Features
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management at
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■ Health and Safety at work Act 1974
Pilz
http://tinyurl.com/2svkz6
■ New machinery directive
MTA
http://tinyurl.com/3cftc2
■ Doncasters group supported by
private equity
Doncasters
http://tinyurl.com/3cy9uz
■ The sausage machine
Eversheds
http://tinyurl.com/3djbvs
november 2007
the creator in law, in certain
circumstances the right can be said to
be held by the creator on trust for a
third party - the equitable owner. That
third party is entitled to require the
legal owner of the IP to assign it to
them.
Q. We sometimes commission third
parties to create work for us which
we then exploit. Does that mean we
can require them to assign the IP
rights to us?
A. The issue of IP rights in
commissioned work is by no means
straightforward and each case will
turn on its own facts. If the question of
ownership is dealt with in the contract
for the commission then - assuming it
is enforceable - no problem arises. If
not the IP usually belongs to the
creator, that is the commissioned
party.
Q. Surely we must have some rights,
even if it is only to possession,
otherwise what are we paying for?
A. Depends what you’re
commissioning. If you commission a
company to design a measuring
Enquiry Number: 10 Enquiry Number: 11
production management
system, it must be implied that you
can reproduce and use that system as
that was the very purpose for which it
was commissioned.
Q. Will there be situations when we
need to own the IP outright?
A. Possibly. Two examples: firstly if
you were to commission design for a
measuring system for the purpose of
reproducing and selling the same and
you didn’t want the commissioned or
any other third party to have the right
to also do so; or secondly if a
commissioned party is working on a
joint project with your employees and
you do not want him to be able to
exploit either the joint work or, more
importantly, any distinct contribution
he may have made.
Q. What if there is nothing in
writing? You said a moment ago a
term could be implied?
A. There are set legal principles as to
whether a term can be implied into
any contract. In the context of IP,
circumstances where those rights
need to be assigned to you are only
likely to arise if you need the
MWP
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