A recent High Court case provides a reminder about the ownership of IP rights in software in an employment context.
A quick recap: software is protected by copyright. Usually, the software developer will own the copyright in the software unless he is employed, in which case his employer will own it. Copyright protects the source code; it does not protect the ideas behind the software.
In Burrows v Smith, a computer games designer failed in his claims for copyright infringement and breach of confidence against his former employer.
Mr Burrows was employed as a senior games designer for Circle Studio Ltd when he proposed a game called 'Traktrix' (although he had been working on the idea for years before). Circle liked the idea and the proposal was developed into a design document but the game had to be substantially revised after receiving feedback from distributors. Mr Burrows was involved in the development of the game at both stages.
In using the game, the High Court held that there had been no breach of confidence by Circle because in proposing an idea for a game to his employer, Mr Burrows was doing exactly what he was being paid to do as a games designer. There was also no evidence to show that Circle knew Mr Burrows had been working on the game prior to his employment.
Mr Burrows alleged copyright infringement on the grounds that Circle's design document copied significant sections of an original document setting out the game concept that he had produced before working for Circle. The Court rejected the claim because no-one at Circle had ever seen this original document, and held that the only reason the design document would have incorporated parts of the original document was because Mr Burrows had incorporated those parts himself.
The result is not surprising in these circumstances, but there are a couple of other questions that weren't specifically covered:
- What if Circle had known that Mr Burrows had been working on the idea prior to his employment?
Copyright does not protect an idea. The fact that Mr Burrows had the idea for the game before meeting Circle is irrelevant. If he contributed the idea as part of his employment, Circle would be entitled to use it and to write code that implements that idea. Even if Mr Burrows didn't give Circle the idea as part of his job, if they came across it by some other means then, barring some form of confidentiality arrangement between Circle and Mr Burrows, Circle would be entitled to use it.
If Mr Burrows contributed code for the game that he had written prior to joining Circle, then he would need to look at his employment contract to check what happens to the rights in that game. In the absence of an assignment of rights to the company, the likelihood is that the company would have some form of (potentially very broad) licence to use the code.
- What if Mr Burrows wrote the game whilst employed by Circle but wholly in his own time?
Under statute, copyright is only automatically owned by an employer if it is created by the employee in the course of his employment. On that basis, code written in an employee's spare time and outside of the scope of what he is doing for his job would belong to the developer. However, many employment contracts (particularly for jobs that are centred around the development of IP for the company to exploit - such as software development) include the transfer of ownership to the company in much broader cases. This might capture any code developed that relates to the business of the company (eg. any computer games), whether written entirely at home and not using company resources.
The moral for both employers and employees, then, is to check the IP clauses in your contracts very carefully.
