Copyright: Written Assignments Mandatory

COPYRIGHT: WRITTEN ASSIGNMENTS MANDATORY
ALEXANDRE C. ARCHAMBAULT AND GONTRAN PAQUETTE-BARETTE
ROBIC, LLP
LAWYERS, PATENT AND TRADE-MARK AGENTS
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The Copyright Act states that an employer is the rightful owner of a work created by
an employee during the course of employment. But what happens when the owner of
the work does not transfer his or her rights properly?
The Federal Court has recently ruled (Harmony Consulting Ltd. v. G.A. Foss
Transport Ltd., 2011 FC 340) on what happens when the assignment of a copyright
in computer software is not performed according to the Copyright Act’s provisions.
Mr. Sushil Chari began developing the Petro Dispatch software in 1998 while under
employment with and as part shareholder of Atrimed. Subsequently, Mr. Chari
conveyed the copyright in Petro Dispatch, without any written transfer, i.e. “mentally”,
to his newly incorporated company Harmony. It is unequivocal that Mr. Chari was the
legitimate author of the Petro Dispatch software, but questions remains as to the
rightful ownership following the corporate changes.
Harmony used a nunc pro tunc (Latin phrase meaning "now for then") assignment to
support its claim that it is the owner of the Petro Dispatch software. The nunc pro
tunc assignment, dated June 10th, 2009, does not create rights but allows a party to
register a former copyright transfer that was not registered at the time of the transfer.
A precedent established by a Federal Court of Appeal decision indicates that this
type of assignment requires proof of the intention of the assignor with regards to the
object and effect of such an assignment. Mr. Chari attempted to fulfill this
requirement by citing that he had “mentally” transferred the Petro Dispatch software
to Harmony in March of 2000, as described in the evidence adduced at trial by Mr.
Chari.
However, this argument concerning the nunc pro tunc assignment did not convince
the judge, seeing that this procedure does not address the constraints of the
Copyright Act, which requires that a transfer of rights be in writing. This requirement
© CIPS, 2011.
From ROBIC, LLP, multidisciplinary firm of Lawyers, and Patent and Trade-mark Agents. Published
in the Spring 2011 (Vol. 15, no. 2) Newsletter of the firm. Publication 068.140E.
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was confirmed by the Court in its ruling. The result was that Atrimed was deemed to
be the owner of the Petro Dispatch software, considering the fact that it had been
developed by Mr. Chari while he was Atrimed’s employee.
Advice: If you have to transfer intangible assets, such as copyrights, from one
business to another, do it in a immediate way (quickly) and above all in writing!
ROBIC, un groupe d'avocats et d'agents de brevets et de marques de commerce voué depuis 1892 à
la protection et à la valorisation de la propriété intellectuelle dans tous les domaines: brevets, dessins
industriels et modèles utilitaires; marques de commerce, marques de certification et appellations
d'origine; droits d'auteur, propriété littéraire et artistique, droits voisins et de l'artiste interprète;
informatique, logiciels et circuits intégrés; biotechnologies, pharmaceutiques et obtentions végétales;
secrets de commerce, know-howet concurrence; licences, franchises et transferts de technologies;
commerce électronique, distribution et droit des affaires; marquage, publicité et étiquetage; poursuite,
litige et arbitrage; vérification diligente et audit. ROBIC, a group of lawyers and of patent and
trademark agents dedicated since 1892 to the protection and the valorization of all fields of intellectual
property: patents, industrial designs and utility patents; trademarks, certification marks and indications
of origin; copyright and entertainment law, artists and performers, neighbouring rights; computer,
software and integrated circuits; biotechnologies, pharmaceuticals and plant breeders; trade secrets,
know-how, competition and anti-trust; licensing, franchising and technology transfers; e-commerce,
distribution and business law; marketing, publicity and labelling; prosecution litigation and arbitration;
due diligence.
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