Amanda Carpenter is a JD Candidate at Osgoode Hall Law School.

The British case Burrows v. Smith was recently noted by the 1709 copyright blog. In this case, a computer games designer (Stuart Burrows) tries to claim ownership of his own work after having already sold it to a prior employer. Burrows developed an initial idea for a game in 1998. This idea involved the movement of a ball from one side of an environment to another by laying a track or path in front of the ball as it continuously rolled. The pieces of track or path were randomly provided and the player had to improvise the course, and the ball would encounter obstacles that would have to be overcome. As the game progressed the environment became more complex to navigate, the ball speeded up and the track pieces were provided faster. Burrows described it as “Super Monkey ball meets Tetris”. No copy survives of the document in which this initial idea was recorded.

In 2005 he became an employee of Circle Studio Limited. Clause 14.1.1 of his employment contract with Circle stipulated that any ideas developed in collaboration with other employees during employment with the company would be the exclusive property of Circle. At Circle he liaised with designers, artists and animators and developed “Super Monkey ball meets Tetris” into a design for a new game called Traktrix. The results of this work were gathered together in a document called "Traktrix: a puzzle playground for PSP, DS and Wii". Unbeknownst to Circle or any of its employees, Traktrix embodied elements of the 1998 game. Nobody other than Mr Burrows had seen the original document, and nobody other than Mr Burrows could have known of the existence or extent of any "copying". Circle subsequently entered creditors’ voluntary liquidation in 2007 and Crush Digital Media Limited purchased some of Circle's intellectual property assets from its liquidator, which included a purchase of Circle's rights in "Traktrix".

Burrows accuses Crush of infringing his copyright in a document which recorded an idea for a computer game and of breaching an obligation of confidence owed to him. In regards to the first claim, Mr Burrows' argument was that Circle had created an infringing document by producing the document “Traktrix: a puzzle playground for PSP, DS and Wii" which (he asserted) copied significant parts of his initial 1998 document. But nobody at Circle, other than Burrows, knew of the 1998 document. If the later document "copied" parts of the initial document then it did so because Mr Burrows himself incorporated them without telling anyone. Therefore Crush pleaded that there must at least have been an implied licence granted to Circle. Burrows accepts this but argues that this licence was personal to Circle and had an implied term that made it automatically terminate on liquidation of Circle (or the consequent termination of Burrows's employment by Circle). Justice Norris rejects this argument since:

“The incorporation of parts of the Original Document in the 2006 Document was not consensual (in that Circle and its team did not know that it was occurring). To suggest that there was an agreement between Burrows and Circle into which terms must be implied to give it business efficacy does not fit with the facts. What happened was that Mr Burrows voluntarily and without the imposition of any express conditions used work that he had previously completed for the purpose of performing the tasks required for the fulfilment of his current duties as an employee. If that has to be put into a legal category for the purposes of the application of the law of copyright then it would most naturally be viewed as an assignment - a unilateral act requiring no agreement on the part of the recipient.”

In regards to the second claim, to make out a successful claim in breach of confidence it must first be established that the relevant material was disclosed under circumstances that would impose an obligation of confidence. This was not the case since it was Burrows’ job to come up with ideas and pass them on directly to his employer. If he came up with an idea and shared it with his employer he was doing what he was paid to do: the disclosure would not be in circumstances importing any duty of confidence owed by the employer to the employee. This is exactly what happened with “Traktrix”. Thus the breach of confidence claim failed.

In conclusion, a key point is that Burrows was an employee and his contract gave all copyright on any work he produced to his employer while he was employed by them, thus negating his claims.