113III. OWNERSHIP OF RIGHTS
Noah v. Shuba [1991] F.S.R. 14 (U.K.: High Court)[The plaintiff was a consultant epidemiologist employed under a contract of
service at the Communicable Disease Surveillance Centre of the Public Health
Laboratory Service (PHLS). Being concerned with the spread of Hepatitis B and
AIDS through tattooing and skin piercing, he wrote a Guide to Hygienic Skin
Piercingin his spare time, although using the PHLS’s secretaries and library.
The PHLS published and issued the guide without charge as a public service,
crediting the plaintiff as author. The PHLS Staff Regulations, which were part of
the plaintiff’s contract of service, were silent about copyright.The defendant used large extracts from the Guidein promotional material for a
sterilizer for use in electrolysis treatments in beauty salons. The plaintiff sued for
an injunction and damages for infringement of copyright. The defendant
unsuccessfully claimed that the PHLS, not Dr Noah, owned the copyright in the
Guideand that Dr Noah had no standing to sue for infringement. Subsections
4(4) & (5) of the Copyright Act 1956 (U.K.)^2 state:(4) Where ... a work is made in the course of the author’s employment
by another person under a contract of service or apprenticeship, that
other person shall be entitled to any copyright subsisting in the work
by virtue of this Part of the Act.(5) [Subsection (4)] shall have effect subject, in any particular case, to
any agreement excluding the operation thereof in that case.]MR JUSTICE MUMMERY:The primary submission made on behalf of Dr. Noah is that the copyright in the Guidedid not
vest in the PHLS as his employer because he had not made it “in the course of his employment”
with PHLS. ... [H]e wrote the Guideat home in the evenings and at weekends and not at the
instigation of or on the direction of PHLS.[The plaintiff] was expected to report on research work by means of contributions to appropriate
scientific journals and before recognised learned societies. Regulation 11 of the Staff
Regulations provided that before doing so he should inform the Director of the Service and
follow the normal practice of consulting colleagues who have been associated with him in
collaborative investigations. It was, however, also provided in regulation 11 that the writing of
scientific books or monographs, if undertaken, was “not expected to be done in working hours.”
It is also clear from regulation 3(b) and (c) that the writing of books and articles was in general
to be regarded as something done “in addition to official duties,” though staff were entitled to
undertake such work at the laboratory or elsewhere and to receive fees, provided that the work
would not interfere with their official duties.[Counsel for the defendant] pointed out ...the Guidecould not be properly described as a
“private” venture by Dr. Noah, since it was clear from the cover and the title page that it was a
PHLS guide. ... Dr. Noah had used PHLS notepaper in order to send out letters to those from
whom he solicited comments and views before settling on the final version of the Guide. The
typescript of the Guidehad been produced by his secretary at the Centre using PHLS time and
equipment. In brief, it was submitted that the Guidewas a PHLS venture involving the
collaboration of staff at PHLS premises...2 These subsections are identical in
effect to s.11(2) of the current U.K.
Act, the Copyright, Designs and
Patents Act 1988, which reads:
Where a literary, dramatic, musical
or artistic work is made by an
employee in the course of his
employment, his employer is the
first owner of any copyright in the
work subject to any agreement to
the contrary.