Cumulative Protection of Employee Designs

Sultan Ballı

Ali Mert Çavuşoğlu

Introduction

In Turkish law, designs can benefit from protection under the Industrial Property Law No. 6769 (“IPL”) provided they are new and distinctive. Additionally, if these designs bear the characteristics of their authors and fall under one of the categories of works defined in the Law on Intellectual and Artistic Works No. 5846 (“LIAW”), they are also protected under the LIAW. Therefore designs benefit from cumulative protection in Turkish law.

Designs created by employees during an employment relationship are subject to specific rules under both the IPL and LIAW. This article examines the effects of cumulative protection on designs created by employees.

I. Employee Designs as Works under the LIAW

According to Article 8/1 of the LIAW, the author of a work is the person who creates it. Therefore, the creator of a work holds the moral and economic rights that arise from its creation.

Under the LIAW, authors may waive or transfer their economic rights over the work. However, they cannot waive or transfer their moral rights. Indeed, Article 48 of the LIAW explicitly allows for the transfer of economic rights, but it does not provide for the transfer of moral rights. Authors may only grant usage rights concerning their moral rights. Although even when the usage rights are transferred, the author retains ownership of their moral rights.

As a general rule, Article 18/2 of the LIAW stipulates that unless otherwise agreed in the employment contract or dictated by the nature of the work, the right to use the economic rights of works created by civil servants, employees, and workers during the performance of their duties belongs to the employer. In other words, the employee remains the author of the work, while the employer holds the right to exploit its economic aspects.

The LIAW allows the employer to exploit the economic rights of works created by employees without requiring an additional rights transfer or licensing agreement. However, for the employer to exercise usage rights over moral rights, a separate agreement with the employee is required. Importantly, even if the employee grants the employer usage rights over moral rights through an agreement, Article 14/3 of the LIAW allows the employee to prohibit the employer from exercising these rights in a manner that damages the employee’s integrity or reputation. This prohibition cannot be waived by contract.

II. Employee Designs under the IPL

Article 73/1 of the IPL states that “unless otherwise agreed in a specific contract or dictated by the nature of the work, the rights to designs created by employees during their employment activities or based substantially on the employer’s experience and resources belong to the employer”. This provision designates the employer as the owner of designs created within the scope of an employment relationship.

The rationale behind this provision, as outlined in the legislative intent, is that the employer takes on certain risks by providing resources and investing in the employee, while the employee is compensated for their labor through their salary. Thus, ownership of the design rights is granted to the employer.

Similarly, Article 73/2 of the IPL provides that if employees create designs using the general knowledge and resources of their workplace, the employer may claim ownership of these designs upon request.

Under Article 74/1 of the IPL, employees have the right to demand remuneration for designs created using the general knowledge and resources of their workplace.

Notably, this right to remuneration applies exclusively to designs regulated under Article 73/2 of the IPL. It does not extend to designs created within the scope of the employee's defined duties under Article 73/1 of the IPL, as employees are already compensated for such work through their salaries.

The distinction arises because designs under Article 73/2 of the IPL are created by the employee even though they were not required by their job description. Consequently, the right to remuneration is recognized. In contrast, Article 73/1 governs designs created as part of the employee’s assigned duties, for which no additional remuneration is warranted beyond their salary.

III. Differences Between Protections Under the LIAW and the IPL

Articles 71 and 72 of the LIAW impose criminal sanctions for the infringement of economic, moral, and related rights over protected works. In contrast, the IPL does not specifically prescribe any criminal sanctions for design-related violations.

Another key difference in cumulative protection for employee designs is that the right to demand remuneration applies only to designs protected under the IPL. There is no such right under the LIAW for works created by employees.

Furthermore, the duration of protection varies significantly. Under the IPL, registered designs are protected for five years from the date of application, renewable for consequent five-year periods up to a maximum of 25 years. Unregistered designs are protected for three years from the date they are first made public. By contrast, under the LIAW, economic rights for works last for the author’s lifetime plus 70 years after their death, while moral rights remain indefinitely valid.

IV. Conclusion

In Turkish law, employee designs can be protected under both the IPL and the LIAW, provided they meet the criteria specified in these laws.

Article 4/2 of the LIAW states that the use of a design as an industrial model does not preclude its protection as a work of art. This provision ensures that a design with artistic or aesthetic value can also qualify for protection under the LIAW, enabling cumulative protection for the author.

Similarly, Article 58/3 of the IPL clarifies that protection granted to designs under this law does not affect protection available under the LIAW, provided the requirements of the latter are met.

Despite cumulative protection, significant differences exist between the two laws, particularly in terms of criminal sanctions, the right to demand remuneration, and protection durations. Careful consideration of these differences is essential to determine the applicable protections based on the specifics of the design and the circumstances of its creation.