GROUP B INTELLECTUAL PROPERTY DISCUSSION - 2021

AUTHORSHIP AND OWNERSHIP OF COPYRIGHT

1.1 AUTHORSHIP

1.1.1 Introduction

Section 2 of the Copyright and neighboring Act of 2006, (hereafter, the Act) defines “author” to
mean the physical person who created or creates work protected under section 5 and includes a
person or authority commissioning work or employing a person making work in the course of
employment.

Section 5 of the Act gives a list of work (s) eligible for copyright.

Reading the above sections together leads to a conclusion that not every creator is to be taken to
be an author in the strict meaning of the Act. For a creator to fall within the ambit of the Act, her
creation should be one that is listed under S.5 of the Act. It is only that kind of creator that S.4
of the Act refers to as the Author entitled to copyright protection.

S.6 of the Act further provides that copyright protection is not for ideas, but expression of ideas,
(note that ideas are mental realities and expressions are the physical or material existence of what
was once an idea). This section provides that, “Ideas, concepts, procedures, methods or other
things of a similar nature shall not be protected by copyright under this Act.” Protection,
therefore, is for the end product and not for the means to the end product.

In Springfield V Thame (1903) 19 TLR 650, the above sections are explained.

The claimant, a journalist supplied newspaper with information in the form of an article. The
editor of the Daily Mail, from that information composed a paragraph which appeared in the
newspaper. It was held that the claimant was not the author of the paragraph printed in the
newspaper. The protection of copyright is afforded only when a fact or event or information or
material is applied to a creative form of work, literary or otherwise. When there is no copyright
in news, there can be no infringement of an original ‘idea’ either, copyright may exist in the
manner of expressing it.

Discussion

First, there exists no copyright in news or facts or information, as the same are neither created
nor have they originated with the author of any work, which embodies these facts.

Second, facts may be discovered and discovery of facts cannot be given the protection of
copyright. Any edited piece of work which had an established amount of skill, labor and capital
put, as inputs would amount to innovative thoughts and creation of the editor. Copyrighted
material is that what is created by the author by his own skill, labor and investment of capital.

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Therefore, it is necessary to perceive the labor, skill and capital invested in the expression of the
work and not the fact itself.

“There can be no copyright in an idea, subject matter, themes, plots or historical or legendary
facts and violation of the copyright in such cases is confined to the form, manner, arrangement
and expression of the idea by the author of the copyrighted work.” Even Article 2(8) of the Berne
Convention for the Protection of Literary and Artistic Works 1886 excludes the protection for
“news of the day or to miscellaneous facts having the character of mere items of press
information.”

1.1.2 Works done by AI or robots/ computer generated works.

Do robots have copyright over their work?

This question depends on whether robots/ AI are considered as a authors.

Internationally, the Berne convention does not define who an author is but bases it’s protection
on the nationality of authors. (See article 5) For the author to be protected he or she has to be a
national of a country that is in the union or must reside in one. Since robots can’t be citizens of a
country, they are not protected by the Berne convention.

All over the world states do not recognize AIs although the World Intellectual Property
Organization (WIPO) points out that Japan and the Republic of Korea ( South Korea) are
considering the idea of making robots authors with rights over their work. Section 5(2)(a) copy
rights Act of New Zealand (1994) broadly defines an author and seems to suggest that robots can
have rights although this is not expressly mentioned.

In the case of Nova Production ltd V Mazooma Games ltd & others. CA 14 Mar 2007 where the
plaintiff was seeking damages and declaratory orders for infringement of features of its arcade
video games. The court rejected the claim but went on to say that computer programs or
computer generated works are the works of the person who makes arrangements for production
of the work.

In Uganda, Section 2 of the Act, defines an author to mean a physical person who created or
creates work protected under section 5 and includes a person or authority commissioning work or
employing a person making work in the course of employment. The Act uses the word physical
person and is strictly interpreted to mean a natural person.

Some scholars have argued that robots should be given copyrights for work created by them but
this creates a legal conundrum. It makes machines subjects of the legal order of a country with
rights and obligations. The question would be how do you enforce these legal obligations against
a humanoid? If they break the law what remedies are available and who cures the loss? This is all
a debate.

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In conclusion, Robots are not regarded as authors but their work is owned by the person who
makes arrangements for the production of such work. Today, authors can only be natural persons
and not machines.

1.1.3 Dictation or writing verbatim

It should be noted that if a person is simply writing down a dictation or writing verbatim, the
person dictating will be the author for copyright purposes as the person doing the writing is
simply the agent by which the work is made. The author does not have to be the person who
carries out the physical act of creating the work, such as by putting pencil to paper.

In Walter V Lane, HL 1900, a reporter attended a speech by Lord Rosebery. His report of the
speech was republished in the Times after another journalist who had not been present published
a verbatim copy. He claimed a copyright in the work he produced it was held that the first
journalist had copyright and was entitled to succeed. The House considered what was required to
establish originality for copyright purposes. Copyright subsisted in reports prepared by shorthand
writers of public speeches as ‘original literary’ works. The speeches were made by the Earl of
Rosebery in public when reporters were present. The reporters made notes in shorthand,
transcribed them, corrected, revised and punctuated them and published them in newspapers as
verbatim reports of the speeches. A speech and a report of a speech are two different things. Lord
Rosebery was the author of his speeches. The shorthand writers were the authors of their reports
of his speeches. They spent effort, skill and time in writing up their reports of speeches that they
themselves had not written. Even though the reporters had intended only to reproduce the
speeches as accurately as they could, the works they prepared remained original works. Lord
Halsbury LC said: ‘I should very much regret if I were compelled to come to a conclusion that
the state of the law permitted one man to make a profit and appropriate to himself what has been
produced by the labour, skill and capital of another. And it is not denied that in this case the
defendant seeks to appropriate to himself what has been produced by the skill, labour and capital
of others. In the view I take of this case the law is strong enough to restrain what to my mind
would be a grievous injustice.’

