Audio Transcript of Interview on Classic FM on 11 September 2006; IP and Employment Contracts
Once again it is time to answer one of our listener’s questions on Intellectual Property and at the same time win a 5CD set of the music of Felix Mendelssohn. Today, I am speaking to John McKnight, a patent attorney at Spoor & Fisher, the Intellectual Property firm specializing in copyright, patent, design and trade mark law. This week the question from a listener is:
“What rights do you have after leaving a company regarding personal knowledge? For instance if you wrote an article or maybe designed something while at the company and you wanted to use the same information at a later stage but in a slightly different context, can it be used?”
The answer to your query lies in your contract of employment with your employer. Intellectual Property (IP) including patents, trade marks, copyright and know how initially vests in the person who created such IP and just like other property such as houses and cars, the property can be transferred to others. Most employment contracts require the creator of IP to transfer the IP to the employer if the IP was created in the course of your employment.
So, if you were employed to create an artistic work and your employment contract required you to transfer the rights in the artistic work (copyright) to your employer, you could not use that same work (or another which is so close as to be considered an infringement of that work) if you left your employment and joined another firm or went into business for yourself. The same is true for patents, trade marks and know how and in fact, all aspects of IP.
A good example of this concept is the story of John Fogerty, the former lead singer and songwriter for Creedence Clearwater Revival. Fogerty wrote a song called "Run Through the Jungle", the copyright in which was owned by the CCR record company, Fantasy Inc. Fogerty and Fantasy parted ways and in the 1980´s Fogerty created a separate and distinctive song entitled "Old Man Down the Road," which Fantasy could have sworn was the same song, with different lyrics.
Litigation ensued but the Supreme Court of the United Sates said that it was not the same song, just a similar style of music known as "Swamp Rock," which John Fogerty helped create. All was good and done, except that at the end of all the trials, John Fogerty owed his lawyer $1,347,519.15, and he was considered the winner! If you listen to the two songs you will be surprised at the differences. The work in question does not have to be a slavish imitation before you could find yourself in hot water.
Of course you can always draw up a contract and that way you keep hold of your Intellectual Property.
Indeed, and I believe many artists actually go back and re-negotiate to retain the copyright, particularly in their earlier work, because they understand the value of it. There is also a great deal of personal investment which creators have in their Intellectual Property. They are very proud of their creation and they want it back, for many different reasons.
Well, thank you John, thanks very much indeed, we will speak again – no doubt, with regard to Intellectual Property here on Classic FM. John M cKnight there from Spoor & Fisher and don’t forget to keep those questions coming in. Remember to go to our web site and you could win a 5 CD set of Felix Mendelssohn’s music.
SPOOR & FISHER