Manager (Patents and Trademarks), Attorney

Manager (Law Practice)

During the consultation session, a question was received from a senior specialist of a Belarusian enterprise exporting flax products: What kind of relations can an employer have with designers, artists and other specialists who develop designs of fabrics and woven products in order to fulfill an official task.

 Answer: Designs of fabrics and other products (rushniks, napkins, tablecloths, towels, blankets, bedspreads, sheets, pillowcases, duvet covers, curtains, drapes, grips, mittens, aprons, bread boxes, etc.) may be protected as copyright objects in the form of works of art, applied art and design, provided that they are the result of creative activity, regardless of the purpose and quality of the works, as well as the way they are expressed.

Copyright applies to both published and unpublished works that exist in any objective form:

images (drawing, sketch, painting, plan, scheme, photo frame, etc.);

three-dimensional (model, layout, etc.);

electronic, including digital;

other forms.

The copyright for a work for hire belongs to its author, taking into account some features, namely:

A work for hire is a work of science, literature, art (a part of it that has an independent meaning) created by the author on the instructions of the employer or in order to fulfill the duties specified by the employment contract.

The legislation identifies two grounds for recognizing a work as one for hire:

The first basis for recognizing a work as one for hire can be only an obligation, which is provided for by an employment contract and does not go beyond the scope of the author's labor obligations, defined in accordance with the Labor Code. At the same time, according to the Labor Code, an employer does not have the right to require an employee to perform work that is not stipulated by an employment contract, except in cases provided for by legislative acts.

The second reason for regarding a work as one for hire is the written (oral) assignment of the employer.

The exclusive right to a work for hire from the moment of its creation passes to the employer, unless otherwise provided by the contract between him and the author.

In cases stipulated by the contract between the employer and the author, if the exclusive right to a work for hire belongs to the employer, the author (the author's heirs) has the right to receive royalties for the use of this work.

If the employer does not start using this work within five years from the date when the exclusive right to the official work has passed to him, or does not transfer the exclusive right to this work to another person, the exclusive right to the official work passes to the author, unless otherwise provided by the contract between the employer and the author.

After the liquidation of the employer, the exclusive right to the official work automatically passes to its author, in the event of the death of the author – to his heirs.

The author of a work for hire has no right to prevent its publication by the employer, as well as to exercise his right to recall.

An employer who has the exclusive right to a work for hire has the right to indicate his name or brand's name or to require their indication when using a work for hire.

The employer, who has the exclusive right to a work for hire, has the right to make changes, abbreviations and additions to it caused by the need to adapt the work to the specific conditions of its use without obtaining the consent of the author of the work for hire unless otherwise provided by the contract between the employer and the author. At the same time, the employer is obliged to indicate the adaptation carried out by him in the work.

The author himself has personal non-property rights in relation to his work:

- the right of authorship, that is, the right to be recognized as the author of a work;

- the right to a name, that is, the right to use or permit the use of a work under the author's real name, a fictitious name (pseudonym) or without a name designation (anonymously);

- the right to inviolability of the work, that is, the right indicating that any changes, abbreviations and additions to his work are not allowed without the consent of the author, except in the case caused by the need to adapt the work to the specific conditions of its use.

The author has the right to object to any distortion of his work, as well as any other encroachment on the work that can damage the honor or dignity of the author.  - the right to publish, that is, the right to publish or allow the publication of the work in any form.

- the right to recall, that is, the right to abandon an earlier decision on publication. The right to recall may be exercised only if the user is compensated for the losses caused by such a decision, including lost profits. If the work has already been published, the author is obliged to publicly notify about its withdrawal. At the same time, he must withdraw previously made copies of the work from civil circulation at his own expense.

It should be noted that personal non-property rights belong to the author regardless of his property rights and are reserved for him in case of transfer of the exclusive right to the work to another person.  The author's personal non-property rights are inalienable and non-transferable.

What does the employer need to remember?

To use the correct name of the employee's position

The position of the employee should cover the functional responsibilities of developing the design of the object.

To develop a detailed job description

The job description should reflect the actual duties of the employee. The instruction is developed for a specific company and begins to operate from the moment the employee gets acquainted with it and signs it, so it is important to sign it when applying for a job.

To provide for the following conditions in the employment contract:

1. author's remuneration

In cases stipulated by the contract between the employer and the author, if the exclusive right to a work for hire belongs to the employer, the author (the author's heirs) has the right to receive royalties for the use of this work.

Thus, the author is not guaranteed to receive remuneration, but only given such an opportunity at the discretion of the employer. However, if the employee does not receive remuneration, it is necessary to directly fix this condition in the employment contract in order to avoid misunderstandings with the employee.

2. form of realization of the right to the name

In relation to a work for hire, the author retains the right to its name. In order not to indicate the author's name on the product, it is necessary to provide in the employment contract a condition according to which the author allows the employer to use the work without specifying his name or under the pseudonym of JSC "employer's name".

3. transfer of exclusive rights for an unlimited period

In order to avoid the transfer of rights back to the employee, it is necessary to prescribe in the employment contract the transfer of the exclusive right to a work for hire for an unlimited period, regardless of whether the employer starts using it within 5 years or not.

To give service assignments

Each enterprise independently determines the workflow and work processes, however, the service assignment acts as an additional guarantee for the employer in respect of the rights to a work for hire. It is necessary to specifically describe the work that the employee should create in the assignment, to make up the task before starting work on the project, to acquaint the employee (group of employees) with the task and get their signatures.

To draw up acts.

The transfer and acceptance act is a mandatory document when creating a work. Signing the act reduces the risk of disputes about whether the work was actually created by the employees of the enterprise and whether the employer has all exclusive rights in relation to this work.

Compliance with even these small recommendations on the registration of rights to a work for hire will allow the company to reduce the risks of further disputes about the ownership of rights to works.