A computer program as an object of copyright: how to transfer the rights to it correctly?
Copyright law is becoming increasingly important nowadays because of dissemination of information technologies. It directly protects and regulates relations on computer program, entitles the author of computer program with economic and moral rights. But who will obtain these rights if the computer program is created for hire (under Labour Agreement or Contract for the provision of services)? To answer this question, we will have to start with clarification of rights that arise when a computer program is created.
Pursuant to legislation of Ukraine, author of computer program is entitled with such moral rights as to require or prohibit the indication of his name or pseudonym, to require the work integrity preservation and to resist to any changes or other infringements of the work that may harm author’s honor and reputation.
The economic rights include the exclusive right to authorize or prohibit use of the work, particularly by reproduction and/or processing (changes), distribution, import of works etc. The list of author’s economic rights is not exhaustive.
It is worth mentioning that moral rights can not be transferred (alienated) to other persons. Thus, the author keeps all moral rights regardless of whether the computer program was created under a civil agreement, or within work duties performance. However, there are several legal ways how to limit these rights.
Unlike moral rights, economic rights can be transferred (alienated) to other person. However, legislation regulates the distribution of economic rights on computer program created under Labour Agreement or Contract for the provision of services differently. The Supreme Court of Ukraine ruled that economic rights on the object created due to Labour Agreement performance belong to both employer and employee jointly, unless otherwise is stipulated in the agreement. In practice such agreements by which all economic rights are transferred to the employer are concluded very often.
Another important point is that all ways and scopes of work use shall be defined in the contract, as all ways not provided in the contract are considered to be not transferred. There should also be determined how economic rights are transferred to the employer (usually on the basis of Act of transfer).
In addition, transfer of copyright on a work which contains works of other authors is of no less importance. Employee is obliged to inform the employer about that fact and to use only licensed works. Moreover, if employee uses his own works created not within labour relations, it is recommended to conclude one more agreement on transfer of these rights.
Civil law prescribes creation of intellectual property objects at a request. It is stipulated that in cases specified in law certain moral rights may belong to the customer. But unfortunately, current legislation does not provide such cases. Economic rights to object created at the request belong to its creator and to the customer jointly, unless otherwise is provided by the agreement. If the computer program includes works of art, economic rights to it belong to its author. Moment of the Delivery-acceptance act signing is the moment of copyright transfer.
Computer program can be created under the Contract for the provision of services. This contract should provide reason and time of the copyright transfer. Usually it is an Act for Services Rendered Under the Contract signing. But pursuant to recent legislative amendments, such act is not obligatory if it was concluded with a foreign contractor, as in such case it can be incorporated, e.g., by invoice issuance. In this case, the transfer of copyright remains relevant.
Family law provisions concerning tenancy by the entirety should be taken into consideration while transferring of the copyright. Pursuant to current legislation of Ukraine, software created by the spouses during marriage is tenancy by the entirety. Thus, the other spouse may apply to court with a requirement to recognize the agreement void on the grounds that it was concluded without his / her consent. So these provisions should be taken into consideration while alienating software and transferring economic rights to it, as in case of marriage termination the other spouse is entitled to some economic rights or to recognize an agreement by which they were transferred void.
Finally, everyone should take into account that the transfer of intellectual property may vary in different jurisdictions. For example, under the legislation of the United States in the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright. There is the similar provision in legislation of the United Kingdom, pursuant to which where a literary work is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to any agreement to the contrary. Thus, in some jurisdictions employer/customer are deemed authors of the computer program and are vested with both moral and economic rights, as opposed to Ukrainian legislation.