Susan Wilkinson supplied communication skills training and materials to London Strategic Health Authority. Did this wording operate to transfer copyright in elements of the deliverables that pre-dated Ms Wilkinson’s work for the LSHA? Stephen Groom reports.
Topic: Intellectual property
Who: Susan Wilkinson vs London Strategic Health Authority
Where: Patents County Court
When: November 2012
Law stated as at: 5 December 2012
Susan Wilkinson sued her former client London Strategic Health Authority ("LSHA") for copyright infringement.
She had previously supplied communication skills training services and materials to LSHA. The supply contract ("Agreement") included the following provision:
"All intellectual property rights associated with any intellectual property arising from the performance of the services and the documents and other work prepared by [Susan] pursuant to the Agreement shall belong to [LSHA]."
The services were duly performed. They included synthesising three existing training programmes for different types of health professional, one of which had been developed by Susan before she contracted with SLHA ("Original Work").
These were adapted by Susan for LSHA to form a broad programme for training the various types of health professional catered for in the three original programmes.
LSHA publishes the Original Work externally
Later and without Susan's consent, LSHA published externally and for third party use, two sets of training materials, a Facilitators Manual and a Learner Pack ("Pack and Manual"). Both included significant extracts from the Original Work.
Susan sued LSHA for copyright infringement, saying that the assignment wording in the Agreement did not extend to the use of the Original Work outside the NHS and therefore LSHA had no right to use it in the Pack and Manual.
The Original Work had pre-dated the Agreement, she argued, and therefore did not "arise from the performance of the Services and the documents and other work prepared by [Susan] pursuant to the Agreement."
LSHA claims an implied licence
LSHA rejected Susan's demands, saying that whether or not the wording actually transferred the copyright in the Original Work to LSHA, the effect of the Agreement was to grant them an implied licence to use and exploit the Original Work in whatever way they wished.
The essence of the project, LSHA said, was the synthesising of three existing training programmes including Susan's, so the Agreement must be regarded as impliedly giving the LSHA rights to use the Original Work.
Therefore, LSHA submitted, the external publication of the Pack and Manual was within the terms of that licence and did not infringe Susan's copyright.
"No assignment of copyright" finds Birss J
After hearing the evidence and argument, Judge Birss Q.C. of the Patents County Court, held that the IP rights assignment wording in the Agreement did not extend to any pre-existing materials.
Therefore Susan's copyright in the Original Work had not been assigned to LSHA. Clearer wording would be needed to effect a transfer of the copyright in works in existence before the Agreement was concluded.
However the good news ended there for Susan.
But the court implies a licence
The Judge agreed with LSHA that based on the wording of the IP provision and what was clearly in the contemplation of the parties, a licence had to be implied in favour of LSHA.
As for the terms of that licence, the agreement between LSHA and Susan did not limit LSHA's ability to exploit the deliverables and gave Susan no right to control or veto their use.
Therefore the implied licence effectively conferred on LSHA the full benefit of Susan's copyright in the Original Works and was not limited in such a way as to prevent LSHA exploiting the Original Works in the form of the Pack and Manual.
Why this matters: this judgment underlines the need to take extreme care with the drafting of intellectual property provisions in all agreements involving the supply of copyright works, such as agreements for the provision of creative advertising services.
In this case, LSHA's submissions on the implication of a licence were successful, but it cannot be best practice to leave such key aspects to the vagaries of judicial interpretation and the parties here could have saved themselves considerable cost and time if the IP rights disposition and usage provisions had been crafted with more care.