Ownership of Copyright

OWNERSHIP  OF COPYRIGHT WORKS

The person who creates a Part III work is the owner of the copyright pursuant to  s35(2), subject to exceptions set out in ss35(4), (5) & (6) of the Copyright Act 1968 Cth.

This situation recognised in s35(3) may be modified or altered  by way of an express agreement pursuant to sS35(3).

Under s35(6) where an Employee of an organisation produces a work in the course of their employment which is part of their duties, ownership of the resulting copyright will vest in the Employer.

Therefore drawing the distinction betweeen an Employer and an Employee is important in any investigation into the ownership of copyright.

s35(6) doesn’t have any application to employees of newspapers, magazines or periodicals who produce literary, dramatic and artistic works as defined in the Copyright Act 1968 (Cth).

Ownership of copyright in a work is divided between the publisher and employee under s35(4) for all works which are created post 30 July 1998. The author/employee will retain their copyright for the purposes of reproduction of their work in a book for photocopy.  Ownership of Part IV subject matter resides in the maker or producer, subject to any agreement modifying this position. ss97(2)& 98(2).

Copyright in a ‘commissioned work‘ will usually vest in the person who produced it as opposed to the person commissioning the work, subject to a contrary agreement and a signed transfer of copyright. However there are  some exceptions to this rule in respect of  films and sound recordings,  where  copyright will vest in the person commissioning the work rather than the person who made it,  subject to any contrary written agreement. s97(3), 98(3).

Another exception relates to the situation where a person produces, in exchange for valuable consideration, a photograph which has been commissioned for a private or domestic purpose or a commissioned painting, drawing or engraving.

A photograph taken for a ‘private or domestic purpose‘ is defined in the Act as including “a portrait of family members, a wedding party or children” under s35(7).

This highlights the importance of ascertaining the purposes for which the work is required and ensuring it is made known to the author who is commissioned to produce it.  Aside from photographs which are produced on commission for private or domestic purposes, copyright in commissioned photographs will belong to the Photographer.

You should disclose to the author the purpose for which the work is required so that the person commissioning the work can restrain the use of the work for any other purposes s35(5).

Once again, the  default ownership rules relating to ownership of copyright which exist under the legislation can be modified or excluded by express agreement to the contrary under  s35(3).

RIGHTS OF COPYRIGHT OWNER

Copyright ownership vests in the owner of a work a bundle of exclusive rights which include the right to exploit or prevent exploitation of those rights through control over the rights to copy, distribute, make a work available online and amongst other things, to make adaptations of  a work.

Most people think of copyright as a positive right exercised by the copyright owner, however copyright is also used by the copyright owner to control or censor the publication and distribution of their works.

Indeed in the Soviet Union most  authors of Samizdat (underground) publications authors wrote under a pseudonym to avoid harrassment and recognition by Government officials. Only a small number of Samizdat authors such as Solzhenitsyn and Levitin-Krasnov were known by their real names.  With respect to anonymous Samizdat publications published under a pseudonym in the West there won’t usually be a complainant for obvious reasons.

Copyright has also served as a tool of censorship to prevent expression from reaching the public in the political and religious realm.  Rap star Eminem prevented a publication from publishing the lyrics to racist songs he penned.   The Church of Scientology have used copyright law to prevent access to scrutiny of their scripture.

The most famous example of copyright being used to prevent publication by a well known author is  J.D. Salinger preventing the publication of a biography with excerpts of his writings. Corporate interests have on many occasions used threats of copyright infringement to shut down forums which review or complain about their products.

This kind of invoking of copyright may seem odd as most of us think of copyright as a way to exploit or protect our economic rights in a work for gain. However, in these instances copyright was used in a manner to protect the owners’ right to privacy or to censor material by using a copyright property based regime.

The exclusive rights of the copyright owner are subject only to certain exceptions created for the public benefit such as the right to fair dealing or fair use of a copyrighted work.  Fair dealing or fair use, in the US,  is a defence raised to copyright infringement. Therefore there are two steps to showing that your rights have been infringed. Firstly, you must show that a substantial part of you work has been taken, which is judged qualitatively, not quantitatively which amounts to an infringement of your work.  Secondly you need to work out whether a third party who has infringed your work by use of a substantial part of your exclusive rights without your permission or consent is not excused by the defence of fair use or fair dealing.  These are two separate stages of enquiry which are sometimes confused.