In Cala Homes (South) Ltd v Alfred McAlpine Homes East Ltd, 1995] FSR 818 drawings were
made by draughtsmen, but another person had told them what features were to be incorporated in
the designs for new houses. In some cases, that information was imparted by means of sketches,
in other cases, verbally. The person giving the instructions also marked up the preliminary
drawings with alterations he required to be incorporated in the finished drawings. Laddie J said
that what is protected by copyright is more than just the skill of making marks on paper or some
other medium, and that it was wrong to think that only the person who performs the mechanical
acts of fixation is the author. He held that the person giving the instructions was a coauthor of the
drawings and, hence, the claimant, for whom he worked as design director, was a joint owner of
the copyright.

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According to Lightman J in Robin Ray v Classic FM plc, [1998] FSR 622. where he reviewed
the decision in Cala Homes above, the author of a work does not have to exercise penmanship
but something akin to penmanship is required. Someone acting as a mere scribe, producing the
copyright expression accurately in accordance with instructions but without making any creative
contribution whatsoever can never be an author or co-author of a work. Lightman J was of the
view that there must be that essential creative input, a ‘direct responsibility for what actually
appears on the paper’, to satisfy the test of authorship. Apart from cases of amanuensis,
circumstances where a person has not produced the form of expression but is still deemed to be
an author or co-author will be rare. In this respect Cala Homes was exceptional as the design
director gave very detailed instructions to the architects who prepared the plans and could be said
to have made a very significant contribution to the finished work.

1.1.4 Unknown Authors

S.13 of the Act stipulates the duration of copyright protection. It states that “The economic rights
of an author in relation to a work are protected during the life of the author and fifty years after
the death of the author”.

This protects the Author’s various rights. First, economic rights, rights to obtain remuneration in
return for the right to publish the work, and second, moral rights, rights to prevent mutilation or
distortion of the work, to receive authorial credit for the work, to decide when the work is
complete and can be sent forth into the world, and, in some countries, the right to withdraw the
works. In essence, the author or creator being the owner of the works, have a right to consent to
having their works used by others. With any kind of property, its owner may decide how it is to
be used, and others can use it lawfully only if they have the owner’s permission, often through a
license.

S. 44(1) of the Act provides that if another person wishes to use the work of such author, that
person would be required to obtain the relevant rights or license from the said author and also get
the copyright of a work is vested in its author. In essence, if another person wishes to use that
work, he or she must obtain the relevant rights or license from the author.

This is demonstrated in Classic Art Works Ltd v Vincent Lukenge and Children of Grace
HCCS No. 207/2010

The Plaintiff was the author of a literary work entitled "Facts and Myths about HIV/Aids, a
Practical Guide to Prevention, Health and Life” and the owner of copyright thereof. The Plaintiff
alleges that the Defendants were found in possession of the Plaintiff’s literary works and had
reproduced and altered it in a substantial form without the licence of the Plaintiff. Secondly the
Plaintiff alleges that the Defendants had in their possession a large number of copies of the book
which were wrongfully printed or caused to be printed by the Defendants without the licence of

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the Plaintiff and the Plaintiff demanded their works from the Defendant by letter of 21 st
September 2009 and the Defendants wrongly detained and distributed the books/works. The
Plaintiff further avers that it only granted a licence to Global Health Preventive Strategies Inc of
the US to publish only 20,000 copies of the works and not to Global Strategies for HIV
Prevention. Consequently, the Plaintiff claims that as a result of the alleged acts, it suffered and
continues to suffer tremendous loss due to a gradual decrease in the sale of the works.

“… the copyright owner may assign his or her economic rights in a copyright to another person.
… License another person to use the economic rights…. Transfer to another person or bequeath
the economic rights in a copyright in whole or on part. - The rights can only be assigned or
transferred in writing.” It is worth noting that it was further stated in this case that the owner of
economic rights can sue and infringer.

The copyright owner may assign his or her economic rights in a copyright to another person. The
second thing that a copyright owner may do is to license another person to use the economic
rights in a copyright. Thirdly the copyright owner may transfer to another person or bequeath the
economic rights in a copyright in whole or in part.

The identification of the author is important because it helps in determining, first, the
ownership of the copyright and also in measuring the duration of the copyright. So, it is
important to know who the author is so as to apply the law of copyright protection which only
applies during the lifetime of the author and 50 years after the death of the author. According to
D. Bainbridge (2010), in the case of many of the original works, the copyright expires at the end
of the period of 50 years from the end of the calendar year during which the author died.

An author is the creator of the original expression in a work and the determination of authorship
is a question of fact. A person need not be included as an author if he/she did not create the
original expression in a work. According to Uganda Law Reform Commission in the study report
on Copyright and Neighboring Rights Law (available at
https://www.ulrc.go.ug/sites/default/files/ulrc_resources/Copyright%20%26%20Neigbouring
%20rights%20body_0.pdf ), it is improper to fail to include as an author a person who
contributed to the creation of the work. A person cannot claim copyright to another's work and
an author whose name is omitted has a cause of action to remedy the situation.

