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 Sinead McLaughlin Sinead McLaughlin

Sinead McLaughlin has a broad commercial disputes practice, with a particular focus on crisis management and multi-party disputes, across a number of sectors, including advising major banks and financial institutions, media and technology companies.

Her work often requires her to work across a…

Sinead McLaughlin has a broad commercial disputes practice, with a particular focus on crisis management and multi-party disputes, across a number of sectors, including advising major banks and financial institutions, media and technology companies.

Her work often requires her to work across a range of practice areas, conducting internal investigations, advising clients in relation to investigations by regulators and other authorities, and acting in any subsequent disputes or litigation which may arise.

Sinead has significant experience working in-house (on secondment), which she leverages for the benefit of her clients. Her secondments have included a long secondment at a leading global investment bank where she advised the bank on a range of contentious commercial and regulatory matters, across the firm’s businesses throughout EMEA; and to a large global company specializing in in e-commerce, cloud computing and other services, advising on contentious data and privacy issues.

Her regulatory enforcement experience includes acting in investigations alleging market abuse, systems and controls failings, financial reporting errors and GDPR compliance matters; in litigation she has acted in claims relating to data and privacy issues, mis-selling, allegations of anti-competitive behavior, and a range of contractual disputes and tortious actions. Sinead also has significant experience acting for defendants in large group litigation (also known as collective actions) in the English High Court.

Photo of Alan Kenny Alan Kenny

Focusing on high value, multi-party and multi-jurisdictional matters, Alan Kenny advises companies, banks, institutions, and high-net-worth individuals on all stages of dispute avoidance and resolution.

Alan has notable experience of high profile and complex commercial litigation, competition litigation, and class actions. He acts…

Focusing on high value, multi-party and multi-jurisdictional matters, Alan Kenny advises companies, banks, institutions, and high-net-worth individuals on all stages of dispute avoidance and resolution.

Alan has notable experience of high profile and complex commercial litigation, competition litigation, and class actions. He acts for clients in a broad range of industries with particular experience in financial services, technology, fast moving consumer goods, commodities, and media.

Alan has represented clients in:

  • Pre-action negotiations;
  • Mediation;
  • Commercial litigation before the English High Court and Court of Appeal (and internationally with local counsel);
  • Competition litigation, including class action proceedings before the UK’s Competition Appeal Tribunal;
  • International arbitration and trade association arbitration under a variety of rules, including LCIA, HKIAC, SCAI, LMAA, GAFTA and FOSFA;
  • Responding to enquiries from – and defending enforcement proceedings brought by – regulators in the UK and internationally;
  • Bringing competition-related complaints to the European Commission, leading to investigations and dawn raids;
  • Proceedings to obtain emergency and interim relief, including: security, vessel and container arrest, freezing orders, disclosure orders, Norwich Pharmacal and Bankers Trust orders, delivery up of passport orders, search orders, committal orders, and anti-suit injunctions;
  • Settlement negotiations;
  • Proceedings to enforce judgments; and
  • Proceedings to compel UK-based third parties to produce evidence under the Hague Convention for use in foreign proceedings.

Alan is a contributing editor of the International Comparative Legal Guide to Litigation and Dispute Resolution.

Alan’s recent pro bono work includes:

  • Advising an international development charity working to combat poverty and climate change, to settle disputes with distributors relating to its projects to provide access to solar power in Malawi and Zambia.
  • Representing a charity that provides young people with opportunities to explore orchestral music, obtaining a judgment and third party debt orders to successfully recover payments made to a catering company for services that were not provided.
  • Representing a vulnerable, single-parent immigrant family facing deportation to obtain rights of residence and access to public funds and pursue UK citizenship.
  • Representing a charity that works with vulnerable women and children to remove defamatory statements relating to the charity and its staff from third party websites, search engine result pages, and other media.
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.