» Implied Licences

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In some cases there will not be any understanding between parties regarding an implied licence to use intellectual property rights. A common example of this is software agreements. If you have commissioned a third party to create some bespoke software for your business you may believe that you own the copyright in that software. You do not, if you do not have a written document, signed by the software programmer, transferring the copyright in that software to you, with an indication of how much has been paid for the work, the “consideration”.

A failure to get such a written assignment means that you can not allow any other party to work on your software programme to finish it, improve it, or update it, without the authority of the original software programmer.

If you are already in this position it can be remedied by getting a retrospective assignment. However negotiating payment with the software programmer after the event may prove more costly than getting the assignment up front.

It is also possible to get an assignment of copyright for future works. So if you work regularly with third party contractors who create copyright works for you, then get them to sign a document transferring the copyright in all the work they do for you – now and in the future – to you for the consideration price already agreed.

The reverse of this situation also arises of course. I have clients who do not realise that by creating a copyright work for a customer, that customer has certain rights to use it, even if there is no written agreement regarding the control of the copyright work. In such a situation my advice to clients if they want to regain complete control of the copyright work, is that they need to terminate the implied licence with their customer.

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© 2007 SARA LUDLAM www.ludlams.co.uk