Owner of the Copyright

Let me cut to the chase than going about as to what is Copyright (of course, more on the fundamentals of Copyright and the Indian Copyright Act can be found here). Copyright is quite a complicated IP right and the determination of who the author and owner of work become crucial to enjoy the benefits bestowed by Copyright per se.

Owner of Copyright and Section 17

For clarity and comprehension, thankfully, the Indian Copyright Act provides who the Author and Owner are, with respect to any work. It uncomplicates matters by simply putting that the Author of the work is the First Owner of the Copyright (subject to provisions of course). While in most cases, a clear determination is possible, there are circumstances when the logic has to be reconsidered; example when a work (in which copyright exists) is prepared at the instance of another person. There appears to be a very thin hazy line between author and owner in such cases.

For instance, where a work is made by an employee at the instance of an employer, so who owns the work then? Section 17(c) of the Copyright Act does provide for such scenarios where a (copyrightable)work is created by an employee(author), in the course of employment, then the employer shall be the owner of the work unless there is an agreement to the contrary. The important criterion to be noted in this case is the fact that the work is made in the course of employment and under a contract of service and the condition that no agreement to the contrary exists.

So in many cases, it became the duty of the Courts to delve deep into the matters of whether the relationship between the employer-employee was indeed a contract of service and whether the said work was made in the course of the employment and if there had been any agreements which spelt out terms of ownership of the work.

What do the Precedents say?

One of the most popular cases in respect of Section 17 is the V.T. Thomas And Ors. vs Malayala Manorama Co. Ltd (AIR 1989 Ker 49) where the Kerala High Court restrained the popular Manorama publishing company from claiming ownership over cartoon characters created by an artist (popularly known as Toms) and regularly used in the Manorama publications. In this specific case, the artist had created the characters before joining Manorama and after leaving the latter, the suit came about with a dispute about the artist using the cartoons created after leaving employment. The Court clearly laid down that though Section 17 (c) did provide that where work is created by the employee during employment and during such time, the publishing house did have ownership, in the present case, the work was not created during Tom’s time in Manorama but prior to that and though the cartoons were used in the Manorama publications during Tom’s employment, once Tom’s employment ended with Manorama, he was free to use the cartoons he created, on grounds that a) he was the author to begin with, which made him the first owner b) his obligations under Section 17(c) though present during the employment, ceased to exist once he left employment.

Even more microscopic analysis was required to be made in the case of Neetu Singh vs Rajiv Saumitra & Ors where the terms of the employment agreement had to be examined to determine if the work was owned by the author or employer.

Another interesting circumstance is when you are a consultant and the work gets performed from such a contract. A case with such shades has been discussed in detail here where copyright in respect of work (software) commissioned was decided. In this case, the vendor of a computer software alleged infringement of copyright in the software developed by it but commissioned by the alleged infringer. The Court, however, ruled in favour of the Party who commissioned the work on the basis of a series of tests (control test, organization tests etc)invoked to determine ownership and most importantly, the terms of an MOU entered into by the Parties were also analyzed to arrive at the decision.

The judgement was interesting in terms of the fact that a) it concerned computer software b) it was not crystal clear that there was a Contract of Service (and not Contract for service) and the Court decided if it was a “Contract of Service” in the light of certain factors(tests).

Determining Contract of Service and Copyright Ownership

A contract of service is understandably different from a Contract for service and it becomes all the more important to ponder the entire facts in the event of a copyright dispute in such cases. While Section 17 (a) and (b) lays down specificities as to what kind of work is involved and what circumstance is involved and Section 17(c) acts like a residual clause supposedly covering all the remaining scenarios, the fact that all the three provisions predominantly address “work made in the course of the author’s employment under a contract of service or apprenticeship” as if such situations are straightforward is bemusing.

The Courts, over the years, have striven to dissect each case into several segments and adopted and used several tests to determine the question of “contract of service” and “in the “course of employment.” As is apparent, we heavily depend upon judicial precedents and Court’s interpretations after considering such tests (in each case) to decide upon ownership.

Interestingly The US Copyright Law has a similar (yet simpler) provision where it simply lays down that “ in cases of works made for hire” the person for whom the work was prepared is the owner of the work and the law defines “works for hire” for good measure which also provides the way in which a work created by an independent contractor can still come under the purview of “work for hire” and copyright thus vest in the person at whose behest it was created.

No straitjacket formula

Coming back to our own Section 17 of the Indian Copyright Act, it is hence a very interesting and in fact been a crucial provision for, in many cases of infringement, it is the ownership which comes into question and there has arisen a necessity to analyse it along with available precedents.

There is no hard and fast rule here, as the precedents clearly prove. In fact, there is no definitive list of factors/tests which the Courts provide as the ONLY parameters to be considered though the parameters which have been so far used certainly appear integral to the decision. Having said that, it is only safe to be fully aware of what we are getting into and define the relationship (in writing) lest we end up in a copyright tussle!