the employer becomes the owner of the copyright. For the employ-er
to own the copyright of the work created by their employees,
the following three criteria must be met:
1. The work must be created under a “contract of services”;
2. The work must be created by an employee, rather than an
independent contractor; and
3. The work must be created in the course of the employee’s
employment, i.e., as part of the employee’s duties under the
contract of services.
While the first two requirements are relatively straightfor-ward,
the third requirement is ambiguous. It is not entirely clear
what the “course of employment” means, especially given the shift-ing
landscape of work environments. Generally, “in the course of
employment” means the employee is performing duties or tasks
assigned to them by the employer, while using the employer’s re-sources
and equipment and during their employment hours.
However, with more people working from home, it becomes more
difficult to determine what is created in the course of employment,
and what is created with the employee’s own resources or during
their own time. It should be noted that even if the above three cri-teria
are met, employers are not automatically deemed owners of
copyright if there is an agreement in place that indicates that the
employee retains ownership.
The Patent Act is not as accommodating as the Copyright Act,
in that it does not offer any guidance on the ownership of pat-ent
rights in an employer-employee context. As such, employers
should be aware of how courts have treated this concept and the
general common law rules.
A patent is an exclusive right granted for an invention. As many
inventions are created by employees under the course of employ-ment,
disputes around the ownership of patents are also very
common in the employer-employee context. Generally, the rule
of thumb when it comes to patents is that an employee will own
legal words
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14 ❚ NOVEMBER 2017 ❚ HR PROFESSIONAL