A recent case in the UK’s Intellectual Property Enterprise Court looked at the issue of whether an employee could claim copyright over software developed on a personal computer, at home and outside normal office hours. In this note we briefly look at the case and the implications for employers.
Overview
In Penhallurick v MD5 Ltd [2021] EWHC 293 (IPEC) the Court held that the copyright in various literary works relating to software Mr. Penhallurick created during his tenure with former employer MD5 belonged to MD5. The Court found that the works were created in the course of Mr. Penhallurick’s employment with the result that MD5 was deemed the owner of the works (under the Copyright, Designs and Patents Act 1988), despite the fact that some of the work was done from Mr. Penhallurick’s home, outside normal office hours and using his own computer.
Key to Judge Hacon’s decision was the fact that making certain software for use in forensic computing was the central task for which MD5 was paying Mr. Penhallurick at the relevant times, which created a ‘strong and primary indication’ that work on the software was done in the course of employment. That a significant proportion of the work was being done in Mr. Penhallurick’s home and using his own computer was not enough to displace this indication, nor was any other factor.
Employers will be reassured by this decision given the current need for home-working and the likely increase in employees splitting their working time between the office and home going forward as COVID-related restrictions begin to ease. However, we note that this decision applies to copyright only, and that the position could well be different in respect of employee inventions should a similar case come before the courts in that context.
If you have any questions concerning the material discussed in this client alert, please contact the members of our Employment and Litigation practices.
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