Michael Penhallurick v MD5 Limited

15 February 2021

Michael Conway acted for the defendant, MD5 Limited, in this claim for copyright infringement.

Mr Penhallurick was a former employee of MD5. He claimed ownership of copyright in eight works relating to the source code and a user guide for a computer programme called “Virtual Forensic Computing” (VFC).  MD5 Limited is his former employer.

The Judge found that all of the works that were of relevance  had been created while Mr Penhallurick was employed by MD5.

His Honour Judge Hacon considered the question of whether the works had been made “in the course of employment” for the purposes of s.11(2) CDPA 1988. He held that although Mr Penhallurick may have worked on the software in his own time or on his own equipment, that did not displace the strong and primary indication that it was work done in the course of his employment. Accordingly, MD5 was the first owner of any copyright. The Judge further held that even if MD5 had not been entitled to first ownership of the copyrights in the VFC software by reason of its status as Mr Penhallurick’s employer, there had been a binding agreement between the parties that the copyright in the works would be assigned to MD5.  The copyright infringement claim was dismissed and MD5 was entitled to a declaration that it was the owner of the copyright in all six works.

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