The Facts

In a case decided on 8 January 2009, Robert James Walton, a federal prisoner serving a 17-year sentence for bank robbery, was unsuccessful in his attempt to sue the US government for copyright infringement.

During his sentence, Mr Walton was assigned to work for Federal Prison Industries Inc. (FPI), a corporation wholly-owned by the US government that produces various products for federal government. Mr Walton's tasks involved designing desk-blotter calendars for the years 2000 - 2002. FPI produced a substantial number of these calendars, which were sold to both private purchasers and to the government's General Services Agency, which distributed them to various government agencies.

Mr Walton argued that the FPI had infringed his copyright and that he was entitled to an account for $50,000 of profits made on the calendars as compensation. However, the US government argued that there was no jurisdiction for the court to find that there had been an infringement as under US copyright law those in "employment or service of the United States" cannot enforce copyright against the US government.

Mr Walton argued that prisoners are not "employees" of the United States and that the words employment and service could be used interchangeably in this context. However, the court disagreed, stating that " Working for someone and under his direction may constitute being in that person's service even though the relationship does not amount to the typical common-law master-servant relationship that the term "employment" ordinarily describes." The court found that Mr Walton was in "service of the United States" as he was paid compensation for the work ($1.25 per hour), the work was performed under the direction of the US government, supervised by government employees and using computers provided by the United States. Therefore, he was unable to enforce his copyright.

Copyright in Works of Employees

Mr Walton's case raises some interesting issues in relating to the ownership of copyright in material where a third party is paying for the creation of the work.

In the UK, the author of a written, theatrical, musical or artistic work or a film is defined as the person who creates the work. Generally the first owner of copyright will be the author.

An exception to this rule is where an employee creates a copyright work. In this situation, copyright will vest in the employer where the work is produced in the normal course of the employee's employment. The employment contract may specify the extent to which intellectual property will vest in the employer. For example, a contract might state that IP created using the employer's materials and/or know-how, during working hours will vest in the employer. "In the course of employment" is not defined in the Copyright, Designs and Patents Act 1988 and court decisions have turned on the distinction between a "contract of service" (an ongoing employment relationship) and "contracts for services".

A contract for services is where an independent contractor is commissioned to do a particular piece of work, for example, an artist commissioned to paint a portrait. In this scenario, the 1988 Act provides that the contractor and not the commissioner will be the owner of copyright in any material produced. However, this rule is subject to written agreement between the parties to the contrary. For example, the creator may sign a written assignment to transfer ownership of the copyright to the commissioner, or may grant a licence of the copyright to the commissioner.

Conclusion

Despite the differences between US and UK law, the case highlights the importance of entering into a written agreement setting out who will be the owner of intellectual property in material which the author is creating for a third party. Without advance agreement, the law can result in unintended consequences for the parties concerned and the lengthy litigation that can ensue to resolve these, means that in such circumstances, it is much better to be safe than sorry.