating the above to the best of your ability. You should be reminded, however, that seeking help from the law will inherently mean going to court, which can involve a lengthy and costly process.
Even if the ownership of copyright to your software has not been put into question, you can still be proactive and ask your consultant to sign a letter confirming the transfer of all intellectual property rights relating to its development. The form and content of the letter should not need to be too complicated, but it might be a good idea to require your consultant to sign the letter as a deed, as no consideration (i.e. payment in return for their signature) would need to exchange hands. Not to mention that you could benefit from 12 years’ protection for any breach of the terms, as opposed to a 6 year period if you were to deal with this by way of a regular contract.
In the spirit of getting things done swiftly, many of us will enter into business relationships and do away with formalities and tedious paperwork. However, you might find yourself in a pickle and having to go to court. It is always best practice to put things in writing first, and, preferably, in the form of a contract, to minimise risks in the event of a future dispute. You should always seek legal advice about your particular circumstances and get lawyers involved in drafting your contracts to ensure that all the appropriate clauses are included and protect your position as far as possible.