But what happens, if during the lifespan of the work's copyright it becomes unclear who the
author is, or if the author is dead and his or her successor is unclear as to who the original
author was, how may a third party proceed to use the copyright?

The copyright of a work is vested in its author. S. 44(1) of the Act provides that if another
person wishes to use the work of such author, that person would be required to obtain the
relevant rights or license from the said author.

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If during the lifespan of the copyright of a work, it becomes unclear who the author is, or if the
author is dead but the successor is unclear, how may a third party proceed to use such a
copyright.

Article 7(3) of the Berne Convention provides that in the case of anonymous or pseudonymous
works, the term of protection shall expire fifty years after the work has been lawfully made
available to the public. If the author of an anonymous or pseudonymous work discloses his
identity during the above-mentioned period, the term of protection applicable shall be the life of
the author and fifty years after his death. The countries of the Union shall not be required to
protect anonymous or pseudonymous works in respect of which it is reasonable to presume that
their author has been dead for fifty years.

The Copyright, Designs and Patents Act 1988 (which is not binding but for matters of
explanation we intend to use) recognises that the identity of the author may not always be
known. A work is of ‘unknown authorship’ if the identity of the author is unknown or, in the
case of a work of joint authorship, the identity of none of the authors is known. The identity of
an author is regarded as unknown if it is not possible for a person to ascertain the identity of the
author by reasonable inquiry. It is not clear who the ‘person’ referred to might be. One
possibility is that it is the person wishing to copy the work, making the test subjective; on the
other hand, it may be the ubiquitous ‘reasonable man’, an objective test. The work may be truly
anonymous or it may be pseudonymous, that is the author does not wish his identity to be
disclosed.

If the work involved is truly anonymous, there may be considerable difficulties regarding the
ownership and enforcement of the copyright, although in such circumstances article 15(3) of the
Berne convention contains a presumption that the publisher of the work as first published was
the owner of the copyright at that time. If the identity of the author becomes known before it
would have expired, then the normal rule applies.

Article 15(4)(a) of the Berne convention provides that in the case of unpublished works where
the identity of the author is unknown, but where there is every ground to presume that he is a
national of a country of the Union, it shall be a matter for legislation in that country to designate
the competent authority which shall represent the author and shall be entitled to protect and
enforce his rights in the countries of the Union. Furthermore, in article 24 of the law of
development of the cultural and creative industry, provides that if a copyright user makes effort
to obtain valid authorization from the copyright owner but fails due to the owner being unknown
or location unknown, the user may clarify the reason for his failure to obtain such authorization
to the competent copyright authority. If the authority confirms the reported reason, after
thorough investigation, they shall grant the user an approval license to utilize the work within the
permitted scope with the condition that the user deposits royalties in the amount determined by
the copyright competent authority. But if during the subsistence of this license the author lodges
an objection, the license may be rescinded.

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1.1.5 Joint/Co-authorship

S.5 of the Act provides for the work of authorship i.e. The product of creative expression, such
as literature, music, art, and graphic designs etc. Copyright Law protects a work of authorship if
it meets three criteria. First, the work must be original, not a copy. Second, the work must be
presented in a fixed medium, such as a computer disk, a canvas, or paper. Finally, some
creativity must have been involved in the work's creation, although the amount of creativity
required depends on the particular work.

Joint authorship of a copyrightable work is when two or more persons contribute enough to the
work to be the author of that work. In the case of joint authorship, the authors share the copyright
in the work with each other.

S.11 of the Act provides for the Co-author’s rights. It states that, “Where work is created by more
than one person and no particular part of the work is identified to have been made by each
person, such that the work is indistinguishable, all the authors shall be co-owners of the
economic rights and the moral rights relating to that work and the co-owners shall have equal
rights in that work.”

Distinction between Joint work and Collective/Composite Work

A "joint work" must be distinguished from what is commonly known as a "composite work." In
broad terms, a "joint work" is a unitary work, the parts of which, although created by several
authors, are not considered to be individual works in themselves. A simple example would be a
story written by two authors; here the contribution of either one of the authors is not separately
identifiable or, though identifiable, is not capable of use as a separate work in itself. A
"composite work," broadly speaking, is one which puts together the separate and distinct works
of different authors. A clear-cut example would be a magazine containing a number of short
stories contributed by various independent authors; here each story is separately identified and
capable of separate use as a work in itself. The magazine as a whole would be a "composite
work," but neither the magazine nor any of the stories by one author would be a "joint work."
The rights in each story would be owned by its author alone (unless of course assigned by him),
and the rights in the magazine as a whole would ordinarily be owned by the magazine publisher
alone (as the "author" of the "composite work").

Derivative work A copyrightable creation that is based on a preexisting product; a translation,

musical arrangement, fictionalization, motion-picture version, abridgment, or any other recast or
adapted form of an original work. - Only the holder ofthe copyright on the original form can
produce or permit someone else to produce a derivative work.

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Ingredients of Joint Authorship

a) Collaboration/ Common design/ Intent

For a work to be regarded as joint authorship, it has to be created through collaboration in

pursuance of a common design, thus making derivative works ineligible.

