The decisions of the High Court and Full Federal Court in the
case of Copyright Agency Limited v State of NSW confirm
that it is not always safe to rely on the special copyright rules
that apply to the Crown.
Special copyright rules that apply to the
The Copyright Act 1968 (Cth) includes two special
copyright rules that apply to the Crown (including the Commonwealth
and the States). The provisions relate to:
Crown ownership of copyright.
Crown use of material in which copyright exists.
Sections 176 and 177 of the Copyright Act have the effect that,
unless there is a written agreement to the contrary, the Crown is
the owner of copyright in a work or subject matter other than work
that is made or first published under the 'direction or
control' of the Crown.
Section 183 of the Copyright Act has the effect that an act by
the Crown that would ordinarily infringe copyright, is not taken to
be an infringement if the act is performed 'for the
services' of the Crown. However, there are still terms that
apply to the doing of the act (including terms of remuneration).
The terms that apply are the terms agreed between the Commonwealth
or the State and the owner of the copyright or, in default of
agreement, the terms fixed by the Copyright Tribunal.
Copyright Agency Limited v State of NSW
The case of Copyright Agency Limited v State of NSW
considered the application of the special copyright rules that
apply to the Crown.
The case relates to survey plans. The State of NSW requires
survey plans to be lodged with Land and Property Information (LPI),
a division of the Department of Lands, for the purpose of
registering and issuing title in property. LPI uses the survey
plans that it receives for various other purposes, including
on-selling the plans to the public. Copyright Agency Limited is a
collecting society that represents surveyors and other copyright
(Copyright Agency Limited v State of NSW  FCAFC
The State of NSW claimed that it owned the copyright in survey
plans created by surveyors because the plans were made or first
published under the 'direction or control' of the
Crown. The Full Federal Court rejected that argument. It held that
the plans were made for the surveyors' clients and were
first published when they were provided by the surveyors to their
clients. Surveyors always provide the plans to their clients first
because the plans must be signed by the client before being lodged
The Full Federal Court held that although the State of NSW did
not own copyright in the survey plans, it had an implied licence to
use the plans including to on-sell the plans to the public.
(Copyright Agency Limited v State of NSW  HCA 35)
Copyright Agency Limited appealed the Federal Court's
decision that the State of NSW had an implied licence in respect of
the survey plans.
The High Court upheld the appeal, finding that the State of NSW
did not have an implied licence to on‑sell the plans to
In the absence of an express or implied licence, section 183 of
the Copyright Act applied. Accordingly, the State of NSW did not
infringe the copyright in the survey plans by on-selling them to
the public, but is required to remunerate the copyright owners for
the use of the plans.
What it means for you
It is good practice not to rely on the special copyright rules
that apply to the Crown without first asking the following
Is the Crown ownership provision (sections 176 and 177) likely
(The decisions in Copyright Agency Limited v State of NSW
indicate that it will not be possible in all circumstances to rely
on the Crown ownership provision).
Can a better outcome be achieved for the Crown by negotiating
an agreement with the copyright owner before using the copyright
material, rather than relying on section 183?
(Remembering that the Crown use provision (section 183) requires
the Crown to remunerate the copyright owner as agreed between the
Crown and the owner of the copyright or, in default of agreement,
as fixed by the Copyright Tribunal).
Phillips Fox has changed its name to DLA Phillips Fox
because the firm entered into an exclusive alliance with DLA Piper,
one of the largest legal services organisations in the world. We
will retain our offices in every major commercial centre in
Australia and New Zealand, with no operational change to your
relationship with the firm. DLA Phillips Fox can now take your
business one step further − by connecting you to a global
network of legal experience, talent and knowledge.
This publication is intended as a first point of reference
and should not be relied on as a substitute for professional
advice. Specialist legal advice should always be sought in relation
to any particular circumstances and no liability will be accepted
for any losses incurred by those relying solely on this
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).