Who can bring a claim for copyright infringement?

A claim for copyright infringement can be brought by the owner of original work which is protected by copyright or by a person who has been granted an exclusive licence to the work by the copyright owner.

A non-exclusive licensee cannot bring a claim for copyright infringement.

Who is the copyright owner?

The author of the work, i.e. the person who created the work, will normally be the first owner of the copyright unless he is an employee and the work was created during the course of his employment unless there is an agreement between the employee and the employer to the contrary. For these purposes “employee” means an employee under a contract of service or apprenticeship. A freelance writer, for example, will not therefore, fall within the definition.

In some instances there may be more than one owner, for example, where two people jointly created a piece of work. A joint owner does not have the right to reproduce the work or grant licences to others to reproduce it without the consent of the other joint owner(s). However, a joint owner can bring Court proceedings for copyright infringement independently of the other joint owner(s).

An equitable owner of copyright can bring a claim for copyright infringement. However, he would have to join the legal owner of the copyright into the proceedings if he wishes to obtain a final injunction or damages.

Ownership of copyright can be transferred to another person by way of assignment. However, an assignment of copyright will not be legally binding unless it is in writing and signed by or on behalf of the “assignor” (the person who has transferred ownership of the copyright).

What is an exclusive licensee?

An “exclusive licensee” is a person who has been granted an exclusive licence to use the work, to the exclusion of all others including the person granting the licence.

For an exclusive licence to be binding it must be in writing and signed by or on behalf of the copyright owner and must authorise the licensee, to the exclusion of all other persons including the person granting the licence, to exercise a right which would otherwise be exercisable exclusively by the copyright owner.

If an exclusive licensee wishes to sue for copyright infringement he must join the copyright owner as co-claimant or as a defendant in the proceedings.