In Levy V Rutley L.R. 6 C.P. 523 (1871), Court held that, If two persons undertake jointly to
write a play, agreeing on the general outline and design and sharing the labor of working it out,
each would be contributing to the whole production, and they might be said to be joint authors of
it; but to constitute joint authorship there must be a common design.

In this case, a claim of joint authorship was made in a play entitled The King’s Wager, or The
Camp, the Cottage and the Court. The play had been written by a Mr Wilks, to whose work the
plaintiff, and others at the plaintiff’s suggestion, had added a scene and a few other alterations
and additions. The plaintiff claimed that he was joint author of the play. The statute under which
the case was decided, the 1842 Act, contained no concept of joint authorship. The claim for joint
authorship was rejected. There can be no finding of joint authorship in a copyright work in the
absence of a common intention to that effect.

Keating J said: ‘Could the additions so made constitute him a joint author with Wilks of the
whole piece? There may, no doubt, be a plurality of authors: the statute, in s.1, dealing with the
duration of copyright, speaks of ‘the author or authors, or the survivor of the authors.’ But I fail
to discover any evidence that there was any co-operation of the two in the design of this piece, or
in its execution, or in any improvements either in the plot or the general structure. All the
plaintiff claims to have done is to vary some of the dialogue, so as to make it more suitable for
his company or for his audience. If the plaintiff and the author had agreed together to rearrange
the plot, and so to produce a more attractive piece out of the original materials, possibly that
might have made them joint authors of the whole. So, if two persons undertake jointly to write a
play, agreeing in the general outline and design, and sharing the labour of working it out, each
would be contributing to the whole production, and they might be said to be joint authors of it.
But, to constitute joint authorship, there must be a common design.’

Montague Smith J distinguished the circumstance in which alterations are made to a work which
will not lead to joint authorship of the original work from a true collaboration which might result
in joint authorship: ‘It is, no doubt, difficult to draw the line: but it never could be suggested that,
when an author submits his manuscript to a friend, and the friend makes alterations and
improvements, the latter would thereby become a joint author of the work. If, when the piece
was brought to the plaintiff, he had said to Wilks, ‘This thing requires to be remodeled, and you
and I will do it together,’ and Wilks had assented, possibly a case of joint authorship might have
been set up. But the evidence here falls very short of that.’

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Keating J, Byles and Montague Smith JJ

'The ingredients of joint authorship enumerated in this case are 'collaboration and a common
purpose. Joint authorship occurs when two or more authors intend by their combined efforts to
create a unitary work and in pursuit of that intent, work closely in collaboration.

However, it is not required of the several authors that they must necessarily work in physical
propinquity or in concert.

In Edward B. Marks Music Corp. v. Jerry Vogel Music Co, 2 Cir., 140 F.2d 266, the court held
that while producing a musical composition jointly, two men will be coauthors and owners of the
copyright even if they labour at different times, without consulting each other, and remain
strangers to each other. It is a work of joint authorship if a person creates lyrics or music with the
intention that his work shall be combined with the work of another person who shall create the
music or write the lyrics, as the case may be, so as to make the composition complete.

Hence, each individual author need not intend to merge his work with another specific author, it
is sufficient that he merely intends that his own work will later be merged into a larger whole.

However, they are not required to have an express collaboration agreement creating a joint-
author relationship

Intention

As per Childress v Taylor 945 F.2d 500 (2d Cir. 1991); Authors must have the Intention 'that
their contributions be merged into inseparable or interdependent parts of a unitary whole.

The authors must also have the intention to be joint authors and it is not sufficient that the work
will be merged into a final product for instance, in the relationship between an editor and an
author, both know they are working towards a final book but that doesn’t make them joint
authors

Although it is sufficient that he merely intend that his own work will later be merged into a
larger whole.

According to Kogan v Martin [2019] EWCA Civ 1645 the court of appeal held that; The essence
of Collaboration/ Intent is to distinguish a joint work from a derivative work. So, when a
secondary author adapts a pre‐existing work in the absence of collaboration with the first author,
he or she will have created a derivative work which may be separately protected if the changes
evidence sufficient originality. But where collaboration is present, the resulting work is jointly
authored and copyright in it shared.

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b.) Contribution/ Authorship

The contribution required must be of an authorial nature and, as a qualitative matter, the
collaboration must go beyond mere editorial amendments, criticism or recommendations.

But of course, this is an inquiry that must be acutely sensitive to the nature of the copyright work
in question. Contributions made by each joint author do not need to be equal and that each share
can reflect, pro rata, the respective amount of their contribution. A contribution of mere ideas is
not sufficient. In order to be a joint author, one must contribute expression. For the expression to
be copyrightable it has to be original – that is independently created and possess at least a
minimal degree of creativity.

In Martin v Kogan (supra) The main dispute in the case in question concerned the authorship of
the screenplay of the 2016 drama-comedy film 'Florence Foster Jenkins', which was directed by
Stephen Frears and starred actors Meryl Streep and Hugh Grant. Nicholas Martin, a professional
writer of film and television scripts, is regarded as being the sole author of the film's screenplay.
However, Julia Kogan, a professional opera singer, claimed to be a joint author of the film's
screenplay, seeking a portion of Mr Martin's film income. Both Mr Martin and Ms Kogan gave
conflicting statements on the creation of the film's screenplay. Mr Martin, claiming sole
authorship, did not contest the fact that Ms Kogan had introduced him to the story of Florence
Foster Jenkins. He stated that Ms Kogan was a supportive proof-reader and sounding board,
outlining minor information and suggestions based on her musical experience. On the other
hand, Ms Kogan, claiming joint authorship, credited Mr Martin as being the main writer, but
based creative collaboration. She stated that she wrote, either alone or with Mr Martin,
significant parts of various scenes. Mr Martin and Ms Kogan were in a relationship and living
together during the creation of the early drafts of the film's screenplay, and the couple regularly
discussed the project.

