For collaborators, a tempting and seemingly easy to live with solution appears to be joint ownership. But is it really all that effective? In this article, we briefly look at some difficulties.
Who owns the copyright?
In general, the person who creates a copyright work or other subject matter is the owner of that material, subject to some specific exceptions under the Copyright Act 1968 (Cth) (Act).
When collaborating, the first step is to identify who will be creating copyright material and whether those persons are employees. If the creator is an employee who created the relevant work in the course of employment, the party who is the employer of the creator owns the copyright in that work, subject to any agreement to the contrary.
However, if the way in which a person creates material is not subject to an employer's control, or the work performed in creating the material is not done as an integral part of employment, that person may retain the copyright in the material.
If employees of different employers collaborate to produce a literary, artistic, dramatic or musical work, the resulting work will be a work of joint authorship if the contributions of the co-authors cannot be separated.1 Co-authors, in the absence of any agreement to the contrary:
own as tenants in common, rather than joint tenants,2 and
hold equal shares in the copyright.3
Therefore such a work will be jointly owned by the relevant employers as tenants in common in equal shares.
Review the scope of employment of employees before they create copyright material in a collaboration.
Before collaborating, enter into a written agreement that reflects the desired ownership situation, and contains any necessary assignments.
As a co-owner, what can I do?
While co-owners of copyright material are tenants in common, the only authority on this point4 says they are not entitled to exercise their copyright, or authorise others to exercise copyright, without the consent of the other co-owners.5
If an agreement simply provides that the parties jointly own copyright in relevant materials, those parties may not be able to exercise those copyright rights (such as copying or altering the material, communicating the material to the public or sub-contracting to others to do so) without the consent of the other party.
If the parties do not expressly specify what each co-owner can do in relation to the copyright material, the parties may be forever tied together in their need to obtain the other's consent. This may lead to one co-owner preventing the other from gaining commercial advantages from the co-owned copyright material. It is therefore best to clearly identify what each co-owner may do in relation to the copyright material.
Any co-owner may sue for infringement of a co-owned copyright work, without joining the other co-owners. However, if a co-owner does so, it will only be entitled to recover compensation for the damages that that co-owner in fact suffered.6
In any copyright co-ownership agreement, provide for a copyright consent regime, or specifically provide for consent within the agreement to a permitted range of acts.
Consider whether moral right consents need to be obtained by each co-owner from relevant employees.
For a collaboration to be most effective, if co-ownership of copyright is commercially required, parties should carefully consider how any co-owned work will need to be used by each party, and build in appropriate mechanisms to allow that use.
1 Section 10 of the Act.
2 Lauri v Renad (1892) 3 Ch 402; Dixon Projects Pty Ltd v Masterton Homes Pty Ltd (1996) AIPC 91-291.
3 Prior v Lansdowne Press Pty Ltd (1977) VR 65.
4 cecinsky v George Routledge & Sons Ltd (1916) 2 KB 325.
5 Section 101 of the Act says 'subject to this Act, a copyright subsisting … is infringed by a person who, not being the owner of the copyright and without the licence of the owner of the copyright, does in Australia' … Cecinsky was decided under a different Copyright Act and there has been no case law in relation to the current section of the Act.
6 Prior v Lansdowne Press Pty Ltd (1977) VR 65.
For more information please contact either Irene Zeitler, Partner
(firstname.lastname@example.org) or Amalia Stone, Senior Associate
This article provides a summary only of the subject matter covered, without the assumption of a duty of care by Freehills. The summary is not intended to be nor should it be relied upon as a substitute for legal or other professional advice.
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