This article is written by Shivangi Ghosh, currently pursuing BA LLB from Amity Law School, Delhi. The article is an exhaustive overview of the sweat of brow doctrine and the meaning of Contract of Hire and Contract for Hire.
This article is aimed to elaborate on the various concepts of Intellectual Property Rights in India. The sweat of Brow is a doctrine that is observed in India as well as other countries to protect the rightful owners of Intellectual property by way of protecting the hard work of the original owner. The latter part of the article shall deal with the concept of Contract of Hire and Contract for Hire that is binding on the employee and signed by both employer and employee which also contains a provision that aims to protect the rights(IPR) of the organization and the author.
Position of Sweat of Brow Doctrine in India
Intellectual Property Rights(IPR) law has laid down certain conditions which are necessary while protecting the Copyright of original owners by providing them with essential prerequisites.
Some of these are mentioned down below:
- It should be Novel and distinct.
- It should be original and not merely copied.
- It should not have been published before or in other words be available in the public domain.
India has followed the Doctrine of Sweat of Brow for a long time. But in courts, the law still protects useful addition and any kind of modification by any party.
Difference between Original Expression and Creativity of the Author
The Court has held neither original expression nor even original research can necessarily be protected under the law. The original works, if compiled also becomes the matter that can claim the copyright as under the law necessary for claiming copyright and even collections such as dictionaries, maps, arithmetic, encyclopedias, etc. are capable of being protected under the copyright law in India.
Earlier, In an old case of Burlington Home Shopping v Rajnish Chibber, it was held that where compilation has been done by the author it shall be copyrightable due to the fact that the hard work has gone into making such a compilation work which was not done before by any other person.
However, the standard principle of ‘originality’ followed in India is not followed as rigidly as it is in England. The Courts have also established that the news, judgment, and facts are literary works but cannot be claimed as copyrights. These are referred to as common property and for public information. The facts of the natural phenomena cannot be twisted and the events will be the same as reported by anyone else but if there’s a story or certain creative skill that has gone from the arrangement and delivery of that particular story then it can be claimed under the copyright law.
Shift to Modicum of Creativity from Sweat of Brow
A significant case for Intellectual property is the case of Eastern Book Company v. D.B. Modak the honorable Supreme Court shifted to Modicum of Creativity and discarded the ‘Sweat of the Brow’ doctrine. The dispute was regarding the copyrightability of judgments. The doctrine of Minimum requirement of creativity was brought in this case. The court said that if copyright has to be established, the work shall have some flavor of creativity along with being novel and non-obvious.
The court shall easily grant protection to additions and modifications made in the judgment of the case by the editors of the Supreme Court Case reporter but judgment and orders of the court cannot be protected and should be available for public use.
Court, also may not grant for the mere compilation of the original work. This helps the real owner to benefit from his copyright rather than providing a protection mechanism to anyone who claims for it.
Contract of Hire or Work Made for Hire Contracts
Contract of hire or Work for hire is a type of independent contracting relationship that originates between two parties. Where the company relies on another party for creative work that shall be subject to protection under intellectual property rights. This relationship is carefully drafted in the work for hire Contract.
The scope of the work
The scope under the employment services and between the employer and employee shall be vast. But, in the case of a work for hire contract, the scope shall be limited. The following can be in the scope of work:
- Created as a contribution to a collective work
- Created as audio or visual work
- A translation
- A subsidiary work
- A collection
- An instructional manual
- Material test or answer material for a test
This shall not be exhaustive, work for hire can be vast. The agreement should be constructed in a clear manner that does not infringe any rights of the parties involved in such types of contract.
IP Assignment Agreement
Work for hire provides an employer contracting for creative work greater protection than an assignment, in part because rights vest directly in the employer and are not for the usage of the other party.
However, given the gray areas of the agreement that if such creation is capable of being assigned to the company or not, A backup of IP assignment agreement shall be signed between both parties to protect any such work that arises. An assignment agreement operates to transfer the rights of the contracted creator to the company that paid the consideration.
The Contract for Hire or Employment Contract containing provisions to protect IP rights
Employment contracts should contain ownership and assignment clauses on ownership of the intellectual property that is created by any employee during the course of his or her employment, to prevent disputes and possible theft is infringement which can prove to be a loss for the employer in the business.