The Court of Appeal held that "it is entirely realistic to suppose that a reconsideration of all the
evidence would show that Ms Kogan's contribution was indeed made as part of a collaboration
and passed the quantitative threshold for joint authorship". Therefore, the Court of Appeal,
setting the IPEC decision aside, accepted the appeal and, in an unusual move, ordered the re-trial
before the IPEC in front of a new judge.

The rationale behind the Court of Appeal's decision rested upon whether Ms Kogan's input in the
film's screenplay was enough to satisfy the four main elements of joint authorship: (a)
collaboration, (b) authorship, (c) contribution and (d) non-distinctness of the contribution. The
Court considered each element respectively, and provided valuable insight as follows:

Collaboration

For a work to be regarded as joint authorship, it has to be created through a collaboration , in

pursuance of a common design, thus making derivative works ineligible. Nevertheless, a

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collaboration must go beyond mere editorial amendments, criticism or recommendations.
Moreover, with regard to the work, it is also important to establish the true nature of the
communication between the contributors

Authorship

The Court held that creation and fixation are not one and the same, shifting the focus from 'who
wields the pen?'. In fact, the Court of Appeal held that: "It is the skill and effort involved in
creating, selecting or gathering together the detailed concepts or emotions which the words have
fixed in writing which is protected in the case of a literary or dramatic work, whether the work is
one of sole or joint authorship. Too much focus on who pushed the pen is likely to detract
attention from what it is that is protected, and thus from who the authors are".

Contribution

Here, the Court of Appeal held that the contribution made by a joint author must be "authorial".
The Court noted that since the screenplay is categorised as a dramatic work, elements such as
plot and characters do amount to an authorial contribution. This begs the question: How much
does a contributor have to contribute to a collaborative work to acquire the status of a joint
author? This question was answered by referencing the 'Infopaq' test. This tests states that a joint
author must contribute elements which convey his/her own intellectual creations through free
and expressive decisions.

Non-Distinctness of Contribution

This element stipulates that the contribution must not be capable of being separated. Contrary to
the IPEC ruling, the Court of Appeal stated that the fact that one contributor has the decisive say
does not inhibit joint authorship, yet this only affects the proportion of ownership. Moreover, the
Court of Appeal also highlighted that the contributions made by each joint author do not need to
be equal and that each share can reflect, pro rata, the respective amount of their contribution.

Implications of the case

The Court of Appeal's decision is a fundamental one since, besides clearly outlining the current
legal position on joint authorship and copyright, it also confirms that the contribution of a major
author should not in any way reduce the importance of a minor joint author's contribution.
Interestingly, this judgment also delves into the 'idea/expression' dichotomy since the Court, in
its analysis of joint authorship, also addresses the concept which lies at the core of copyright –
the notion that mere ideas are not afforded copyright protection, but the expression of those ideas
can. In relation to a collaboration, it is generally assumed that character or plot suggestions are
merely ideas and thus not afforded copyright protection. However, considering that such
suggestions were in fact afforded protection in this case, it will be interesting to see how future
parties may be encouraged to use this judgment to allege copyright protection to mere ideas

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which were previously not afforded copyright protection. Therefore, this appeal judgment is of
significant importance to minor joint authors, the contributions of whom may have been unjustly
overlooked previously, and with a clear interpretation of the current legal position of joint
authorship, minor joint authors may be empowered to seek recognition, compensation and joint
authorship status for their work in a collaboration.

In Hadley V Kemp [1999] EMLR 589,

There were five members of a well-known pop group. The song composer, guitarist/keyboard
player and singer, Mr. Kemp, also owned the songs’ publishing company. Mr. Kemp wrote and
composed the songs; the band members ‘contributed’ to the songs during rehearsals. Three
members sued Mr. Kemp and his publishing company for payments of shares of his ‘publishing
income’ of the songs. Their primary argument was that there was an oral agreement that rendered
him contractually bound to distribute the publishing income. Their alternative argument was that
they were joint authors of some of the songs.

The questions arose as to whether there was joint authorship of the songs for the purposes of
joint ownership.

Court held that to be a joint author, a person must establish that s/he made a significant and
original contribution to the creation of the musical work. The Court held that Mr. Kemp’s written
songs existed as musical works before being reduced to material form by the band in rehearsals.
Thus, Mr. Kemp was the sole author.

From the above discussion, below is the Outline of Rights and Duties of Co-author:

1. Each co-author will own an equal ownership share in the work. This will occur even if
one of the co-authors has contributed a greater quantity of the work than the other co-authors.

2. Each co-author will own an "undivided" interest in the entire work. This means that if the
publishing project consists of illustrations and text that the artist and the writer will each own
fifty percent of the entire work, i.e., the art and the text.

3. Any co-author, without the permission of their fellow co-authors, may grant non-
exclusive rights to the work to third parties. However, a co-author may only grant exclusive
rights to the work to third parties if the co-author obtains the prior consent of the other co-
authors.