It is often said that taking 10% of a work is, as a rough rule of thumb, defensible however this is inaccurate and misleading.  Copyright infringement depends on the infringer having taken the heart of the work, which may only be one single frame of a motion picture, or a note or two of a musical work.  It depends on the work in question, and what in a given situation constitutes a substantial part of a work.

JOINT OWNERSHIP OF COPYRIGHT

The person who created a work will be the owner of copyright subject to exceptions for journalists, who will own the copyright of their work in respect of reproduction of their works for certain purposes.  Arguably, terms can be implied into an academic’s contract of employment to the effect that they own copyright in their academic work, except where the contract expressly provides otherwise.

Joint ownership arises where two or more people are involved in producing a collaborative effort. In any collaborative work issues of joint authorship may arise unless carefully defined by contract.

Joint ownership issues can arise in relation to works produced as a result of a partnership or Joint Venture. s10(1) of the Act defines such a work as one that has been produced by two or more people collaborating as authors and is such that the individual contributions of each of the authors can’t be separated out from those of the others.

Consequently,  if it is not possible to separate the contributions of the co-authors there may be problems not just in exploiting the copyright, but also in enforcing it if the need should arise. Co-owners are deemed to own a work as tenants in common in equal shares.

When considering embarking on any collaborative copyright work it is therefore prudent to enter into a written agreement to reflect the desired ownership situation of the contributing parties.

Whilst a co-owner is able to sue for infringement of copyright without the consent of the other co-owners, they will only be entitled to recover compensation for damages the co-owner has suffered. (See Prior v Landsdowne Press Pty Ltd (1977) VR 65).

Joint ownership disputes can arise in a number of contexts.  For instance in Flyde Microsystems Ltd v Key Radio Systems,  Laddie J considered whether the defendant’s time in testing and ironing out software bugs in the Plaintiffs’ software was the ‘right kind of skill and labour‘ sufficient to give rise to an entitlement to be treated as a joint author of the finished work, in this case, the Plaintiff’s ‘Keyport’ software used in the manufacture of a range of telecommunications and electronic goods.

The Plaintiff had earlier sold printed circuit boards to the defendant which made use of the software they had designed, without any agreement governing the relationship between the parties in respect of that software.  When they later discovered that the software was being used by the defendant to make radios fitted with PCBs incorporating their software, but purchased from another source, they sued alleging copyright infringement of their software.

The Court held that the defendant, as a software tester, didn’t have any ownership rights, as the assistance they rendered in testing the software was analogous to the assistance a proofreader or an editor would render  to an author of a book.

CONTROLLING OWNERSHIP OF COPYRIGHT WORKS THROUGH CONTRACT

Ownership of copyright works is best managed by contracts which can clarify issues of ownership and enable the parties to control copyright ownership and commercialisation issues through detailed contractual provisions.

In any contract, the rights and obligations of the parties should be set out comprehensively to avoid any uncertainty or ambiguity.  This applies to any kind of relationship which may result in the creation of intellectual property, and extends to agreements which are entered into between authors and publishers in the commercialisation of a copyright work.

The drafting of the document is critical in the author being able to exercise control over the exact permissions granted to a publisher to copy, sell or distribute a work, a topic dealt with in more detail in the section on copyright licensing and assignment.

EMPLOYMENT AND OWNERSHIP

As stated above, the person who creates a copyright work or other subject matter will be the owner of that material, subject to some specific exceptions under the Copyright Act 1968 (Cth) Act. When embarking on any collaborative work it is critical to identify who will be creating copyright material and whether those persons are employees, as if the creator is an employee who created the relevant work in the course of employment, the employer will own the copyright in the work, subject to any contrary agreement.

Common law has developed complex rules to determine who is an employee, however generally speaking as a rough rule of thumb if the manner 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 duties, that person may retain the copyright in the material. The rules can be complicated and once again, it is advisable to set out the rules of ownership in advance to avoid disputes.

In summary, 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 pursuant to s10(1) of the Act.

