Copyright, like patents, trademarks and designs, is a form of intellectual property law. In South Africa, copyright differs from other types of intellectual property seeing that copyright subsists automatically, provided works are original and reduced to a material form . Consequently, no registration procedure takes place, as is the case with trademarks, patents and designs. The Copyright Act records the types of work that are eligible for copyright protection, one of which is computer programs. A computer program according to the Copyright Act means ‘a set of instructions fixed or stored in any manner and which, when used directly or indirectly in a computer, directs its operation to bring about a result’.
In practice, arguments over ownership of software and computer programs happen far too often with most of these arguments being largely based upon the same sequence of events occurring – someone pays a professional developer to write code without establishing a written agreement dealing with who owns that code after its creation.
The general rule is that the author of a copyrighted work is the first copyright owner of that work. On the face of it this rule seems rather simple, right? However, what happens in the case where the author is employed to create a work, such as a computer program, or where a person is commissioned to create a work? Where someone employs a person/developer to write code for them, the person who employed the developer to create and write the code (i.e. the employer) owns the code, provided that the code was written in the course and scope of the developer’s employment. This is an exception to the general rule as the developer may be the author of the code but the employer, in this context, will own the copyright therein.
In instances where the developer is not an employee, the general rule that the author of a copyrighted work is the first copyright owner, will apply. The author of a computer program is defined by the Copyrights Act as a person ‘who exercises control over the making of the computer program.’ Yet, this presents another important question – who exactly is the person who exercises control over the making of a computer program, especially in the case where the creation of the computer program was commissioned? Two recent South African cases deal with this topic, the first being the Haupt t/a Soft Copy v Brewers Marketing Intelligence (Pty) Ltd and Others case.
In the Haupt case, a developer was commissioned to create a computer program, however, the commissioner did not simply state what was required from the developer and give the developer flexibility in developing the software required. Instead, the commissioner set out comprehensive detailed instructions on what was required and communicated regularly with the developer to ensure that these instructions were followed precisely. The developer also submitted the work regularly to the commissioner for review and approval throughout the project.
The court stated that in this case, the commissioner’s involvement throughout the development process was very intimate and as such, the commissioner can be said to be the author of the computer program developed despite the fact that the developer wrote it. The commissioner exercised full control over the developer’s creation. The court went on further to state that it is not essential for the commissioner to comprehend and understand precisely what the developer was doing when creating the computer program, from a technical viewpoint, but that the commissioner merely needed to adequately control the development and progress thereof to be considered the author and thus owner of the copyright therein.
In a second and more recent case, the Bergh and Others v The Agricultural Research Council , the court confirmed the decision handed down in the Haupt case. In the Bergh case, a developer (Bergh) developed a program for the Agricultural Research Council (‘ARC’). The ARC sought to convince the court that the ARC was the owner of the copyright in the program developed for the ARC. Bergh was not an employee of the ARC and there were no agreements set up between Bergh and the ARC establishing copyright ownership. All the parties acknowledged that Bergh was commissioned to write the program required by the ARC. But to what degree did the ARC control the creation of the program?
The court stated that the ARC’s actions to simply review the process and test the program created did not establish control on the part of the ARC. The evidence provided indicated that Bergh developed the program using his own skills and without any instructions or approval from the ARC. Bergh, was thus, in control of the making of the computer program and consequently the author and owner of the copyright in relation hereto.
In conclusion, in order to be the author of a commissioned computer program the commissioner needs to control the development process rather closely and intimately. Defining the functional specifications and merely testing the program does not establish the control required. To avoid the uncertainty whether the commissioner is the author and first owner of the computer program or not it is advisable to agree to the assignment of the developed computer program to the commissioner. Important to note that no assignment of copyright shall have effect unless it is in writing and signed by or on behalf of the assignor.
In order to side-step possible unpleasant consequences contact us Claire Gibson at firstname.lastname@example.org or Gerrie van Gaalen at email@example.com in our Technology and Innovation law department for assistance and guidance. This may include assistance and guidance on Software-as-a-Service programs or websites, mobile applications, Platform-as-a-Service etc… Shedding light on copyright ownership ambiguity is, in the long run, safer (and cheaper) than trying to remedy it after the fact.
This article is for general information purposes and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact us At DKVG Attorneys for specific and detailed advice.