4. Each co-author has a duty to account to the other co-authors for any profits obtained from
the exploitation of the work.

5. A co-author has the right to assign his/her ownership share in the work to a third party or
to bequeath his/her ownership share to his/her heirs.

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6. Each co-author will be entitled to equal authorship credit for the work upon its
publication.

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1.2 OWNERSHIP

1.2.1 Introduction

The definition of ownership is not specifically given both in the international or local statute on
Intellectual property.

The Black’s Law Dictionary (8th ed. 2004) at page 3503 defines ownership as The bundle of
rights allowing one to use, manage, and enjoy property, including the right to convey it to others

But, it can be said that an owner is one who either authors or buys an intellectual property right
from its author. The object of ownership can be intangible such as intellectual property rights
over musical, literary or scientific creations of the mind.

To claim ownership, application of independent intellectual effort or skill is necessary by the

author. If a person merely reduces the work into a material form in a purely mechanical way,
then this person would not be the author, but merely an agent or amanuensis of the author. "

Copyright ownership is separate from the ownership of the work itself. For instance, when an
artist sells a painting to someone, the artist usually retains the copyright in the painting. That
means the buyer of the painting will have to keep it in her house or office but the artist will retain
the rights to the copy, display and distribute the painting and make other works based on the
painting. Copyright ownership can not only be sold independently of the work itself, but the
different exclusive rights can also be sold separately. For instance, an artist could sell the right to
make copies of his artwork to one person and could sell the right to publicly display it to
someone else because an owner has economic rights as set out in section 9 of the Act.

At Common law, the basic principle on ownership is that an author of a work is the first owner
of the copyright and this is codified in the Copyright, Designs and Patents Act 1988 of the UK.
This means any author of a work is the de facto owner of such work. This basic rule applies
where such work is created by someone working on their own terms or a person employed but
whose work is not created under the course of their employment. In other words, there are
exceptions to the basic rule stated above whereby an author may not be the owner of the work
they created and these are discussed below:

Exceptions to the general rule

a) Made by an employee in the course of his employment

The general rule in relation to intellectual property created by an employee in the course of their
employment is that, in the absence of a contract to the contrary, the employer owns the copyright
to that work, its set out in S.8 of the Act.

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  Employee

First and foremost, in order for the intellectual property to vest in the employer, the creator must
be an employee. Since the act doesn’t define an employee, I relied on the Employment Act of
2006 that defines an employee, “as any person who has entered into a contract of service or an
apprenticeship contract.

To determine if someone is employed under a contract of service, the courts look at various
factors such as the level of control exercised by employer over the employee’s work, salary, sick
pay, holiday provisions and the level of integration of the employee into the employer’s business.
If those factors are found to exist a person will be termed as an employee and the copyright of
work created by them will belong to the employer.

In Beloff V Pressdram 1973 1 ALL ER 241, the plaintiff sued the defendants for copyright
infringement of a memorandum she had written for the editor of the observer newspaper. The
plaintiff could sustain the action only if she was the owner of the copyright in the memorandum.
She would only be the owner if she was not an employee of the observer newspaper.

It was held that she was an employee because on the evidence, she received a salary for her job
and holidays, there were PAYE and pension scheme deductions, she had an office and used the
company resources for her work, she was employed as part of the business of the company and
her work was an integral part of the business. She wasn’t entitled to the copyright in the
memorandum so her claim failed.

 Whether the work has been made in the course of employment?

S.8 (3) of the Act, states that vesting of copyright shall apply only to work created within the
stipulated schedule of work of an employee. This means that the copyright to the work will only
vest in the employer if it has been created while the employee is performing duties within his job
description or other natural duties, for example a sales manager, who, during his normal working
hours, writes a report for the board of directors of the company he works for, in this instance
copyright to such work is owned by the company.

In Stephenson V MacDonald [1952] 1 TLR 101, an employee of the plaintiffs, an accountant,

wrote a book that consisted of the text of public lectures given by him while still an employee of
the company, a section that included manuals for the plaintiffs’ clients and sections composed
after he had moved to another employer. He died before the book was published and the
plaintiffs were seeking an injunction to stop the publication of the book claiming copyright
infringement

It was held that the copyright in the section that contained the manuals belonged to the plaintiffs
because the employee had prepared and written the manuals for the use of a particular client of
the company, and this was part of his work as a servant of the company under a contract of

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service. However, the employee owned the copyright in the section that contained the public
lectures because giving lectures was not part of his duties under the contract of service.

Kakooma v Attorney general (civil suit 2008/197)2010

The plaintiff sued the defendant for infringement of copyright of the Uganda National Anthem
which he had composed and written, for a permanent injunction restraining further infringement
and costs.

The court held that since he had willfully participated in the competition to write the anthem
which competition was prepared by government, he was an employee of the government and
therefore the latter had ownership of the copyright.

However, if an employee performs duties even if at the request of his employer and those duties
are not within the employee’s job description or fall outside the employee’s ordinary duties, the
employee will be the owner of the copyright in the work.

Bryne V Statist Company, [1914] K.B 622

An employee was permanently employed on the editorial staff of a newspaper. The employer
requested the employee to translate and summarize a speech. This was additional work which the
employee did in his own time and independently of his usual editorial duties.

It was held that the employee owned the copyright in the translated summary of the speech
because it was not created under the contract of service between the parties but under a separate
contract for services.

