Ownership Of Copyright Under The New Copyright Act – The Standpoint Of An Employee And Independent Contractor

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KELSON EMMANUEL 1
Kelson Emmanuel
Contributor

 

 

 

 

 

  1. INTRODUCTION

Recently, the Copyright Bill, 2022 (now the “Copyright Act, 2022”) was signed into law by the President of the Federal Republic of Nigeria, Muhammadu Buhari[1]. The Copyright Act, 2022 (the “Act”) repealed and replaced the Copyright Act, 1988[2] as the major legal framework for regulation of copyright in Nigeria. Some provisions of the Act as they relate to ownership of copyright will be examined in this article.

Copyright as the exclusive right of an owner of a creative work entitles the owner to prohibit or authorize the doing of certain acts concerning his work. These acts include reproduction, performance, distribution, adaptation, publication and other forms of use or exploitation of the work.[3] For a work to be eligible for copyright protection, some effort must have been expended to make it original[4] and it must have been expressed in a definite medium of expression.[5] Consequently, an idea, howsoever creative and exceptional, does not enjoy copyright protection unless it has been expressed or fixed in a definite medium.[6] Therefore, a work that fulfils the twin requirements of originality and expression or fixation automatically enjoys copyright protection without being subjected to any formality like registration.[7]

The Act identifies different categories of protectable works, namely: literary works, artistic works, musical works, sound recordings, audiovisual works, and broadcasts.[8] One of the principal aims of a person who creates a work is to benefit from commercial exploitation of the work which embodies his intellectual exertion and creativity. The law understands and protects that aim.[9] However, there are instances when it becomes unclear in whom the copyright in a work should vest. For example, when a person employed by another creates a work while under that employment, establishing whether the copyright in the work should vest in the employer or employee becomes an imprecise quest. The impreciseness arises because an employer, whose resources may have been expended to create the work, may feel entitled to the benefits that accrue from commercial exploitation of such work due to the economic rights vested in the owner of the copyright in the work. Such entitlement is logical because ideas are not protected until they are expressed in a definite medium. Thus, the person who financed or facilitated the expression materially should be entitled to at least a part of the copyright. The same issue will be faced where an independent contractor[10] is commissioned or contracted to create a work. Notwithstanding the logicality of the employer’s or commissioner’s apparent well-founded entitlement to the copyright, the Act and the copyright laws of other jurisdictions make important provisions that govern such cases which will be discussed in this article.

  1. FIRST OWNERSHIP OF COPYRIGHT

According to section 28(1) of the Act, copyright shall initially vest in the author[11] unless an agreement provides otherwise. The use of the word “initially” signifies that the author is the prima facie owner of the copyright in any work created by him. Therefore, the Act takes a default pro-author stance subject to any contract that may be in existence. The issue of contract arises when there are at least two entities involved. A ready illustration of this is the employer-employee relationship. If a person employed under a contract of service creates a copyrightable work, ownership of the copyright in that work will vest in that person unless the contract provides differently. Greater significance is attached to an employee’s industry and creativity than the employer’s entrepreneurship. Therefore, an employer who intends to own the copyright in a work created by his employee must ensure that their contract provides in those terms. At this point, it is important to consider the case of Joseph Ikhuoria v. Campaign Services & Anor.[12]

The case, although decided under the Copyright Act of 1970,[13] is relevant to cases where there is a provision in a contract of employment regarding ownership of the copyright in works created by an employee. The plaintiff (an employee of the 1st defendant) claimed ownership of the copyright in works created by him in the course of employment by the 1st defendant. However, the contract of employment vested in the 1st defendant ownership of the copyright in works created or prepared for advertisement by the plaintiff. The court, relying on the terms of the contract, held that the defendant was the owner of the copyright in the plaintiff’s works. Thus, significant importance is accorded the intentions of the parties as captured in their contract. The same position will obtain when an independent contractor or freelancer is commissioned to create a work under a contract for service.[14]

To illustrate, suppose a freelance writer is commissioned by a company to write articles for publication under a contract for service, ownership of the copyright in the articles will vest in the writer unless the contract provides otherwise. Thus, if the contract vests ownership of the copyright in the company, then the writer loses any claims to ownership of the copyright in the article. Thus, the importance of contracts in an arrangement like this cannot be overstated. In determining the intentions and obligations between parties, the court places heavy reliance on any contract between the parties. In Nika Fishing Co. Ltd. v. Lavina Corporation,[15] the Supreme Court held that parties to a contract have the freedom to determine their terms and no other person, not even the court, can determine the terms of a contract between parties thereto. On the back of this, it becomes a necessity for parties in commercial relationships to properly delineate their intentions and obligations in a contract.

