Who owns IP in a BYOD environment?


While BYOD has helped improve productivity for workers and provided IT flexibility for companies, it has also raised a number of sticking issues around privacy, legal liability and intellectual property ownership.

When an employee creates content on a personally owned device, can the company claim ownership of that content? The answer, of course, is--it depends.

Gerald Kerr-Wilson and Mark Penner with the law firm of Fasken Martineau DuMoulin explain that "with employees being able to create, use and disclose information across multiple platforms, there are a number of IP ownership and disclosure issues that arise."

The attorneys note that for copyrighted works, such as software, "the first owner of copyright on any material produced by an employee in the course of their employment is, by default, the employer--regardless of where and how that material was produced."

However, there is an exception to that general rule. If the employee is working as an independent contractor for the company, then the employee retains IP ownership. "Unless there is a written agreement to the contrary or the employee is specifically hired to invent, any invention developed by the employee is the property of the employee and not the employer," they stress.

In addition, if an employee discloses the IP publicly, "then the ability to obtain patent protection and any possible trade secret protection may be lost. Just imagine what would happen to the owner of the formula for a famous soft drink if it was disclosed via social media," they caution.

Kevin Flanagan, a freelance tech writer, writes on Memeburn.com that companies should develop BYOD policies to cover the use of features such as cameras, GPS systems and audio recorders in the workplace. "Intellectual property can easily be compromised by something as innocent as a picture of someone waving while seated at their desk," he notes.

"By clarifying company expectations regarding intellectual property rights and safe use of personal devices, an organization can easily reduce the risk of intellectual property loss and foster safe innovation among employees," he adds.

Kerr-Wilson and Penner agree that BYOD policies need to include provisions to protect the enterprises from IP risk. These policies should require employees to submit their devices for periodic audits, establish clear guidelines on when and how devices will be wiped, define "acceptable use" from the company's perspective, explain and address confidentiality and privacy concerns, establish device security and content storage guidelines, and clarify ownership of copyrighted works, patentable inventions, and data--and require employees and contractors to sign written agreements spelling out those ownership issues.

With some forethought and explicit agreements, enterprises should be able to successfully protect their IP in a BYOD environment. - Fred