To prevent any future potential disputes concerning whether a work was created during the course of the employment, it becomes essential to clearly define the nature and scope of the employee’s job description in the contract before hiring. This contract drafting will help in determining who is entitled to become the owner of that particular intellectual property rights(IPR) as any work created outside the scope of the employee’s job belongs to the employee and not the employer. Any work made shall be entitled to the employee to get fair remuneration and bonuses but will not be the owner of such work created.
Confidentiality and Non Disclosure Clauses
Employment contracts should contain provisions on confidentiality and non-disclosure clauses which are made in order to protect the trade secrets and confidential information of the employer to which the employee may have access during the course of his employment in the organization. This is essential to avoid risks of any sort of intentional and unintentional disclosures by the employee.
The trade secrets are important to the Company and as soon as it is disclosed and open to the public domain, it loses all its value. It has also been said that organizations that successfully protect their secrets also further strengthen their other intellectual property assets and it becomes tough to infringe. For instance, the recipe of Coca-Cola and Google search algorithms are of the highest value which helps them have a competitive edge in the market.
This clause requires that a worker should not disclose any trade secret and confidential information of the employer or other third party which belongs to the organization. The scope and definition should be added in the agreement including the kind of confidential information the worker will have access to and or be required to use and other intellectual property(IP) and business information that should not be disclosed by the employee.
Non-Compete Clause in the Agreement
Non-compete clauses are essential as they protect the organization by non-disclosure of trade secrets by an employee beyond the termination. This clause elaborates on the duty of the employee to not compete with the employer, organize a competing business, and any other employer so as to be underemployment with the employer’s competitor(s). They restrict the use or leakage of trade secrets by employees after their employment for a particular period and within a specified geographic area, as an ex-employee who has the knowledge of this information could also be an important asset to a competitor.
Generally, these provisions are not enforceable in common law, except it’s reasonable in duration, geographical limits, and therefore the scope of protection of the asset In some jurisdictions, they’re void or voidable as per the employee as being in contact with any such information that may come within the scope of trade and therefore the freedom of an ex-employee to find employment or practice any profession. However, in other jurisdictions, it’s enforceable if it’s a reasonable period of time, demographic limits, and limited in scope to the protection of the asset.
An Old English case on this clause is that of Dyer. During this case, a practitioner signed a non-compete contract with the apprentice to forgo the latter’s debt if he doesn’t involve in his trade in the same city for a period of six months after the termination of his apprenticeship. The Court struck down the clause for being against the public policy. However, in a different case of Mitchel v. Reynolds, the Court stated that involuntary limitations covenants in check of trade are void while voluntary covenants should be allowed provided they specifically support the interest of the employer or former business owner to be actively protected, the reasonableness, scope, time and place of the restrictive covenant. In the case of PepsiCo Inc. v. Redmond, these provisions were applied to restrict an employee from working with a competitor organization. The court held in favor of PepsiCo and was helped by the position offered by Quaker and Redmond’s access to sensitive marketing and distribution strategies as being at the managerial position at PepsiCo, Redmond would have disclosed PepsiCo’s trade secrets if he was allowed to simply accept the given offer of employment.
In a case of High Court, the Court held in the contract of parties which stated that for a period of two years immediately following the cessation for whatever reason of this agreement, the employee shall agree not to work in the same or similar capacity in any company whose business is the same or similar to that of the employer except with the prior written permission of the concerning employer to do so, which permission will not be unreasonably stopped as though it will normally be withheld if the employee intends to work in the same or similar business that is carried out by the company.
Non-compete clauses have to be drafted with proper caution by specifying the period, the activity covered and the duration of the applicability of the particular clause shall be reasonable and cannot go beyond, only as far it protects the business.
Most businesses are successful only by their methods or strategies of protecting their assets of intellectual property rights which should be protected by the employer to maintain their respective position in the industries. Having provisions drafted carefully in employment contracts are vital as they define the ambit of the employee and create rights of both parties. It is a guiding principle of law that parties are bound by their contracts and where the employee breaches any of these obligations an employer may seek remedies from the court including injunctions or damages to restrict any or potential breach of contract and or infringement of their intellectual property rights.
On other hand, the Doctrine of Sweat of brow has been modified to Modicum of Creativity which shall be considered as a fundamental aspect while approaching the courts for enforcing the copyright of subject matter. Different jurisdictions may have different ways to define originality. But the original work shall be created by adding or modifying which would include some skill and some effort along with creativity. The mere compilation, which was previously protected, is no longer protected which has been done to protect the authors to benefit from the intellectual property rights law.
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