The Full Court of the Federal Court recently handed down a decision which confirms that the ‘Crown copyright’ provisions in Part VII of the Copyright Act 1968 (Cth) (Copyright Act) which operate to vest ownership of copyright in the Commonwealth or a State:
- Will not be construed broadly by the Court; and
- Should only be relied upon by the Commonwealth and the States as a last resort.
In the absence of an agreement containing provisions to the contrary, the Crown copyright provisions in the Copyright Act operate (among other things) to vest ownership of copyright in a work in the Commonwealth or a State if the work was:
- Made under the direction or control of the Commonwealth or State (section 176); or
- First published by, or under the direction or control of, the Commonwealth or State (section 177).
The Crown copyright provisions also provide that the Commonwealth or a State will not infringe copyright if acts performed by the Commonwealth or State in respect of a work protected by copyright 'are for the services' of the Commonwealth or State (section 183). However, the Commonwealth or State is still required to pay the copyright owner remuneration for the use of the works in such cases.
In Copyright Agency Limited v State of New South Wales  FCAFC 80, the Court rejected a claim by the NSW government that it was the owner of copyright in Survey Plans drafted by surveyors (the Plans), due to the operation of the Crown copyright provisions.
The NSW government argued that it was the owner of the copyright in the Plans, due to the operation of Part VII of the Copyright Act, because the Plans:
- Were required to follow legislative requirements governing the preparation of the Plans; and/or
- Had been first published by it.
The Court disagreed, finding that the phrase ‘under the direction or control’ in the Copyright Act requires the claimant to have brought about the ‘making of the work’ (at 125 per Emmett J). The Court held that the NSW government would have obtained copyright in the Plans if it had been in a position to compel the making of the Plans. Instead, the NSW government was only in a position to determine if the Plans, once drafted, met regulatory requirements for survey plans. The Court found that it was not Parliament’s intention to give copyright to the Crown ‘simply as a side effect’ of providing regulatory approval (at 127 per Emmett J). It also held that the Plans were not ‘first published’ by the NSW government.
Although the NSW government did not own copyright in the Plans, the Court held that the NSW government had an implied licence to use the Plans for the purposes of the regulatory framework governing survey plans. This meant the NSW government was not infringing copyright by its use of the Plans and did not need to rely upon section 183 of the Copyright Act.
What this means for you
This case highlights the difficulties in relying upon the Crown copyright provisions in the Copyright Act (and similar provisions in other intellectual property legislation) which give ownership of intellectual property to the Crown. It illustrates that the Commonwealth and States should not rely upon sections 176 and 177 of the Copyright Act (unless as a last resort) as the Courts will not give a broad interpretation to the provisions. Rather, the Commonwealth should assume that the provisions may not apply, or may give rise to disputes, and should ensure that in each case in which it wishes to own copyright in a particular work that it enters into a contract for that work which contains clear and appropriate intellectual property provisions. An important exception to this is if the work was produced by employees of the Commonwealth in the course of their employment, in which case the work will automatically be owned by the Commonwealth.
The case also highlights the usefulness to the Crown of implied licences which may arise from the circumstances in which copyright material is provided to the Commonwealth or a State government and which means the Commonwealth or State is not infringing copyright. The implied licence in this case arose from a specific regulatory regime which set out how the copyright material would be used.
However, outside a situation where the use of the copyright work is defined by legislation, caution is warranted since disputes can arise as to the terms of the implied licence or whether any remuneration is appropriate. A better approach in most cases will be to identify clearly the use that the government agency will want to make of the work. It should then enter into a voluntary licence agreement with the copyright owner that permits that use.
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