Copyright and collaboration

Like many large organisations, education institutions often enter into a variety of collaborative agreements.  The recent case of Susan Mary Wilkinson v London Strategic Health Authority is a good reminder of why when doing so intellectual property rights should always be considered at an early stage.

The court determined issues of copyright infringement in a case in which Dr Wilkinson had, under a written agreement, created a set of training materials for use by the London SHA.  The training materials reproduced material from works in respect of which she already owned the copyright.

Importantly, clause 6.6 of the agreement provided: "all intellectual property rights associated with any intellectual property arising from the performance of the services and the documents and other work prepared by [Dr Wilkinson] pursuant to this Agreement shall belong to [the London SHA]."

Dr Wilkinson’s position was that she had not surrendered her intellectual property rights in her earlier work and remained free to use and licence the ‘Wilkinson variant’.  She claimed that the extracts reproduced in the London SHA training programme had been incorporated pursuant to an implied licence limited to the purposes of that programme. The London SHA argued that clause 6.6 has assigned the copyright in her earlier work and did not accept that Dr Wilkinson had any right to limit its exploitation.  The court determined that the London SHA had an implied licence in respect of the reproduced material and could exploit its copyright in the new material as it saw fit.  Equally, Dr Wilkinson was free to exploit her Wilkinson variant as she saw fit, as she had not surrendered the copyright in it. 

This case shows how important it is, when copyright works are commissioned, to clearly provide in the agreement who owns the copyright in which works and what rights each party has in respect of using and exploiting the work.  This should avoid a result which either or both parties may not want.