Publications - Intellectual Property
But it's mine, isn't it? Knowing who owns what in matters of copyright
November 2018
Snapshot
In Australia, determining copyright ownership is a complex matter and, like many other legal matters, will always be dependent on the particular facts and circumstances of each individual case.
Factors which needs to be taken into consideration when determining who the owner of any copyright work might be include, but are not limited to, the provisions of the Copyright Act 1968 (Cth), the terms of any agreement relating to the work, who the author is and their relationship to any parties wanting to use the work, the purpose for which the work was originally created, whether the work is wholly original or contains and/or is based on pre-existing materials, whether any pre-existing materials which have been utilised to create the work are those of the author or a third party, and, if those pre-existing materials are owned by a third party, the legal relationship between the author and/or owner of the work and that third party.
Before using works that might be subject to copyright, it is important for business and individuals to clarify what rights they actually have to use the work, and whether the rights that they do have are limited in any way.
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So, you've asked someone to create a document for you and your paying them. That makes you the owner of the document, right? After all, you're paying that person!
Unfortunately, like many things in law, the answer is not straightforward. Just because you have paid someone to create that document for you does not necessarily mean you own the document, nor that you have unlimited rights to use the document in whatever way you like. Similarly, just because you are the author of a document (or another kind of work) does not necessarily mean you are the owner of or have exclusive rights in the work.
Who is the owner then? This article sets out some of the issues that need to be considered when working out who owns what in matters of copyright.
Ownership under the Copyright Act
Generally speaking, the starting point for determining where copyright in a work vests (that is, who owns the work in question) is section 35(2) of the Copyright Act 1968 (Cth) (Act). (It is important to note that some types of works, including but not limited to registered designs and trade marks, are dealt with under separate legislation). That section states that “the author of a literary, dramatic, musical or artistic work is the owner of any copyright subsisting in the work”. In other words, the starting position is that the person who wrote the manual, or painted the picture, or composed the song is ordinarily also the person who owns any copyright in that work and who can determine how the work is used by others.
The Act goes on, however, to set out a number of exceptions to this position.
For example, where the author has created a work "in pursuance of the terms of his or her employment by another person under a contract of service or apprenticeship", then the employer of the author will own the copyright in that work.
Further complicating matters, where the author is an employee of a newspaper under a contract of service and the work has been created for inclusion in that newspaper, then the newspaper is the owner of the copyright in the article but the author retains some limited rights as to how that work can be reproduced (for example, where the work or part thereof is included in a book, or is reproduced as a hard copy facsimile).
Similarly, where work is a photograph, engraving, or a portrait (whether pained or drawn) then while the person who commissioned the work is the owner, if that person told the author why they wanted the work (or otherwise implied what the work was for) then the author can restrain them from using the work for any other purpose.
Terms of the Contract
If all these exceptions weren't already confusing enough, the Act explicitly allows for copyright in both existing and future works to be assigned in writing (see sections 196 and 197 of the Act).
Despite the employer exception in the Act to the ordinary "author as owner" position, a common example of a written agreement assigning all copyright in future works is the intellectual property clause of most employment agreements. Usually included to ensure that there is no doubt about the ownership of intellectual property created by employees, these clauses will often explicitly state that:
Another example is the intellectual property terms usually included in service agreements with contractors, which often specify that any intellectual property created by the contractor when providing services under the agreement is owned by the company or person engaging the contractor.
Of course, the reverse of this can be true too – where a written agreement has been drafted by the person who is or will be the author of the works in question, it is often the case that they will include specific provisions confirming that all intellectual property created by them under that agreement will be owned by them and not the person or entity who has engaged them (contracts with wedding photographers are a prime example, with many contracts modifying the exception in the Act so that the photographer is the owner of the photos and the happy couple are instead granted a limited licence to the photos, ensuring (amongst other things) that they cannot take their negatives to another company for printing).
Partial Assignments and Licences
So, you've looked at the Act and your written agreement (if there is one) and discovered you are not the owner of the work. Now what?
If it is not possible (or financially practical) to have the true owner assign complete ownership of the work to you (usually by way of a deed of assignment and the payment of a further fee), then there are a few options.
In certain circumstances, it may be possible to negotiate an assign of part of the work (that is, where unlimited rights to a particular section of a larger document are assigned to you) or to negotiate the assignment of limited rights in the work (such as the right to dictate the terms on which the work might be licensed to third parties).