  1. EXTENT OF EXCLUSIVITY OF OWNERSHIP

Black’s Law Dictionary defines ‘exclusive’ as “shutting out; debarring from interference or participation; vested in one person alone”.[16] Therefore, copyright as an exclusive right of the owner, is vested in the owner alone and cannot be exercised by another without authorization of the owner. Others are shut out or debarred from interfering or participating in the exercise of the copyright. However, it is not in all instances that copyright is exclusive. The Act elaborately provides for instances where the copyright in a work may be exercised by a person other than the owner albeit subject to limitations and conditions.[17] The facet of non-exclusivity of copyright that will be considered herein is as it relates to commissioned photographs, portraits (drawn or painted) and audiovisual works.

According to section 28(3) of the Act, where a person for private and domestic purposes commissions another to take a photograph, paint or draw a portrait or make an audiovisual work, the commissioner will have a non-exclusive licence, subject to any agreement, to exploit the work for non-commercial purposes as well as a right to restrain the publication, exhibition, broadcasting, communication, and distribution of the work to the public. Therefore, although the copyright in the works mentioned above vests in the author, the person who commissioned the work is conferred with some rights which limit the exercise of the exclusive right of the author.

To illustrate, suppose a photographer is commissioned to take wedding photographs. The commissioner will have a non-exclusive license to use the photographs for non-commercial purposes as well as a right to limit public access to the photographs. This means that the photographer (author) as the copyright owner cannot exclusively license the copyright in the photograph to others. Any license granted by the photographer will be subject to the commissioner’s non-exclusive license and the right to restrain public access. However, the parties can modify their respective rights via contract. Thus, where the commissioner relinquishes his rights through a contract, the photographer will be within his rights to exploit the copyright in the photographs as he desires. It is important to note that this exception to the exclusive rights of an author of a commissioned photograph, portrait (drawn or painted) or an audio-visual work only applies to domestic and private settings. By the tenor of section 28(3) of the Act, where the work is commissioned for commercial purposes, the exception will not apply.

  1. OWNERSHIP OF COPYRIGHT BY THE GOVERNMENT

A person employed by a government may create a copyrightable work in the course of his employment. Also, an independent contractor may be commissioned to create copyrightable work by a government under a contract for service. The Act vests ownership of the copyright in such works in the government subject to any agreement between the parties. Section 28(2) of the Act provides as follows:

“(2)   Where a person in the absence of an agreement to the contrary creates a work under a contract for services, or in the course of employment by a Government, a Ministry, Department or Agency of a government or a prescribed international or inter-governmental organization, the copyright in that work shall vest in that Government, Ministry, Department, Agency, prescribed international or inter-governmental organization”.

The above provision represents a shift from the pro-author stance of the Act. The scales tip in favor of governmental interest at the expense of the author. A possible rationale for this shift lies in the fact that if the authors of such works are left to control the copyright, it may lead to dire consequences especially where the work is sensitive. For example, if a person employed by a government to write reports on sensitive issues is left with the control of the copyright in such works, it may lead to the exposure of such sensitive materials to the public. Thus, more emphasis is placed on maintaining public order than on protecting the author’s interest. However, the author is not left without recourse as the provision is modifiable by a contract between the parties. Consequently, copyright in a work created in the course of employment by or under a contract for services with a government may well vest in the author if the contract between the parties provides the same.

It is important to note that the issue of course of employment arises when the contract is silent on ownership of copyright. If the contract vests ownership in the employee, then it is immaterial whether the work was created in the course of employment. When the contract is silent on the issue of ownership, by the tenor of section 28(2), the copyright will vest in the government. In this instance, an important hurdle a government must overcome to claim ownership of the copyright in a work created by its employee is proving that the work was created in the course of employment.[18] What is the litmus test for determining whether a work was created in the course of employment? In Bryne v. Statist Co,[19] the court established the following factors:

  • is the work in question the type of work the employee was employed to carry out considering the nature, terms of employment and work specification?[20]
  • was the work created during the employer’s time and on his premises?
  • did the making of the work involve the use of facilities or materials provided by the employer?
  • was the work done at the request of, or for the benefit of the employer?

