Employers generally believe that they own the copyright in all
materials produced by their employees. However, this may not always
be the case.
Pursuant to section 35(b) of the Copyright Act 1968 (Cth), an
employer may own copyright in works created by an employee if the
relevant 'works' were created by the employee
"in pursuance of the terms of his or her employment under
a contract of service..." The meaning of this phrase was
recently considered in EdSonic Pty Ltd v. Cassidy 
In EdSonic Pty Ltd v Cassidy the respondent, Cassidy, developed
education and training manuals which were subsequently published
and sold by the applicant, EdSonic. The issue of copyright arose
when the respondent notified the applicant that it was no longer
permitted to use the materials the respondent had prepared.
In finding for the respondent, the Court noted that it was
necessary to consider both whether the respondent was an employee
of the applicant at the time the relevant works were produced and,
if so, whether the works were created by the respondent in
pursuance of the employee's contract of employment
– i.e. were the works completed because the contract of
employment expressly or otherwise required or allowed it as part of
the job, or did the employee create the works "in her own
In determining that the relevant works were not created by the
respondent in pursuance of the terms of her employment, the court
while the respondent was paid a salary for some work, the
respondent was paid royalties in relation to the works subject to
the claim – not a salary, and
the applicant and respondent treated the works subject to the
claim as separate to any other work that the respondent did for the
This case highlights the importance of ensuring that you are the
copyright owner for any works that you consider part of your
intellectual property. If you have any concerns that a third party
is preparing works for you but may not actually be either an
employee or preparing the works in pursuance of their terms of
employment, you should take steps to clarify the issue and ensure
that you are the ultimate owner of the copyright in such works.
This may involve requiring the third party to assign any copyright
that may exist to you or specifically varying the
employee's terms of employment. This will remove any
ambiguity and provide you with certainty of ownership if it is ever
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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