Alternately, the parties might choose to enter a licensing agreement whereby the person or entity which is the owner of the work grants to the other party a licence to use the work, on either an exclusive or non-exclusive basis and within certain parameters (such as for a particular period, within a particular geographic area, and/or for a particular purpose, including whether or not the licensee has the right to sublicense the work to third parties). These kinds of licensing arrangements can be standalone agreements entered into at any time, or built into the original agreement (for example the employment contract or service agreement) governing the relationship between the parties.
Pre-Existing and Third-Party Materials
Sometimes the author of a work might incorporate into that work materials that they have previously created in a different context, or materials created by third parties. In these situations, it is important that the author has the relevant rights to use that third-party material, and that these rights (as well as any rights subsisting in pre-existing materials by the author) are able to be assigned, sublicensed or otherwise granted to the person or entity who will be using the work.
If rights to use third party materials and/or pre-existing materials of the same author are not properly obtained, any use of these materials (even in the very limited form that they might appear in the work) will constitute infringement and the user will be at risk of infringement proceedings being commenced against them.
How does this affect me?
Whether you are the person creating the work, or the person commissioning the work, it is important to clarify what your intellectual property rights are in relation to any given work as early as possible to help mitigate against the risk that you might engage in copyright infringement. Some important questions to ask are:
Where can I find more information?
IP Australia has some useful general educational materials on intellectual property rights in Australia which are available on their website at http://www.ipaustralia.gov.au/understanding-ip.
If you have an intellectual property question which you would like help with or if you require assistance with any other legal matters, please contact us.
In Australia, determining copyright ownership is a complex matter and, like many other legal matters, will always be dependent on the particular facts and circumstances of each individual case.
Factors which needs to be taken into consideration when determining who the owner of any copyright work might be include, but are not limited to, the provisions of the Copyright Act 1968 (Cth), the terms of any agreement relating to the work, who the author is and their relationship to any parties wanting to use the work, the purpose for which the work was originally created, whether the work is wholly original or contains and/or is based on pre-existing materials, whether any pre-existing materials which have been utilised to create the work are those of the author or a third party, and, if those pre-existing materials are owned by a third party, the legal relationship between the author and/or owner of the work and that third party.
Before using works that might be subject to copyright, it is important for business and individuals to clarify what rights they actually have to use the work, and whether the rights that they do have are limited in any way.
___________________________________________________________________________________________________________________________________________
So, you've asked someone to create a document for you and your paying them. That makes you the owner of the document, right? After all, you're paying that person!
Unfortunately, like many things in law, the answer is not straightforward. Just because you have paid someone to create that document for you does not necessarily mean you own the document, nor that you have unlimited rights to use the document in whatever way you like. Similarly, just because you are the author of a document (or another kind of work) does not necessarily mean you are the owner of or have exclusive rights in the work.
Who is the owner then? This article sets out some of the issues that need to be considered when working out who owns what in matters of copyright.
Ownership under the Copyright Act
Generally speaking, the starting point for determining where copyright in a work vests (that is, who owns the work in question) is section 35(2) of the Copyright Act 1968 (Cth) (Act). (It is important to note that some types of works, including but not limited to registered designs and trade marks, are dealt with under separate legislation). That section states that “the author of a literary, dramatic, musical or artistic work is the owner of any copyright subsisting in the work”. In other words, the starting position is that the person who wrote the manual, or painted the picture, or composed the song is ordinarily also the person who owns any copyright in that work and who can determine how the work is used by others.
The Act goes on, however, to set out a number of exceptions to this position.
For example, where the author has created a work "in pursuance of the terms of his or her employment by another person under a contract of service or apprenticeship", then the employer of the author will own the copyright in that work.
Further complicating matters, where the author is an employee of a newspaper under a contract of service and the work has been created for inclusion in that newspaper, then the newspaper is the owner of the copyright in the article but the author retains some limited rights as to how that work can be reproduced (for example, where the work or part thereof is included in a book, or is reproduced as a hard copy facsimile).
Similarly, where work is a photograph, engraving, or a portrait (whether pained or drawn) then while the person who commissioned the work is the owner, if that person told the author why they wanted the work (or otherwise implied what the work was for) then the author can restrain them from using the work for any other purpose.
Terms of the Contract
If all these exceptions weren't already confusing enough, the Act explicitly allows for copyright in both existing and future works to be assigned in writing (see sections 196 and 197 of the Act).