Although no question is more important than the other, however, an affirmative answer to most of the questions will likely lead to a finding that the work in dispute was created in the course of employment. Where such a finding is made, the copyright will vest in the government. In other cases, the author retains ownership. The provisions of section 28(2) also apply to Ministries, Departments or Agencies (MDAs) of a government or prescribed international or inter-governmental organizations.

Having seen the stance of Nigerian law, let us consider the position of the law in other jurisdictions.

4.1. UNITED KINGDOM

Copyright in the United Kingdom is governed by the Copyright, Designs and Patents Act[21],  (the “CDPA”). Section 11 of the CDPA provides as follows:

  • “The author of a work is the first owner of any copyright in it, subject to the following provisions.
  • Where a literary, dramatic, musical or artistic work, or a film, is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to any agreement to the contrary.
  • This section does not apply to Crown copyright or Parliamentary copyright (see sections 163 and 165) or to copyright which subsists by virtue of section 168 (copyright of certain international organisations).”

From the above provisions, ownership of copyright vests in the author of the work as a general rule. Instances where the general rule will not apply, are as follows:

  • where a literary, dramatic, musical or artistic work or a film is made in the course of employment by an employee, ownership of the copyright will vest in the employer unless their agreement provides otherwise.[22] Thus, where the work was not made in the course of employment, ownership of the copyright will vest in the author. This was the decision in MEI Fields Designs Ltd v Saffron Cards and Gifts Ltd.[23]
  • where a work is made by Her Majesty or by a servant of the crown in the course of his duties, ownership of the copyright vests in the Her Majesty.[24]
  • where a work is made by or under the direction or control of any of the British Parliamentary houses, copyright in such work vests in the house by or under whose direction or control the work was made. Where the direction came from both houses, the copyright will vest in both houses as joint owners.[25]
  • where an original literary, dramatic, musical or artistic work is made by an employee or officer of, or is published by an international organization to which the section applies, first ownership of copyright in such works shall vest in that international organization.[26]

For works created by an independent contractor under a contract for service, recourse will be made to section 11(1) which vests ownership of the copyright in the independent contractor. However, this is modifiable by a contract.

4.2. UNITED STATES OF AMERICA

The legal framework for copyright protection in the United States is the Copyright Laws of the United States and Related Laws contained in Title 17 of the United States Code[27] (the “Code”). The position of the Code as regards ownership of the copyright in a work made by an employee in the course of employment and ownership of the copyright in a commissioned work is stipulated in Section 201 as follows:

  • “Initial Ownership. —Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are co-owners of the copyright in the work.
  • Works Made for Hire. —In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.”

Regarding the meaning of “works made for hire”, Section 101 provides as follows:

  • a work prepared by an employee within the scope of his or her employment; or
  • a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.”

An analysis of the provisions above will reveal the following:

  • Apart from work made by an employee in the course of employment, work made for hire also refers to work made by an independent contractor in certain instances provided that the parties agree that such work shall be treated as work made for hire.[28]
  • ownership of the copyright in a work made for hire vests in the employer or commissioner, as the case may be, unless the contract provides otherwise.
  • It could be argued, regarding works made by an independent contractor, that if the work does not fall within the categories of work stipulated in Section 101(2), then the copyright in such works ought to vest in the independent contractor. This was the position of the United States Supreme Court in Community for Creative Non-violence v. Reid.[29]
  1. CONCLUSION

This article has considered the provisions of the new Nigerian Copyright Act as it relates to ownership of copyright in works made by a person while in service for another. A succinct overview of the legal provisions in other jurisdictions was also featured. In resolving disputes arising from contractual relationships, the role of the court is usually centred on interpreting the intentions of the parties as stipulated in their contract. Consequently, it is important for employers and persons looking to hire independent contractors to include precise terms that provide for ownership of the copyright in works made by such employee or independent contractor as the case maybe. Thus, if it is the intention of the employer or a person commissioning a work to own copyright in such work, the contract between the parties must stipulate accordingly. This will circumvent the application of the provisions of the law which mostly favours the employee and independent contractor as far as the Nigerian Copyright regime is concerned.

