A quick primer, courtesy of the Northern District of Illinois, on ownership and infringement of foreign copyrighted works. In Games Workshop Ltd. v. Chapterhouse Studios, LLC, the disputed works were miniature figurines to be used for a tabletop war game about a dystopian science-fantasy world called Warhammer 40,000. The owner of the Warhammer 40,000 universe (books, computer games, a movie, an annual convention, and the game) is an English company. The defendant created, without permission, pieces to be used with the game.
First, on the law of ownership of the copyright for the various pieces that were allegedly infringed:
|The parties agree that because [the plaintiff's] products were created in England, its ownership of copyrights with respect to those products is governed by that country’s law.|
UK law is not too different from US law: in general, initial ownership of a work vests in the author, but an employer will own the copyright of a work created by an employee in the course of his or her employment. Whether a person is an employee (one with a “contract of service”) or an independent contractor (one with a “contract for services”) depends not on the title, but on the underlying facts of the relationship:
|[T]he courts tend to focus first on whether there is the so-called “irreducible minimum” necessary to give rise to an employment relationship: namely “mutuality of obligation” and “control.” There is sufficient “mutuality” only where the employer is bound to provide work and pay, and the employee to provide his labor. Moreover, for the employment relationship to exist, one party (the employer) must be able to exercise control over the other (the employee). In those professions where a worker has a considerable amount of freedom, the control requirement is met if there is a “sufficient framework of control.” . . . However, these factors are not of themselves conclusive. The court will examine all other relevant aspects and provisions to establish whether they are consistent with a contract of service. The courts pay considerable attention to whether typical attributes of employment are present: whether regular sums are paid as wages or salary; whether income tax deductions are made on the “pay-as-you-earn” basis used for employees; whether there is a joint contribution to a pension scheme; and whether nnational insurance contributions are paid by both parties as for an employee.
Lionel Bently & William R. Cornish, 1 UK International Copyright Law and Practice, at UK § 4(1)(b)(i) (Geller, Paul E., ed., Matthew Bender 2009) (internal citations omitted).
Here, the plaintiff supplied an affidavit describing the relationship between the creators and the company that was adequate to defeat the defendant’s challenge that the individuals were not employees.
Next we have copyrights owned by the plaintiff by way of assignment from the English designers. In this situation
|The law is unclear regarding what country’s law governs consideration of such assignments. Saregama India [Ltd. v. Mosley], 635 F.3d [1284,] 1292 [(11th Cir. 2011)] (“[T]here is no guiding case law regarding which country’s law governs the issue of copyright transfer.” (emphasis in original)); see also Itar-Tass [Russian News Agency v. Russian Kurier, Inc.], 153 F.3d [82,] 91 n.11 [(2d Cir. 1998)] (“In deciding that the law of the country of origin determines the ownership of copyright, we consider only initial ownership, and have no occasion to consider choice of law issues concerning assignment of rights.”).|
But, no harm; in both countries a signed writing will do the job, so the plaintiff owned these copyrights also.
What about infringement? The works in question were miniature figurines. Under UK law, the defendant alleges, the works are ineligible for protection by copyright and therefore could not be infringed. But
|Chapterhouse’s argument begins with an incorrect premise. Although disputes over copyright ownership must be resolved under the laws of a work’s country of origin, other issues regarding a claim of copyright infringement, including the question of copyrightability, are determined by the law of the country where the alleged infringement occurred.|
However, there was no summary judgment on the ultimate legal question, copyright infringement. Way too many defenses in the air for that.
Games Workshop Ltd. v. Chapterhouse Studios, LLC, No. 10 C 8103 (N.D. Ill. Nov. 27, 2012).
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