Despite the employer exception in the Act to the ordinary "author as owner" position, a common example of a written agreement assigning all copyright in future works is the intellectual property clause of most employment agreements. Usually included to ensure that there is no doubt about the ownership of intellectual property created by employees, these clauses will often explicitly state that:
- the employer owns all intellectual property rights in any document, material or other thing created or contributed to by the employee in the course of their employment whether during office hours or otherwise;
- if for whatever reason (such as the exceptions in the Act) any intellectual property rights in such works vest in the employee and not the employer, then the employee unconditionally and irrevocably assigns all of their rights, titles and interests to the employer and must do all things necessary for this to occur; and
- the employee consents to any act or omission by the employer that would, but for that consent, otherwise infringe any of the employee's moral rights.
Another example is the intellectual property terms usually included in service agreements with contractors, which often specify that any intellectual property created by the contractor when providing services under the agreement is owned by the company or person engaging the contractor.
Of course, the reverse of this can be true too – where a written agreement has been drafted by the person who is or will be the author of the works in question, it is often the case that they will include specific provisions confirming that all intellectual property created by them under that agreement will be owned by them and not the person or entity who has engaged them (contracts with wedding photographers are a prime example, with many contracts modifying the exception in the Act so that the photographer is the owner of the photos and the happy couple are instead granted a limited licence to the photos, ensuring (amongst other things) that they cannot take their negatives to another company for printing).
Partial Assignments and Licences
So, you've looked at the Act and your written agreement (if there is one) and discovered you are not the owner of the work. Now what?
If it is not possible (or financially practical) to have the true owner assign complete ownership of the work to you (usually by way of a deed of assignment and the payment of a further fee), then there are a few options.
In certain circumstances, it may be possible to negotiate an assign of part of the work (that is, where unlimited rights to a particular section of a larger document are assigned to you) or to negotiate the assignment of limited rights in the work (such as the right to dictate the terms on which the work might be licensed to third parties).
Alternately, the parties might choose to enter a licensing agreement whereby the person or entity which is the owner of the work grants to the other party a licence to use the work, on either an exclusive or non-exclusive basis and within certain parameters (such as for a particular period, within a particular geographic area, and/or for a particular purpose, including whether or not the licensee has the right to sublicense the work to third parties). These kinds of licensing arrangements can be standalone agreements entered into at any time, or built into the original agreement (for example the employment contract or service agreement) governing the relationship between the parties.
Pre-Existing and Third-Party Materials
Sometimes the author of a work might incorporate into that work materials that they have previously created in a different context, or materials created by third parties. In these situations, it is important that the author has the relevant rights to use that third-party material, and that these rights (as well as any rights subsisting in pre-existing materials by the author) are able to be assigned, sublicensed or otherwise granted to the person or entity who will be using the work.
If rights to use third party materials and/or pre-existing materials of the same author are not properly obtained, any use of these materials (even in the very limited form that they might appear in the work) will constitute infringement and the user will be at risk of infringement proceedings being commenced against them.
How does this affect me?
Whether you are the person creating the work, or the person commissioning the work, it is important to clarify what your intellectual property rights are in relation to any given work as early as possible to help mitigate against the risk that you might engage in copyright infringement. Some important questions to ask are:
- Am I (or is my company) the person (or entity) who is creating the work? If not, who is the author of the work, and what is our relationship (e.g. employer/employee, client/contractor)?
- Is there an agreement in writing (whether formal or informal) that says something about who the owner of the work is and/or my rights to use the work? If so, what does that agreement say?
- If the relevant written agreement states that the other party is the owner of the work and that I am granted a licence to use the work, what conditions (if any) have been placed on that use?
- Has the person who has created the work used any existing materials of their own or another person in or as part of the basis for the new work that they have created?
Where can I find more information?
IP Australia has some useful general educational materials on intellectual property rights in Australia which are available on their website at http://www.ipaustralia.gov.au/understanding-ip.
If you have an intellectual property question which you would like help with or if you require assistance with any other legal matters, please contact us.
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Sarah Toomey Westcott
Senior Associate Bradfield & Scott Lawyers Level 1, 175 Macquarie Street Sydney NSW 2000 Telephone: 9233 7299 Email: swestcott@bradscott.com.au |
John Graves
Principal Bradfield & Scott Lawyers Level 1, 175 Macquarie Street Sydney NSW 2000 Telephone: 9233 7299 Email: jgraves@bradscott.com.au |
