Joint ownership of designs

Joint ownership of IP is a mess, and my advice is always "Don't go there!". But sometimes it is unavoidable, and that tends also to be when no prior agreement has been drawn up to regulate the rights of the parties. So, if you are a co-owner, can you, without prior permission,

• Work the invention yourself (and have someone work it for your "home use")?
• License others non-exclusively?
• Assign your share?
• Sue third parties?

AIPPI's Q194 reviews the position worldwide, and the conclusion seems to be that each country has a different set of answers, and in many cases the answer is different for patents than for copyright, and unknown, except by analogy, for designs. And even there, it isn't clear whether patents or copyright are the appropriate basis for analogy. And as if that wasn't confusing enough, what happens where the co-owners are in different countries - as is often the case where the final production design work is done in Taiwan or China?

The Design Law Wiki carries an article analysing the EU position. It isn't pretty, but , very broadly, most (not all) countries responding allow each individual co-owner to sue separately of the others, but do not allow her to license separately of the others. Which laws apply to a jointly-owned Community Design are determined by the complex, yet incomplete, algorithm of CDR Article 27, for which Spain is the default country. We can only hope that AIPPI succeed in finding a harmonised solution, and that the EU can be persuaded to follow it.

Commissioned Designs and Employee Designs

To jump-start this blog, here is a link to the long-awaited first ECJ words of wisdom on Community Designs, in Case C-32/08 FEIA . Strangely, the issue isn't one of the fundamentals of design protection, but what, to the unobservant, might appear to be a bit of a no-brainer.
Anyway, here are the questions referred by the Alicante court:

1. Must Article 14(3) of [Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs be interpreted as referring only to Community designs developed in the context of an employment relationship where the designer is bound by a contract governed by employment law whose provisions are such that the designer works under the direction and in the employ of another? or
2. Must the terms ‘employee’ and ‘employer’ in Article 14(3) of Regulation No 6/2002 be interpreted broadly so as to include situations other than employment relationships, such as a relationship where, in accordance with a civil/commercial contract (and therefore one which does not provide that an individual habitually works under the direction and in the employ of another), an individual (designer) undertakes to execute a design for another individual for a settled price and, as a result, it is understood that the design belongs to the person who commissioned it, unless the contract stipulates otherwise?
3. In the event that the answer to the second question is in the negative, on the ground that the production of designs within an employment relationship and the production of designs within a non-employment relationship constitute different factual situations, (a) is it necessary to apply the general rule in Article 14(1) of Regulation No 6/2002 and, consequently, must the designs be construed as belonging to the designer, unless the parties stipulate otherwise in the contract? or (b) must the Community design court rely on national law governing designs in accordance with Article 88(2) of Regulation No 6/2002?
4. In the event that national law is to be relied on, is it possible to apply national law where it places on an equal footing (as Spanish law does) designs produced in the context of an employment relationship (the designs belong to the employer, unless it has been agreed otherwise) and designs produced as a result of a commission (the designs belong to the party who commissioned them, unless it has been agreed otherwise)?
5. In the event that the answer to the fourth question is in the affirmative, would such a solution (the designs belong to the party who commissioned them, unless it has been agreed otherwise) conflict with the negative answer to the second question?

The Regulation is pretty clear that it is referring to employees, and the question of commissioned works was raised, but not settled, during the interminable legislative negotiations. That results in Community Designs being treated differently to UK registered and unregistered designs (and, it seems, Spanish designs too), where ownership vests in the commissioner, but in line with other EU legislation (eg the software directive and the chip topography directive). It is a bit of a trap for the unwary, I suppose, as the UK government intervened to say.

We now have the AGO's Opinion of 26th March 2009 - not, alas, in English so far, but here is a link to the French version.

The answer would appear to be that "employed" does indeed mean "employed". Hurrah. Will the ECJ, as usual, agree? Stay tuned. And if you're looking on the ECJ search page, don't bother selecting "Intellectual Property" - for some reason, this one comes up under "Free Movement of Goods".