A copyrighted work is an original intellectual creation of the author expressed in a certain form, regardless of its artistic, scientific, or other value. According to the Law on Copyright and Related Rights (Official Gazette of RS No. 104/2009, 99/2011, 119/2012, 29/2016 - Constitutional Court Decision, and 66/2019) ("Law"), a copyrighted work may be literary, scientific, artistic, or other work in various forms of expression, such as written works, musical, visual, dramatic works, as well as computer programs and databases. A work is protected if it represents an original intellectual creation and is expressed in a specific form.
The concept of originality in copyright works differs from the concept of distinctiveness in trademarks or the concept of originality in the sense of innovation in patents. Thus, it is not required that a copyrighted work introduces novelty in the field from which it originates, considering that in the notion of a copyrighted work, originality is purely subjective and cannot be evaluated by predefined criteria. Also, the extent of the work protected by copyright is irrelevant, as in practice there are cases where even a single sentence may be considered a copyright work.
What does a copyrighted work created in employment represent?
A work created during the employment contract means a copyright work that the employee has created while performing his work tasks and obligations under an employment contract or other form of work engagement. Such a work, although created by the employee as the author, has a special status concerning the transfer and use of rights to the work between the employee and the employer.
What scope of copyright does the employer hold over a work created in the employee’s employment?
To understand which rights the employer holds over a copyrighted work created during employment, it is necessary to understand which rights exist over a copyrighted work, i.e., which rights the copyright holder can possess. On a copyrighted work, there are economic and moral rights of the author.
- Exclusive rights – where the rights holder independently decides on the use of the work and can prevent others from using it without consent but may also independently transfer to others the right to use the copyrighted work.
- Non-exclusive rights – where the rights holder is not authorized to prohibit someone else from exploiting the copyrighted work, nor authorized to assign his right to others.
The rights of the employer in respect of the employee’s work are primarily exclusive economic rights, which apply within the employer’s field of business and last no longer than five years from the creation of the work. During that period, the employer has the right to use, publish, and protect the work, while the author retains moral rights. After the expiration of the five-year period, the economic rights return to the author (employee).
This may also be regulated otherwise based on a contract or an internal act of the employer, also the contract also stipulates the remuneration to which the author (employee) is entitled, depending on the effects of exploiting the work. Furthermore, the employer is obliged to mark the author’s name, pseudonym, or sign on the copyrighted work.
It is interesting that although the author (employee) is not the holder of exclusive economic copyright during this period, in the case of publishing the collected works of the author, the author or employee may publish the work before the expiration of the five-year period, and this without the employer’s special permission.
Exception to the five-year duration of the employer’s exclusive economic copyright
This exception applies to computer programs and databases created during employment. For these types of works, the employer may acquire perpetual exclusive economic rights, meaning that the employer retains these rights even after the expiration of the five-year period, unless otherwise agreed in the contract.
This is because software and databases are often key business assets of the employer and represent value that the employer regards as its principal property.
An interesting case from practice is the Supreme Court of Cassation ruling (Prev 356/2017(1) dated 30 March 2018), which established that the employer has the right to seek protection of the copyrighted work created during employment only within five years from the completion of the work. After this period, the employer lacks active standing for enforcement.
Also, if the employer claims an unlimited duration of exclusive economic rights in works other than computer programs and databases, it is necessary that the general act of the employer regulating this issue is registered with the competent authority or that the matter is regulated by the employment contract concluded with the employee. In this concrete case, the change of the company statute regulating the employer’s exclusive economic rights was not registered with the Business Registers Agency, so the employer could not be a perpetual holder of exclusive economic rights.
Conclusion
Copyright in a work created in employment represents a special legal category where the author, i.e., the employee, retains moral rights, while the employer acquires exclusive economic rights to use the work within its business activities, usually for a period of five years from creation. After that period, economic rights “revert” to the author, except in the specific case of computer programs and databases, where the employer may hold exclusive economic rights indefinitely.
Proper and clear regulation of rights relations between employer and employee by contracts and internal acts is crucial to avoid future disputes. Special attention must be paid to detailed regulation of rights in software, bearing in mind that most disputes regarding copyrighted works created in employment occur in software development and the IT industry.
Author:
Tara Govedarović, Junior Associate
Email(s): tara.govedarovic@prlegal.rs; legal@prlegal.rs;