Forensics software developer can’t claim copyright
The England and Wales Court of Appeal has ruled that a software developer does not own the copyright for examination software he created while working at a digital forensics firm.
The court rejected the appeal from the developer Michael Penhallurick—who had claimed that he owned the software he had developed whilst at the company MD5—in a judgment handed down on Thursday, December 3.
MD5 held that the copyright of the virtual forensic computing (VFC) software belonged to it rather than Penhallurick because it was all created while he was employed by the company under a contract of service, or alternatively that the company had been assigned it in an agreement in November 2008.
Following a two day trial at the Intellectual Property Enterprise Court in July 2020, the judge ruled in favour of MD5, dismissing Penhallurick’s claim for copyright infringement.
MD5 also counterclaimed, asserting that Penhallurick had infringed its VFC copyright by making an adaptation of the software without its consent, but the judge also dismissed this claim.
The Court of Appeal held that an earlier judgment at the Intellectual Property Enterprise Court had “arrived at the correct conclusion” that the November 2008 agreement had operated as an assignment of any future copyright first owned by Penhallurick.
The appellate court also saw “no reason” to investigate the merits of MD5’s counterclaim.
Development dispute
Penhalluirck claimed that he developed the VFC methodology and software after leaving university and finished the development of “version 1” in early 2007, a few months after joining MD5 in November 2006.
Because version 1 incorporated software which he had written before his employment commenced, Penhallurick asserted that any related copyrights belonged to him.
MD5 alleged that Penhallurick had presented them a VFC “method” that was “slow and cumbersome” and that it was the then director and chairman at the time who had suggested the possibility of developing the software to implement the method.
From March 2007, VFC software was sold by MD5 to its customers. In November 2008, Penhallurick and MD5 entered into an agreement in which he was entitled to 7.5% of the annual sales of the software, which was later increased to 10% in 2011.
Penhallurick later resigned on 26 February 2016.
In the Intellectual Property Enterprise Court, the judge accepted that Penhallurick had possibly done “something by way of working on VFC software” prior to his employment but ruled that it was most likely that he had “abandoned” the project and started again while employed by MD5.
The judge also held that, even if MD5 was not the owner of the copyright in all of the claimed aspects of the software, it had acquired those copyrights through the November 2008 agreement.
