In Penhallurick v MD5 Ltd [2021] EWHC 293 (IPEC) the Court held that the copyright in various literary works relating to software Mr. Penhallurick created during his tenure with former employer MD5 belonged to MD5. The Court found that the works were created in the course of Mr. Penhallurick’s employment with the result that MD5 was deemed the owner of the works (under the Copyright, Designs and Patents Act 1988), despite the fact that some of the work was done from Mr. Penhallurick’s home, outside normal office hours and using his own computer.

Key to Judge Hacon’s decision was the fact that making certain software for use in forensic computing was the central task for which MD5 was paying Mr. Penhallurick at the relevant times, which created a ‘strong and primary indication’ that work on the software was done in the course of employment. That a significant proportion of the work was being done in Mr. Penhallurick’s home and using his own computer was not enough to displace this indication, nor was any other factor.

Employers will be reassured by this decision given the current need for home-working and the likely increase in employees splitting their working time between the office and home going forward as COVID-related restrictions begin to ease. However, we note that this decision applies to copyright only, and that the position could well be different in respect of employee inventions should a similar case come before the courts in that context.

Photo of Christopher Walter Christopher Walter

Christopher Walter works with employer clients on domestic and international HR-legal compliance, disputes, and transactional projects. Chris is a former co-chair of the firm’s International Employment practice, and previously served for eight years as Managing Partner of the London office.

Chris’s advisory practice…

Christopher Walter works with employer clients on domestic and international HR-legal compliance, disputes, and transactional projects. Chris is a former co-chair of the firm’s International Employment practice, and previously served for eight years as Managing Partner of the London office.

Chris’s advisory practice encompasses the full range of employment and employee benefits issues that matter to leading multinational employers, including the drafting of share and other incentive plans, global mobility, privacy compliance, employment issues in M&A transactions, outsourcing, workforce integration, and the implementation of core policies/codes of conduct, with a particular focus on business and human rights.

Chris began his legal career as a UK barrister, however, and also has considerable experience as an advocate before UK courts and tribunals, securing confidentiality injunctions and defending employers against claims of unfairness, discrimination and other alleged violations of employment laws.

Chris is recommended by Legal 500 UK for his “exceptional service.” Chambers UK (2015) notes that he is “focused, business-oriented and solution-driven.” Chris has been listed by Who’s Who Legal since 2007 as one of the world’s top employment lawyers.

Chris has served as chair of the International Committee of the Employment Lawyers Association and a member of ELA’s Management Committee. He is also a member of the European Employment Lawyers Association and the Share Plan Lawyers Group.

Chris regularly publishes articles and speaks on employment and data privacy law at both external seminars and in-house client training events.

Photo of Louise Freeman Louise Freeman

Louise Freeman represents parties in complex commercial disputes, and co-chairs the firm’s Commercial Litigation and European Dispute Resolution Practice Groups.

Described by Legal 500 as “one of London’s most effective partners” and by Chambers as “a class act,” Louise helps clients to navigate…

Louise Freeman represents parties in complex commercial disputes, and co-chairs the firm’s Commercial Litigation and European Dispute Resolution Practice Groups.

Described by Legal 500 as “one of London’s most effective partners” and by Chambers as “a class act,” Louise helps clients to navigate challenging situations in a range of industries, including life sciences, technology and financial markets. Most of her cases involve multiple parties and jurisdictions, where her strategic, dynamic advice is invaluable.

Louise also represents parties in significant competition litigation proceedings, including a number of the leading cases in England.

Louise is a key member of our market-leading Privacy and Data Security Litigation team, which advises a broad range of international clients on data privacy-related litigation. She has recently represented a client in an intervention in an appeal in the leading UK case making new law in relation to both data privacy claims and class actions.

Photo of Mark Welch Mark Welch

Mark Welch is an associate in the International Employment Practice Group, having joined the firm as a trainee solicitor in 2018. His practice covers a range of both UK and international employment issues including international employment aspects of global transactions, HR-legal compliance issues…

Mark Welch is an associate in the International Employment Practice Group, having joined the firm as a trainee solicitor in 2018. His practice covers a range of both UK and international employment issues including international employment aspects of global transactions, HR-legal compliance issues and contentious employment matters.

Mark also assists clients seeking to protect their business and increase international compliance through the drafting and implementation of employment contracts and internal policies. He has particular experience in relation to whistleblowing matters, both advising clients on whistleblower protections and requirements for compliance purposes and defending clients in contentious matters involving allegations based on protected disclosures.

Mark gained valuable experience while on secondment to a large pharmaceutical client. He is a member of the firm’s Diversity Committee.