There are also instances where the employee’s formal job description no longer completely and
accurately describes his present duties in which case the actual type of work carried out by the
employee will be relevant. The basic test in this situation is whether the skill, effort and
judgment expended by the employee in creating the work are part of the employee’s normal
duties (express or implied) or within any special duties assigned to him by the employer. If the
answer is “no” then the employee will be the first owner of the copyright, even if he has used the
employer’s facilities or assistance.

 Contract to the contrary.

S.8(1)(b) of the Act provides that the general rule is “…….subject to a contract to the contrary”.
This means that where there is a contract between the employee and employer that vests the
ownership of the copyright in the employee, the general rule that vests ownership in the
employer will not apply.

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The contract must have been made before the work came into exiistence and the contract may be
express, whether in writing or oral or implied.

Noah V Shuba [1991] FSR 14

Noah was a doctor who worked for a Public Health Lab Scheme. He wrote a book . Noah sent
the book along with a copyright notice to Shuba. Shuba later delivered a lecture which he later
sent to a magazine for publication along with two extracts from Noah's book and a short passage
which was atttibuted to Dr Noah but not written by him. it gave the impression that Noah
endorsed Shuba's views. Noah claimed damages for copyright infringement.

Held that there was implied term in Dr Noah’s contract of service excluding the statutory rule
relating to the copyright ownership of an employer. This is because it was a long standing
practice of the employer that employees should retain copyright in works written in course of
employment and they had acquiesced in their employees’ practice of assigning copyright in
articles written for scientific journals.

Furthermore, in the case of Ray V Classic FM plc [1998] EWHC Patents 333, The defendant
company was producing a library of classic music, to help they brought the claimant in under a
consultancy agreement. He supplied documents and a catalogue for their programming database,
however there was no specific agreement on how authorship was to work. The defendant started
to licence out the music database but the claimant objected and claimed to have his right to
exclusive acts infringed.

The court held that the agreement contemplated by section 11(2) in our case section 8(2) if it is
to obviate the application of the section, must satisfy two requirements

i) It must be an agreement that, notwithstanding the existence of a contract of employment,

the title to copyright in works created during the course of the contract shall not vest in the
employer

ii) The agreement must be a legally effective one.

In this case neither of the conditions were satisfied because the agreement purported to prevent
the creation of a contract of services instead of providing for the vesting of the ownership of the
copyright and that the agreement was legally ineffective because even if it purported to prevent
the creation of a contract of services the substantive provisions of the consultancy agreement in
law gave rise to a contract of employment.

On the other hand, if an employee produces a work, the creation of which lies outside his normal
duties (that is, it is not created in the course of his employment), any agreement that the
employer will be the owner of the copyright must comply with s 90(3) in our context s14(3) and
must be in writing and signed by or on behalf of the employee. The reason is that the employee
automatically will be the first owner and the copyright must, therefore, be assigned to the

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employer. If there is such an agreement, but the formalities are not complied with, the employer
may have an implied licence or may be deemed to be the beneficial owner of the copyright.

b) The question of consultants

It is argued that the basic rule of ownership referred to earlier can bring about injustice in some
scenarios whereby Courts have provided for equitable remedies of beneficial ownership and
implied license. A notorious example here that is given most times is that of a consultant and the
latter’s client. That it is unfair for a client whose consultant has made work for without an
assigned copyright to that work to completely benefit from it like the consultant, who in this case
is the author. In other words, both the consultant who is the author and the client are deemed to
own the work at the same time.

In the case of Warner v. Gestetner Ltd (unreported (1988) EIPR D-89), Warner, who was an
expert in the drawing of cats, agreed orally to produce some drawings to be used by Gestetner to
promote a new product at a trade fair. Gestetner subsequently used the drawings for promotional
literature and Warner complained that this went beyond the agreement and infringed his
copyright. Warner remained the owner of the copyright in the drawings because it had not been
assigned to Gestetner. Whitford J however, found that he could imply a term granting beneficial
ownership of the copyright to Gestetner. Thus, the copyright had two owners, one at law and the
other at equity, and Gestetner, as the beneficial owner was entitled to deal with the work as he
wished.

Instead of beneficial ownership, Court can grant an implied license with regard to a particular
work. This is common with commissioned works where a commissioner is implied to continue
using the work for the purpose they contracted it. In Blair v Osborne and Tomkins Court implied
the buyers of a site on which construction plans had been made by an architect to be having a
right to continue using the building plans given to them by the seller of the site. Court only
granted nominal damages to the architect because the company that submitted them for approval
to the city council used its own name and not that of the architect that had originally made them.

Court considers the circumstances of the case to decide on whether to offer the remedy of
beneficial ownership or that of implied license.

C) By a person in a fiduciary relationship to another

By a person in a fiduciary relationship to another is said to hold the copyright in that work on
trust for the other.

In Vitof Ltd v Altoft | [2006] EWHC 1678 (Ch) Court found that a director of a company who
had written source codes for the company’s labeling machine did so on trust of the company
because as a director, he owed it fiduciary duties.

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1.2.2 Joint Ownership

Joint ownership is envisaged under Section 11of the Act. Where work is created by more than
one person and no particular part of the work is identified to have been made by each person,
such that the work is indistinguishable, all the authors shall be co-owners of the economic rights
and the moral rights relating to that work and the co-owners shall have equal rights in that work.

