In the 21st century the practice of commissioning work or paying someone to produce work is commonplace. Whether it is the production of books, websites, logos, flyers, business cards, graphic images, or other artistic creations, almost everyone has probably commissioned work at some point — usually under relatively informal arrangements.

But, in such arrangements, the following question invariably arises: Who owns the commissioned work produced — the person who commissioned it or the person who produced it? All things being equal, the answer to that simple yet very important question will depend on the circumstances under which the commissioned work was produced.

As a general rule, the law recognises the person who produces or authors any work as the copyright owner of that work. A copyright is a proprietary or ownership interest that exists at common law. In the context of commissioned work, that general rule would mean that the person who produces commissioned work, that is, the commissioned party, would own the copyright in the commissioned work.

Copyright ownership in this context would confer a bundle of legal rights upon the commissioned party over and in respect of the commissioned work. In particular, the commissioned party would have the right to copy the commissioned work, adapt it, issue copies of it to the public, show it in public, and otherwise exploit it for financial gain.

By contrast, the commissioning party would only possess an implied licence that permits him or her to use the work for the purpose for which it was commissioned. This would be so regardless of whether the commissioning party conceptualised the idea or concept for the commissioned work, provided sketches and/or other material to guide its production, and even carefully directed the commissioned party during the entire process. There are, however, three notable exceptions to that general rule regarding copyright and commissioned work. These exceptions will typically arise in the following circumstances:

1)Where there was a prior written commission agreement providing that the copyright in the commissioned party would transfer the copyright in the commissioned work to the commissioning party upon payment for the commissioned work;

2)Where the commissioned work was produced by the commissioning party under a work for hire agreement. In this scenario the employer who commissioned the work would be the first owner of the copyright unless there is a signed agreement to the contrary between the employer and the commissioned party; and

3)Where a deed of assignment of copyright in the commissioned work was signed and duly executed between the commissioned party and the commissioning party. Here, the copyright in the commissioned work would be transferred from the commissioned party (the assignor in this scenario) to the commissioning party (the assignee in this scenario). Upon execution of the deed of assignment of copyright, the commissioning party would become the new copyright owner.

Following an assignment of copyright in the commissioned work, the new copyright owner would not have to register the copyright for it to be recognised as existing or be protected under our Copyright Act (as amended in 2015) the Copyright (Amendment) Act.

Indeed, under that Copyright (Amendment) Act, a copyright interest enjoys protection, and accompanying rights can be enforced in the local courts in the absence of formal registration. Notwithstanding this, formal registration in the way of voluntary copyright registration would be valuable because it can prove copyright ownership of the commissioned work should there be any dispute, claim, or suit over or in relation to it. In addition, voluntary copyright registration may prove useful in the context of rights clearance processes for licensing deals and other commercial transactions involving copyright. As such, voluntary copyright registration would arguably provide an even greater level of protection for the commissioned work.

The Jamaica Intellectual Property Office (JIPO), the government agency responsible for administering the register of copyright and related rights, handles the formal registration of copyright interests. Different registration requirements will apply to different types of work, like literary or artistic work.

To apply for the registration of artistic work, the applicant (who should also be the copyright owner of the artistic work they are seeking to register) must first complete an “Application for Registration to Enter Particulars in Register (Form A)”, and a “Declaration of Copyright Ownership and/or Authorship (Form B)”. The names, addresses, and relevant biographical information of the authors, and owners; the title and description of the artistic work; and date of creation of the artistic work should be reflected on the forms. The Form B must be certified by a justice of the peace, and the applicant must complete and submit both forms with a copy of a valid government-issued ID as well as digital copies of the artistic work.

Where there was an assignment of copyright, the applicant should also submit a signed copy of the relevant deed of assignment of copyright. An Application for Registration to Enter Particulars on the Register must be completed, and a specific registration fee for the artistic work must then be paid. The relevant registration and certification fees are outlined in the third schedule (sections 9B and 148A) of the Act.

Once all the required documents have been submitted and the registration fee paid, the application will be processed and a Voluntary Copyright Registration Certificate, which serves as a prima facie link between the claim of authorship and the protected work would, thereafter, be issued to the applicant and copyright owner of the artistic work. The entire process can take up to six weeks.

Knowledge is power, and it is always best for the commissioned party and the commissioning party to discuss, from the outset, the specificities of copyright ownership in commissioned work before it is produced. Doing so will help remove any doubt as to who exactly will own the commissioned work once produced. It can also save someone thinking of commissioning work headaches down the road, especially regarding how they can use the commissioned work moving forward.

A written agreement, which addresses all the relevant matters, including the specificities of copyright ownership, is therefore critical to ensuring that both the commissioning party and the commissioned party are on the same page regarding the arrangement and also get the most out of it. It is, as such, an important step that should never be overlooked in the process of commissioning work.

Amanda Quest is an attorney-at-law.