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VIC Can I Write Cease and Desist Letter to Previous Employer?

Discussion in 'Intellectual Property Law Forum' started by Ihavealegalquestion, 21 August 2016.

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  1. Ihavealegalquestion

    21 April 2016
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    I resigned from my ex-employer a month ago. It wasn't an amicable departure, as I went to a much larger competitor.

    While I was at the company for a few years (a very small company with only 2 people when I joined it), I built up my own personal brand within the boutique industry. Now I have left the company, they still have my name on their website for some web content (blogs) I wrote.

    On my last day, I was concerned about future misuse of my electronic signature, name, email account, etc., and they assured me everything would be removed from the template documents and company websites. Shortly after, they did remove my photo from the website.

    I noticed they still have my name optimised for SEO web searches and have my name on their website. This is clearly being done because - 1) I asked for it to be removed and the Director is childish 2) to capitalise in on my own name.

    I have sent polite emails each week and they are not being answered. The last two have been sent to various people in the organisation, but not one reply.

    My next step is to send a cease and desist letter formally asking them to withdraw all of my personal information from their organisation and demand they send me a declaration confirming this has been done.

    The question is, am I within my intellectual property law rights to do so? Can I write this letter? And if they refuse, what action can I then take? Can I take legal action, or just make complaints? And to whom ( Privacy Commissioner)?

    Thank you
  2. Rod

    Rod Well-Known Member

    27 May 2014
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    I can't see any cause of action for you unless they misrepresent you or have inaccurate information their site. You did work there. You did publish information. You did have an email account they need to monitor/redirect.

    However I'm not confident of my answer, so wait till another more experienced person answers you.
  3. Kim Walters

    Kim Walters Active Member

    18 July 2016
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    The general rule is that an employer is taken to own any intellectual property that is created by an employee in the course of their employment.

    Section 35 (6) of the Copyright Act 1968 (Cth) provides that works created by an employee "under a contract of service or apprenticeship" are owned by the employer, unless certain exceptions apply. However, an employer relying solely on statutory provisions to claim ownership of intellectual property created by employees is risky. Without a contract which specifically addresses the ownership of intellectual property, employers risk losing intellectual property as the case law demonstrates.

    Ultimately, the question of who owns the intellectual property in an employment relationship is answered by what the employee was employed to do or whether they were specifically instructed to create the work during the course of their employment. The most important factor in deciding the ownership of intellectual property created by an employee (in your case, for example, the web content (blogs)) is whether or not that employee had a duty to create the intellectual property as part of their employment duties. If you were employed to write the web content (blogs)) or were specifically instructed to write the blog, it is likely that your employer owns the intellectual property in that work.

    In sum, the question of who owns the intellectual property is not straightforward as this will be determined by the particular facts relevant to each employment relationship. As to the handling of employees' personal information, the Office of the Australian Information Commissioner's website contains further information. Some states and territories also have their own laws that may relate to workplace privacy.
  4. Leonard Mancini

    4 August 2016
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    I don't think thesis as much an IP issue as a general misleading and deceptive conduct issue. Under s18 of the ACL, there is a prohibition on engaging in conduct which is misleading and deceptive. Leaving you on the website after you ceased working there is misleading.

    It can lead to you suffering damage. I would be going them for breaches of s18 before considering the more complicated route of identifying IP that you have ownership in and that they are still using.

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