Joint designs and joint ownership

David Bainbridge in his text of Intellectual property law, highlights that Joint first owners are
possible where there is a joint design, being one created by two or more designers acting in
collaboration where the contribution of each is not distinct from the others.

A joint owner’s contribution need not be in respect of recording the design, but in relation to the
design itself and not sufficient if, it only relates to the manufacture of articles made to the design.

In Phillip Parker Vs Stephen Tidball, 1997 FSR 680 in which one of the defendants was
responsible for stitching together leather cases, it was contended that his contribution and
suggestions related to construction of the cases and not the design of the same. He was not a joint
owner consequently

In referring to the Copyright Designs and Patents Act 1988 Sec 259(1), David Bainbridge
highlights that the design is thus divisible and can be regarded as a combination of separate
designs, which can be owned by different people.

The inference is to the effect that if only one individual meets the qualification requirements of
joint ownership, there shall be a joint design.

Examples of such qualification requirements include:

Efforts of an individual in relation to the design itself.

An owner is entitled to economic rights as opposed to an author, who has moral rights.
Sometimes an author can be an owner as highlighted in the decision of

Cala Humes (South) Ltd Vs Alfred McAlipine Homes East Ltd [1995] FSR 818

In which drawings of designs for new houses were dealt with. Laddie J contended that what is
protected by copyright is more than just the skill of making marks on paper or some other
medium and that it was wrong to think that only the person who performs the mechanical acts of
fixation is the author. It was held that the person giving instructions was a co-author of the
drawings and hence the claimant, for whom he worked as a design director was a joint owner of
the copyright.

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Lightmman J affirmed this decision in Robin Ray Vs Classic FM Plc [1998] FSR 622 in
reiterating that there must be that essential creative input, a direct responsibility for what appears
in paper. In his bid to satisfy the test of authorship

Therefore, It is possible that there are two or more joint owners of the copyright in a work if it is
a work of joint authorship

If a work is a work of joint authorship, unless the authors are employees acting in the course of
employment, the joint authors will automatically become the joint first owners of the copyright
in the work. They will own the copyright as tenants in common and not as joint tenants. This
means that effectively each owner’s rights accruing under the copyright are separate from the
others, and he can assign his rights to another without requiring the permission of the other
owners, and on his death his rights will pass, as part of his estate, to his personal representatives.

In the case of Lauri v Renad 1892 - 3 Ch. D. 403, Kekewich J held that joint owners of a
copyright are tenants in common and each tenant in common is entitled to sue to prevent a
stranger who is not authorized by the co- owners from interfering with his rights. Hence they can
act individually against infringement.

Furthermore, in Powell v Head (1879) 12 Ch D 686,it was also held that registered owners of a
copyright take as tenants in common and not as joint tenants.

In this case, the plaintiffs were the co-owners of the copyright and right of representation and
performance of a dramatic entertainment. The other co-owner was Mrs. L. who had granted a
license to the defendant without the authority of her co-owner. In his judgment, Jessel M.R.
stated that:

"there is no possibility of arguing, in respect of these statutory provisions, that one of the
two part-owners of the right or liberty of representing or causing to be represented could
license a third person to represent without the consent of the other part owner or
owners".Jessel MR stated that a part-owner could not lend or deal with the entirety of the
copyright without the authority of the other part-owners.

Therefore, because they will never own the whole copy- right individually, they will not be able
to license someone to exploit the work without the consent of their co-owners; otherwise, they
would be able to transfer rights that they do not fully own. The co-owner of the copyright in a
book will be able to assign his or her right to one of his or her creditors, which will allow that
creditor to recuperate—through the royalties—the debt owed, but the creditor does not deal with
the copyright.

The same co-owner will not be able to allow a film director to make a movie based on the book
without the consent of the co-owners. It is worthy of note that a co-owner can exploit the rights

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in a copyright work without the permission of his co-owners, but cannot license, assign or
mortgage his share without the consent of others.

Where the whole or a part of a copyright is assigned to two or more persons, they will hold as
ten- ants in common, unless the agreement states otherwise. However, where the co-owners have
some relationship such as husband and wife, it may be reasonable to infer that they hold the
copyright as joint tenants and not as tenants in common.

1.3 Difference between an owner and an author

Taking the demonstration of S.8 of the Act - Employed authors and works for Government or
international bodies, a person can be an author but not owner of copyright. This can best be
expressed in productions during the course of employment where the employer owns what the
employee creates.

It should also be noted from the outset that Companies can’t be authors since the definition of an
author in S. 2 of the Act refers to physical persons.

In Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd [2011] SGCA 37,
In its claim for copyright infringement, Pioneers & Leaders alleged it is the owner of the
copyright in the horse racing table guides but instead relied on its claim of being the sole author
of the said work. The Court of Appeal made a distinction between authorship and ownership.
Authorship refers to the concept of creating, while ownership pertains to the concept of
possessing proprietary rights. The Court pointed out that an author need not be the owner and the
owner need not be the author.

Court held that as much as companies can own copyright, they can’t be authors.

The Court further held that if corporate bodies would be allowed to be considered as authors for
the purpose of copyright, it could result to copyright protection in perpetuity which is against
public policy.

Below are the differences:

 Authorship refers to the concept of creating, while ownership pertains to the concept of
possessing proprietary rights
 Authors have the moral rights as enshrined in S.10 of the Act while owners have the
economic rights under S.9 of the Act.
 Whereas Ownership is transferable, authorship is non-transferrable.

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