A recent case from the England and Wales Patents County Court has brought the issue of implied licences and copyright into the limelight.

Background

Dr Susan Wilkinson is the creator of the "Wilkinson Variant", a type of communication programme intended for use in hospitals to help nurses communicate with cancer patients.  In 2002 the Wilkinson Variant along with two other variants (Fallowfield and Maguire) made a successful joint bid for an NHS Cancer project.  These variants were used to create a programme/training course for health professionals within NHS England to help their communication skills with patients who were diagnosed with cancer or were terminally ill.

The Dispute

Dr Wilkinson became concerned that the training materials for the programme contained a lot of her "established works", materials she had created when she was still a PHD student.  There was a dispute about copyright and ownership of the materials between Dr Wilkinson and the London Strategic Health Authority (SHA), which resulted in the termination of Dr Wilkinson’s employment within the SHA.

Arguments

The two parties have very different views about whether the SHA can continue to use Dr Wilkinson’s materials, and in what context.

Dr Wilkinson

Dr Wilkinson accepted that the SHA had an implied licence under the original agreement she signed, but that this licence should be limited to the terms of the agreement.  Therefore, Dr Wilkinson argued that it was unacceptable for the SHA to use her materials in any other programme other than in training courses to allow health professionals to improve their communication skills with cancer patients within NHS England.

SHA

SHA argued that the argument concerning implied licences was irrelevant as the original agreement had assigned all Dr Wilkinson’s rights of the materials to them.

Findings

The Court found that there had not been an assignation of rights, and that an implied licence did apply.  However, the court did not agree with Dr Wilkinson regarding the licence’s limitations.

This allowed the SHA to use the Wilkinson Variant in their materials under the implied licence, however, as there was no assignation of rights Dr Wilkinson would be able to use the materials to compete with the SHA.

Going forward

This case highlights a few potential issues.

  • Having copyright in your work gives you the right to prevent others copying or using your work but implied licences may exist that restrict your rights or ability to enforce these rights over the works.
  • The scope of an implied licence can be problematic, as by its very nature there may be ambiguity and parties may disagree about what is included.
  • Assignation of rights must be clear – courts are very reluctant to allow assignation unless it is express as the consequences are severe.

The important lesson is therefore to take the time to clarify what the parties’ intention and agreement is regarding ownership and licences of intellectual property and to set that out clearly in writing in an agreement.  Therefore, if the intention of the parties in an agreement is to assign rights – be clear!

If an agreement results in an implied licence be aware that this may go beyond what one of the parties intended, and cases will likely follow the approach taken in the Rainy Sky case (Rainy Sky S. A. and others (Appellants) v Kookmin Bank (Respondent) [2011] UKSC 50) of construing the interpretation of a clause in a commercially sensible manner.