Of copyright and competition
Published:Friday | May 21, 2010 | 12:00 AM
The case brought by Paymaster Jamaica Limited against Grace Kennedy Remittance Services Limited (GKRS) and Paul Lowe raised legal issues not frequently dealt with in our court system and has now highlighted Jamaican law with regard to breach of copyright, breach of confidence, passing off and inducing breach of contract.
The important, and perhaps even groundbreaking, ruling of Justice Roy Jones highlights information not readily appreciated or commonly understood by the public, but which are almost everyday issues grappled with in the highly competitive business world.
Paymaster claimed that it owned the copyright in the multi-payment software it instructed Paul Lowe to create and that in licensing it to GKRS there was a breach of its copyright.
Further, that GKRS committed a breach of confidence by using the business plan which Paymaster had shown it.
Also, that from the logo and signs, Bill Express - the GKRS bill-payment company - committed the tort of passing off. And last, that GKRS induced Paul Lowe to breach his contract with Paymaster.
Copyright is a property right and is entirely statutory.
The Copyright Act provides that copyright attaches to literary works - including computer programmes.
Having authored the multi-payment software programme, Lowe, under the act, is entitled to ownership of the copyright.
The judge then considered whether Lowe subsequently assigned or handed over the copyright to Paymaster and found that, as a matter of both evidence and law, he did not.
Case law establishes that the mere fact that a client commissions a contractor to do work, provides a concept and even pays him is insufficient to grant the client an entitlement to the copyright.
Where there is no specific agreement granting rights to the client and it becomes necessary to imply terms, the implication will be of a grant of a licence only and not assignment
Justice Jones found that Lowe "never intended to assign away, forever, his ownership of the copyright".
Conceiving an idea is not relevant to its copyright. Since copyright protection does not extend to ideas or concepts, but only to the form in which ideas or concepts are expressed - if you contract theservices of someone to create a literary work, steps should be taken, a written contract, assigning the right if it is to be understood that the copyright is to vest in you as the client.
Lowe owned the copyright so there could, therefore, be no issue of its breach.
To establish breach of confidence, there must be wrongful use of one's property by another enabling an unfair competitive advantage or causing detriment to the first person.
The judge found that GKRS had seen the Paymaster business plan and would have been bound by an obligation of confidence in relation to that plan. However, he went on to rule that GKRS had "conducted their own independent research and made their own plans prior to starting Bill Express".
In respect of the claim of passing off, Paymaster sought to allege that the Bill Express logo was likely to deceive the public to use its bill-payment services rather than Paymaster's. There are, however, three necessary elements in order to make out such a claim:
1. The claimant's goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;
2. The misrepresentation by the defendant leads or is likely to lead the public into thinking that his goods are those offered by the claimant;
3. The claimant has suffered or is likely to suffer damage as a result of the erroneous belief generated by the defendant's misrepresentation.
Note that the issue of confusion of the public's belief cannot arise unless and until there is first an established reputation of the goods.
If the first element does not exist, a claim in passing off has no basis.
The judge found that on a comparison of the colours, signs and logos used by both companies, it could not be concluded that Paymaster and Bill Express were connected, therefore the passing-off claim failed.
Having ruled that Lowe was the owner of the copyright in the multi-payment system software and that he could, therefore, license it to other parties, including GKRS, the judge also found that Paymaster's claim for breach of contract and inducing breach of contract could not succeed.
The bottom line: in a competitive business environment there is no legal obligation to be kind, therefore it is prudent to take all possible measures to protect your interests from the very outset.
Teri-Ann A. Lawson is an attorney-at-law with DunnCox in Kingston.