Penhallurick v MD5 Ltd [2021] EWHC 293 (IPEC) (15 February 2021)

Penhallurick v MD5 Ltd [2021] EWHC 293 (IPEC) (15 February 2021)

The VFC software and related works were created by Mr Penhallurick in the course of his employment with MD5, making MD5 the first owner of copyright under section 11(2) of the Copyright, Designs and Patents Act 1988. Alternatively, the November 2008 Agreement assigned all relevant copyright, past and future, to MD5....

Source-derived case information.

Citation
[2021] EWHC 293 (IPEC)
Parties
Claimant: Michael Penhallurick; Defendant: MD5 Limited
Jurisdiction
England and Wales
Judgment Date
15 February 2021
Procedural Posture
Intellectual Property / Judgment After Trial
Outcome
Claim dismissed; counterclaim dismissed except for declaration of copyright ownership.
Legal Topics
Copyright Ownership, Employee Inventions, Assignment of Copyright, Exclusive Licence, Breach of Contract, Estoppel
Intellectual Property Law Employment Law Copyright Ownership Employee Inventions Assignment of Copyright Exclusive Licence Breach of Contract Estoppel

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Parties

Michael Penhallurick

Claimant

MD5 Limited

Defendant

Procedural Posture

Intellectual Property / Judgment After Trial

Legal Issues

  1. 1 Who owns the copyright in the VFC software and related works created by Mr Penhallurick?
  2. 2 Were the works created in the course of employment?
  3. 3 Did the November 2008 Agreement assign copyright to MD5?

Ratio Decidendi

The VFC software and related works were created by Mr Penhallurick in the course of his employment with MD5, making MD5 the first owner of copyright under section 11(2) of the Copyright, Designs and Patents Act 1988. Alternatively, the November 2008 Agreement assigned all relevant copyright, past and future, to MD5. The 2016 Agreement did not grant Mr Penhallurick ongoing rights after MD5 ceased payments. No breach by Mr Penhallurick was established regarding the 2016 Agreement, and MD5's counterclaim for damages failed.

Court Disposition

Claim dismissed; counterclaim dismissed except for declaration of copyright ownership.

Orders

  • Mr Penhallurick's claim is dismissed.
  • MD5's counterclaim is dismissed except for a declaration that copyright in the Third to Eighth Works is owned by MD5.