It is very common in certain professions for employees, in addition to performing their usual duties, to contribute assets to the company that can be classified as works of ingenuity in accordance with Royal Legislative Decree 1/1996, of April 12, approving the revised text of the Intellectual Property Law (“LPI”). For example, a professional photographer working for a publishing company that publishes newspapers, or an illustrator working for an advertising agency, may develop creations within the scope of their duties that are eligible for protection under the LPI.
In one of our previous entries, we address the issue of the transfer of intellectual property rights in the case of a commissioned work. In this article, we will explain What happens to those creations that arise within a working relationship?. Are the rights to these works transferred to the employer or do they remain with the employee?
Firstly, in order to determine whether a worker's creation is eligible for copyright protection, we must refer to to Article 10 of the LPI, according to which a creation is Intellectual Property object when the following conditions are met:
- It is a literary, artistic, or scientific work,
- This work is original (you can find more information about this concept at our previous entry),
- Creation is expressed through any medium or format.
Once we have confirmed that we are dealing with an intellectual work, we proceed to Article 51 of the Intellectual Property Law which covers salaried workers. The first paragraph of this regulation establishes that “the transfer to the employer of the rights to exploit the created work by virtue of the employment relationship shall be governed by the terms of the contract, which must be in writing.”Therefore, a mere verbal agreement between the parties is not sufficient; a specific clause in the employment contract is required.
If we are unsure whether we are dealing with an employment relationship, we can consult Article 1 of the Workers' Statute and verify whether the four labor-related criteria required by said legal provision are cumulatively met; that is, the voluntariness, the alienation, the dependence and the financial compensation. It is very important to note that Article 51 does not apply to self-employed professionals or freelancers who provide services to a company. For them, the rules of commercial contracting will apply, as discussed in the previous post on the transfer of rights in cases of work assignments.
In the absence of a written agreement, i.e., if the parties have not established anything in the employment contract regarding the transfer of copyright, it will be presumed that the exploitation rights over the work created by virtue of that employment relationship are transferred exclusively to the employer..
However, this transfer of rights to the employer, whether by contract or by presumed assignment, even on an exclusive basis, is not without limitations. First, the transfer covers solely and exclusively the economic rights and not moral rights, which will always remain with the worker, as they are inalienable and non-transferable. Thus, for example, in photographs published in the newspaper of the publishing company, the name of the worker must always appear in the caption.
In addition, the entrepreneur may not use the work for purposes that are unrelated to the business activity and/or purpose., given that Article 51 establishes the presumption of assignment “with the scope necessary for the employer to carry out their usual activity at the time of delivery of the work performed under said employment relationship.”.
Likewise, the assignment shall be limited to the territory in which the work is carried out and for a maximum period of five years, pursuant to the provisions of Article 43, in the absence of any mention of the duration of the assignment and its territorial scope.
For its part, in its Article 97, The LPI specifically regulates the ownership of computer programs created by a salaried employee, which has certain specific features with respect to the general regime for the assignment of other works. According to this provision, "When a salaried employee creates a computer program, in the performance of the duties entrusted to them or following the instructions of their employer, the ownership of the exploitation rights corresponding to the computer program thus created, both the source program and the object program, shall belong exclusively to the employer, unless otherwise agreed”. This means that the parties may agree otherwise in their contract.
In practice, therefore, The exploitation rights to a work created within the framework of an employment relationship are not always transferred to the employer.. The main reason is that, despite the existence of an employment relationship, the work created by the employee will not necessarily always be carried out in by virtue of that relationship. Therefore, disputes may arise.
For example, what would happen if someone were hired to perform certain tasks and ended up creating something unexpected, but within their working hours? The ruling of the Provincial Court of Ciudad Real, February 10, 2010 rules on this matter, where the issue under debate centered on the ownership of a computer program: “Even assuming, as an accepted fact, that there was an employment relationship between the plaintiff and the defendant, with the former performing, under an employment contract, the role of console operator as an IT assistant, It is clear that the role for which he was hired was not to program [...] as it has also been proven that the plaintiff devised and carried out the program.”. This ruling, as we can see, takes into account whether or not the presumption of transfer of rights in favor of the employer applies if the role for which the employee was hired was precisely the one that gave rise to the work in question, denying that this presumption of transfer applies when the role for which the employee was hired was different.
Given these ambiguities, there are many nuances to consider. Therefore, it is good practice to always include in the employment contract a clause that regulates these cases as comprehensively as possible, depending on whether we are seeking to defend the rights of the worker or those of the employer.
In any case, if you have any questions or concerns about this, at Bamboo we are lawyers specializing in intellectual property, so we can help you.
[Article written by Marilena Kanatá]
