Who owns IP developed in the course of an employment or contracting relationship?

Friday, August 7, 2020

This interesting case decided last week reminds creatives, especially in design and architecture fields, to make sure they understand who owns any IP developed in the course of an employment or contracting relationship. 

For employees and employers in creative fields, the starting point is to ensure the relevant employment agreement correctly covers the position. While these clauses are fairly standard, they do vary in scope and effect, which might lead to some surprising outcomes.

Without a contractual IP clause, New Zealand law provides fallback positions about IP ownership. However, the ownership outcome varies depending on the type of IP, whether the work was produced by an employee or contractor (or sub-contractor), and what the other contract terms say.

So for contractors and principals alike, it’s even more important to appropriately cover off the IP ownership in the contract - or else your designs, other works, or inventions could end up owned by the “wrong” party, who might not want to hand them over!

Things can get even murkier when it comes to subcontractors, as the subcontractor doesn’t usually have a contract with the principal. If the chain of contracts provide for different IP outcomes, there’s a prospect of all three parties (principal, contractor, and subcontract) being left unhappy with the outcome, and in dispute.

As always, it pays to get specific legal advice if in doubt. Our specialist IP team is available to help with any IP-related queries you might have. Click here to contact us. 

 

Disclaimer: the content of this article is general in nature and not intended as a substitute for specific professional advice on any matter and should not be relied upon for that purpose.

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