A former researcher at the National Microbiology Lab in Winnipeg, Manitoba made the news in mid-May after allegedly trying to smuggle genetic material from the Ebola virus across the Manitoba-North Dakota border. CBCNews.ca reported that in his affidavit, the researcher told officers he was working on a vaccine for the Ebola virus and HIV and that on his last day at the lab, he stole 22 vials to use at his new job in the U.S. because he did not want to have to start from the beginning with respect to his research.
With job losses and employees leaving their positions for a myriad of reasons, especially in these strange economic times, the question arises: what can an employee take, and what must they leave, when they vacate their position. While the above example deals with tangible property, employees should also be mindful of intangible property, like intellectual property. Businesses need to be sure that all of their assets, including their intellectual property (IP) assets, are protected. No business wants its valuable IP assets walking out the door along with a former employee. It is important to know what an employee can and cannot remove from the workplace, and what steps an employer can take to help protect its IP assets.
Under copyright law, the creator or author of a work is the first owner of the copyright in that work and would have all the rights that go along with that, including the right to copy, reproduce, translate, and publish the work. However there are exceptions to this rule and one exception relates to works made in the course of employment.
An employee under a contract of service, who creates a work in the course of that employment, is not usually the first owner of the copyright. Instead, his or her employer is, provided there is no agreement to the contrary. Conversely, if the author or creator is an independent contractor or freelancer, they are usually the first owner of the copyright, again, provided there is no agreement to the contrary. This distinction involves interpreting the parties’ relationship in accordance with the principles of employment law as well as the context in which the work was created. Any intellectual property that an employee has created in the course of their employment must stay with the employer. Often this concept is reiterated in the employment agreement, which it is not required for this exception to apply but is recommended. As an added precaution, the employment agreement could include an assignment of IP rights for any work that might not fall under this exception.
In the event that the “employee” is truly an independent contractor, and the party that engaged them wishes to use the work, or a substantial part of the work, they created, that party will need to get a license or assignment of IP rights from the independent contractor before they leave. Otherwise, the employer’s use of the work could amount to infringement. Under the Copyright Act, such assignment must be in writing and signed by the owner. Presumably, this type of assignment clause would be found in the contract of engagement, usually signed before the work is created. However, a strict interpretation of the Copyright Act does not provide for an assignment of future copyright. An agreement to assign the copyright in works yet to be created may not be equivalent to an actual assignment. Such an agreement may only act as a promise to assign the copyright. While the party that engaged the independent contractor may be able to rely on equitable remedies, ideally a fresh assignment for the copyright in all works would be obtained after those works have been created.
If an assignment of IP rights is in order, it is usually also desirable to obtain a waiver of moral rights. Moral rights are a separate bundle of property rights which are inalienable from and by the author. These rights include the right to attribution (which is the right to have credit for the work), the right to integrity of the work (which is the right not to have the work distorted, mutilated or modified to the extent it would prejudice the author’s reputation or honour), and the right to freedom from association (which is the right not to have the work associated with things which would bring the author’s honour or reputation into disrepute). Moral rights cannot be transferred or assigned, only waived. A waiver of moral rights is not implied in an assignment and must be explicit to be valid. By obtaining a waiver of moral rights in an assignment, the employer will have the ability to alter the work in any way it wants. A waiver of moral rights should be obtained from a true “employee” as well, as moral rights belong to the “author” of the work, and not necessarily the first owner of the copyright.
One way for employers to protect their IP assets is to clearly establish the relationship at the outset, and include in the employment or engagement contract, the requisite provisions that assign any IP rights if necessary. Employers may also wish to have their employees and contractors enter into confidentiality agreements, or include confidentiality provisions in employment and engagement agreements, which may prevent an employee from disclosing any trade secrets or confidential information.
Copyright does not prevent employees from taking their own ideas when they leave a workplace. However, if the ideas are expressed in a work of some form, that work becomes protected through copyright, and if it was created by an employee in the course of their employment, that work is owned by the employer and should stay with the employer when the employee leaves.