There are several grey areas, but employers can take steps to stop staff lifting material.
The film The Social Network dramatises the story behind the setting up of Facebook. Early in, Facebook founder Mark Zuckerberg, played by Jesse Eisenberg, is asked by fellow Harvard students the Winklevoss twins to help them set up a website. Instead, he goes off and sets up “The Facebook”, which rapidly becomes one of the most successful dot-com businesses of all time. Outside the Hollywood version of events, the facts surrounding what actually happened are still hotly disputed by both sides. But what is known is that Zuckerberg later found himself being sued by the brothers for allegedly taking their intellectual property.
The Facebook saga is just one example of what happens week in week out in the world of business, where one party claims that another has unfairly exploited an idea or invention that doesn’t belong to them.
But what happens when the culprit is an existing or former employee? Can that person take something that properly belongs to their employer and use it for themselves, or can they be prevented from doing so?
GREY AREA OF CREATIVITY
The short answer is that employers can indeed take steps to protect themselves against such things happening. But very often, they fail to do so.
Generally speaking, when an employee creates something in the course of their employment (whether an invention or a piece of work protected by copyright), the title to any relevant intellectual property rights will usually belong automatically to their employer. So far, so good. This contrasts with when the person is a contractor or is self-employed, where different rules may apply.
There will very often, however, be grey areas and room for dispute – even in an employment situation. For example, many people work from home or on their own computers these days. The dividing line between what is or is not “in the course of their employment” may not always be clear. And when it comes to protecting intellectual property, some things are more difficult to safeguard than others. An “idea” behind something, for instance, may not be protectable at all.
It’s rather boring, but the starting point is always to make sure that all employees (and, where appropriate, contractors too) are required to sign a properly drafted contract before they join. It not only makes it immeasurably easier for an employer to enforce its rights while the employee is still working for them, but also – and crucially – for a time after the employment ends.
Although certain obligations between an employer and employee are “taken as read” under the law, without requiring anything to be in writing, others are not. For example, if you want to place restrictions on how a former employee can compete with you after he or she has left, you need to ensure that they are signed up to a contract which contains proper restrictive covenants.
If you think one of your employees has copied a load of material from the workplace before their leaving date, has downloaded a customer contact list, or if they’ve set up a new company using a brand name that came out of a company brainstorming session, it could be time to call in the lawyers. And if you are concerned, don’t delay – it may harm your prospects of obtaining an injunction, or limiting the damage.
Michael Gardner is partner and head of intellectual property at Wedlake Bell.
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