Protecting, managing IP in best interest of a company
Employers, workers must make sure rights to IP are specified in an agreement
According to the World Intellectual Property Organization, Intellectual Property (IP) refers to creations of the mind, such as inventions, literary and artistic works, designs and symbols, names and images used in commerce. IP is usually protected by copyright, patent, trademark and trade secret laws, which allow businesses to monetize from their inventions or creations. While IP can be intangible property, analogous to physical property, IP can be sold or licensed.
Protecting and managing IP is very important to all companies, whether new, old, large or small because if IP rights are not properly managed it can cause significant loss to a company’s revenues and profits if their rights are infringed on and/or another individual or entity has a superior claim to the “company’s” IP rights. Aside from registering IP with the appropriate government agency, there are some basic areas that businesses should pay close attention to in their daily business operations to protect their IP. In this column, I will focus on works created by employees and/or independent consultants.
Work for Hire
In the copyright law of the United States, a work made for hire (work for hire or WFH) is a work subject to copyright that is created by an employee as part of his or her job, or some limited types of works for which all parties agree in writing to the WFH designation. The work for hire concept is very important to a business to assure that it protects the investments (money, time, resources, etc.) it contributes towards employees and/or consultants to create new ideas and products. The rights of these works should stay with the company, regardless of what happens to the employee/ consultant. Article 25 in Law No. 22 of 2016 Regarding the Rights of Copyright and Related Rights, has a similar framework to the USA WFH law, where if the artistic work was initiated for some else the copyright shall belong to the innovating author unless otherwise agreed upon in writing. Further, if the worker invented the work during working hours or while utilizing company resources, the copyright shall belong to the employer. If the worker did not create the work during working hours or utilized company resources, the work will belong to the worker, unless otherwise agreed in writing.
The key language in this law is “unless otherwise agreed in writing” because it encourages employers and workers to make sure rights to IP are specified in an agreement. An employer should never just rely on the law alone to protect its rights and should always have evidence of express ownership in an agreement with the employer.
All employment and independent contractor agreements should contain language where the worker assigns any and all rights to any work defined as artistic under the Kuwaiti law, created while performing services for the company. In addition to an assignment of rights, there should be language expressing that any work created, while the worker was performing services for the company, shall be owned by the company. There should be an express grant of rights as well as an assignment of rights to make sure the company never has an issue with its claim for ownership to any works created by the employee/consultant.
najmahbrown@aladwanilawfirm.com