| In Robin Ray v Classic FM, the English High Court held | | | | 1996 that Classic FM intended to exploit Mr Ray's |
| that a contractor providing services owns the | | | | work overseas. The court was not prepared to imply |
| intellectual property in the materials created for the | | | | a licence into the contract that Classic FM would be |
| client. The decision is a useful guide to contractors as | | | | entitled to exploit his work overseas. Classic FM was |
| it is one of the leading cases in determining the | | | | prevented from exploiting their database abroad |
| whether a commissioner of intellectual property may | | | | without the consent of Mr Ray, which would require |
| use intellectual property for purposes not expressly | | | | payment of license fees. |
| contemplated by a written agreement. | | | | When implying licences in this way, a court will only |
| Background | | | | go so far as is necessary in the circumstances to |
| Mr Ray was a highly respected expert in classical | | | | give effect to the intention of the parties. If a grant |
| music in England , reputed to have an encyclopaedic | | | | of a licence is required, the ambit of the licence will |
| knowledge of classical music. He was engaged by | | | | be the minimum required to give effect to the |
| Classic FM in the United Kingdom in 1991 to compile | | | | intention of the parties at the time of the contract. |
| the radio station's repertoire, compile playlists, | | | | An implied term that copyright would be assigned to |
| categorising tracks for play lists, and rate their | | | | a client will be exceptionally rare, as most often an |
| popularity under each of the categories. The contract | | | | exclusive licence will have the same effect in law. |
| did not deal with intellectual property rights. The | | | | The judge held that the contractor retains the |
| consultancy agreement was originally for 11 months, | | | | copyright in default of some express or implied term |
| however the work of Mr Ray proved beneficial for | | | | to the contrary effect. The contract may expressly |
| Classic FM, and his services were extended until 1997. | | | | state which party is entitled to the copyright, and the |
| Some 50,000 tracks were eventually categorised. | | | | mere fact that the contractor has been |
| The results of the work were incorporated into a | | | | commissioned - performed by a contractor - is |
| database that was used to select music on a | | | | insufficient to grant rights in the copyright to the |
| rotational basis, and prevent overplaying. | | | | client. In the absence of express rights, the client is |
| The project was success. After internal use for | | | | left to establish an entitlement under the express or |
| about 5 years, Classic FM proposed to licence the | | | | implied term of the contract. |
| database to overseas companies. Mr Ray objected | | | | Conclusion |
| and commenced proceedings to prevent Classic FM | | | | The decision means that contractors retain the |
| licensing the use outside the UK without his | | | | copyright in the absence of an implied or express |
| permission, on the basis that he was the author of | | | | term. An implied licence must be reasonable and |
| documents that were incorporated into the database. | | | | equitable; necessary to give business efficacy to the |
| The Decision of the High Court | | | | contract, capable of clear expression and not |
| Mr Justice Lightman in the High Court ruled that in the | | | | contrary to any express term of the contract, and |
| case of a consultancy, the author retained the | | | | so obvious that it goes without saying. This means |
| copyright in the absence of an express or implied | | | | that a licence will be implied for the client to use the |
| term to the contrary effect. Where services by a | | | | work for the stated purposes at the outset of the |
| consultant are performed for an express purpose, a | | | | engagement. It is important to document the |
| court will readily imply a term into a contract for | | | | purposes of the engagement and the intended use |
| services that a client is entitled to use it for that | | | | for the copyright work created during the course of |
| purpose. In this case, Classic FM always intended to | | | | the engagement. |
| utilise the Mr Ray's work in the UK . It was not until | | | | |