SUMMARY OF RELEVANT FACTS
* Doctor D owns shares in a company that owns the IP rights of the cataract treatment he invented.
* Doctor D was engaged by the University of South Albury after inventing the treatment; for the purpose of continuing research into the treatment method.
* The University believes it is entitled to the shares, the profits from the shares, and for Doctor D to account for any profit he, or the company, has made due to the contract of employment having an IP clause.
ISSUE(S) part A
* Is the University entitled to any, or all, of the money made by Doctor D from the treatment?
1. Multi-factor test of employment, including control.
* “…shifting the emphasis in the control test from the actual exercise of control to the right to exercise it… The approach of this court has been to regard it merely as one of a number of indicia…” Stevens v Brodribb Sawmilling Co Pty Ltd
* It must be proved that Doctor D is an employee.
2. Invention/intellectual property in the course of employment.
* Triplex Safety Glass Co v Scorah. If an invention was made ‘in the course of employment’ by the employee doing what the employee was engaged to do, using the time, resources and facilities provided by the employer, then the employer, and not the employee is entitled to the benefits of the invention.
* Where a literary, dramatic or artistic work…is made by the author in pursuance of the terms of his or her employment by another person under a contract of service or apprenticeship, that other person is the owner of any copyright subsisting in the work by virtue of this Part.
3. Fiduciary and fidelity
* Fiduciary duties exist in addition to contractual obligations and are described as ‘status-based’; subject to ‘no profit’ and ‘no conflict’ rules.
* Did Dr D have a fiduciary duty to tell the University his research was owned by a company in his name, and that the shares...