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For further information on this article and area of law, please contact Kelson Emmanuel at S.P.A. Ajibade & Co., Lagos by

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[1]        See, https://www.premiumtimesng.com/news/more-news/589818-buhari-signs-copyright-medical- laboratory-science-technology-bills-into-laws.html accessed on April 9, 2023

[2]        Cap C28 LFN, 2004.

[3]        Adejoke O. Oyewunmi, Nigerian Law of Intellectual Property, University of Lagos Press, 2015 at p. 6.

[4]        This entails that the work in addition to being an independent creation of the author also possesses at least a minimal degree of creativity. See, https://copyright.uslegal.com/originality-in-copyright/ accessed on March 23, 2023.

[5]        Section 2(2) of the Copyright Act, 2022.

[6]        The requirement for expression in a definite medium emphasizes the need for the medium of expression to be accessible to others. This means that the work ideally should be in a medium from where it can be referenced in the future. A perfect example of a definite medium would be a book or a film. See https://www.law.cornell.edu/wex/fixed_in_a_tangible_medium_of_expression accessed on March 23, 2023. Also, putting the work in a digital/electronic medium like a photograph or posting the work on a social media platform subject to the terms and conditions of that platform will satisfy the requirement of fixation in a definite medium.

[7]        Section 3(4) of the Copyright Act, 2022.

[8]        Section 2(1) of the Copyright Act, 2022.

[9]        Section 1(a) of the Copyright Act, 2022.

[10]       An independent contractor, otherwise known as a freelancer, is a self-employed person or entity contracted to perform work for or provide services to another entity as a non-employee. See https://www.investopedia.com/terms/i/independent-contractor.asp accessed on March 27.

[11]       The author of a work is the person who created the work. To find out what this means as regards the different categories of work recognised by the Act, see section 108 of the Copyright Act, 2022.

[12]       [1980] F.H.C.R. 308.

[13]       The provision of the Copyright Act of 1970 is the exact opposite of what is obtainable under the extant Act. Under the 1970 Act, ownership of the copyright in works made in the course of employment vested in the employer unless the contract of employment provided otherwise.

[14]       A distinction exists between a contract of service and a contract for service. A contract of service is an agreement between an employer and an employee. In a contract for service, an independent contractor, such as a self-employed person or vendor, is engaged for a fee to carry out an assignment or project. See, https://www.linkedin.com/pulse/legal-treatment-contracts-service-employment-michael-dugeri/ accessed March 25, 2023. The Supreme Court in Shena Security Co. Ltd v. Afropak (Nig.) Ltd & Ors [2008] 18 NWLR (Pt. 1118) 77 laid down the factors that should guide courts in determining whether a contract is one for service or of service.

[15]       [2008] 16 NWLR (Pt. 1114) at p. 543.

[16]       See, Bryan Garner and Henry Campbell Black, Black’s Law Dictionary, 9th ed. St. Paul, MN, West, 2009 at p. 673.

[17]       See, Part III of the Act.

[18]       This will also apply to employers other than governments.

[19]       [1914] 1 KB 622, cited in Adejoke O. Oyewunmi, Nigerian Law of Intellectual Property, University of Lagos Press, 2015 p. 67.

[20]       In other words, is the work part of the employee’s scope of employment?

[21]      1988, available at https://www.legislation.gov.uk/ukpga/1988/48/contents accessed 17th April   2023.

[22]       Note the exclusion of broadcasts and sound recordings. The implication is that copyright in sound recordings and broadcasts made by an employee in the course of employment vests in the employee subject to the agreement of the parties.

[23]       [2018] EWHC 1332.

[24]       Section 163 of the Copyright, Designs and Patents Act, 1988. Such copyright is known as crown copyright whether or not it has been assigned to another person.

[25]       See section 165 of Copyright, Designs and Patents Act, 1988.

[26]       See section 168 of Copyright, Designs and Patents Act, 1988.

[27]       17 U.S.C., 1976, available at: https://www.copyright.gov/title17/#:~:text=The%20United%20States%20copyright%20law,553%2C%2090%20Stat.%202541 accessed on 17th April 2023.

[28]       Work made by a commissioned worker will be considered as work made for hire if it falls under any of the following categories: a contribution to a collective work, part of a motion picture or other audiovisual work, a translation, a supplementary work, a compilation, an instructional text, a test or answer material for a text, and an atlas.

[29]       [1989] 490 US 730.

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