Designs are created where an employee, in the course of employment, creates a design that qualifies for registration; in this case the employer is entitled to apply for and subsequently own the registered design. The employer is also the first owner of any unregistered design right in designs created by its employees, in the course of their employment. As far as Database rights are concerned the maker of a database is the first owner of database right in it and an employer is regarded as the maker of a database made by an employee in the course of employment, subject to any agreement to the contrary.
It is important to remember that an organisation, which itself creates the data that forms part of a database, will not be able to rely on the database right as a means of legal protection, unless it can show that (in addition to the investment made in creating the materials comprised in the database in the first place) it has made a separate investment in the database, which is independent of the resources used to create those data. In this case it may still be able to protect the work through copyright. So it is always important to ensure that you identify what type of intellectual property protect your work.
The points discussed for copyright in the previous article apply equally to designs.
Where design rights are generated by a sole director-shareholder using the company assets (whether it is providing equipment or the company bearing all the costs), a question may arise whether the work is woned by the company or the director. It all depends on whether the company has some “irreducible minimum control” over the activities of the person in question (i.e. the director) for him to be deemed an “employee”.
Being a sole director-shareholder does not necessarily remove this element of control; as long as the director-shareholder accepts a contractual obligation to perform various duties for and on behalf of the company, such as the obligation to work a certain number of hours per week or to produce designs in return for the payments he received from the company, he is an employee pf the company, commissioned to produce designs. If the above obligations cannot be ascertained then of course the result is that the director is not an employee of the company and was not commissioned to produce the designs.
However, even in this case, we must remember that the director owes a fiduciary duty to the company and if he has used the company assets to create the designs, then it could be held that he holds the ownership of the designs on trust for the company.
Also good to remember that if the designer is not an employee, the position is not the same as for copyright. The commissioner of a design, rather than the designer, is automatically the person entitled to any subsequent design rights in the work.
For information on the trade marks please visit http://www.anassutzi.com/articles.html.