In the absence of any agreement to the contrary, co-authors will own the relevant work as tenants in common, rather than joint tenants and hold in equal shares.  As co-authors they aren’t permitted to exercise their copyright rights or authorise others to, without the consent of the co-owner/s.

It is therefore clearly preferable to  identify what each co-owner may do in relation to the copyright material should a co-owner seek to prevent another exercising their copyright rights.

PROVING OWNERSHIP OF COPYRIGHT

As stated elsewhere copyright arises automatically as soon as a work is created and doesn’t require any formal registration as with other forms of intellectual property. Copyright also covers both published and unpublished works.

Proving ownership of copyright is critical particularly in the absence of a government registration system.  In Australia, unlike other countries such as Canada and the United States,  there is no Government registration system for copyright protection.

Copyright laws across the world state that you will own copyright in any work you create from the time you reduce your work to a tangible or material work which is perceptible either directly or with the aid of a machine or device.

Furthermore, as a result of the operation of international copyright treaties, such as the Berne Convention For the Protection of Literary and Artistic Works and the Agreement on Trade Related Aspects of Intellectual Property (TRIPS), Australian copyright works will enjoy automatic protection in most other countries.

However, for practical purposes, it is important to be able to prove both the subsistence and your ownership of copyright in copyright infringement proceedings.

Although it isn’t necessary to register your work or even affix a copyright symbol and date, it is essential that you take some steps to prove ownership of your copyright if you wish to derive the benefits associated with copyright protection.

Registration with a foreign government copyright office, such as the United States Copyright Office, can assist in Australian court actions pursuant to s126A and s126B of the Copyright Act, which create certain evidentiary presumptions in relation to the subsistence and ownership of copyright where either is put into issue by a defendant in court proceedings.

In any copyright case you must firstly show that protection exists in a particular work and that you own the copyright.  Many infringers of copyright will challenge you to prove your copyright ownership, which will mean producing evidence to verify your claim.

The copyright notice consists of the symbol © which precedes the name of the copyright owner and the year of first publication. In relation to evolving or dynamic works where you are creating numerous iterations of a work, it is recommended that you date and time stamp each iteration for evidentiary purposes.

You may have heard of the expression ‘poor man’s copyright’ which creators use to protect the copyright in their works, which has been a popular method of establishing proof of ownership of copyright works by creators.  However in the reality as the copy you post remains in your possession, you have ample opportunity to tamper with the contents, and many defence lawyers will mount an attack on the evidentiary value of this form of proof of copyright.

The process involves placing your work in an envelope and mailing it to yourself via registered mail.  As it is being sent registered mail it receives an official post office seal including the date on it. It is important that the seal is not broken so authors must not open the envelope.

Poor man’s copyright is intended to prove that the work inside the envelope was created by the author on a particular date.  Whilst it is an affordable method of establishing proof of copyright ownership, it isn’t necessarily reliable and may not offer the necessary protection in a court of law resulting in a contested ownership dispute.

Obtaining registration, publishing your work or taking other steps to verify your ownership is not something that would be routine or practical for every single work or iteration you create.  It will obviously depend on the value and significance of the work in question as to what level of resources you wish to invest to secure your interests.

The best option is to have your work registered, so that in the event of a dispute, you have strong evidence to defend your claim as the copyright owner.  It will provide a presumption of ownership of your copyright from the date of registration and therefore give you an evidentiary advantage.

You may need to prove ownership of  intellectual property for the purpose of gaining access to legal remedies or in pursuing or defending copyright infringement proceedings.

If a third party attempts to sue you for copyright infringement, without proof of ownership it may be difficult to assert your rights in court.  It is up to a Court to determine which party has the better claim to entitlement to a work.

Merely dating a document and affixing a copyright symbol to it will not necessarily afford you irrefutable proof of subsistence and ownership of copyright in a work.   An alternative solution involves using a lawyer and a notary or an escrow service.  There are some private companies that offer registration services.  These services can provide you with the capability of having the time and content of your work certified using modern technology such as  digital fingerprinting, email verification and storage of your copyrighted work for either a flat fee or on a subscription basis.

If you plan to use an online registration service ensure you should conduct some form of due diligence to ensure it will provide you with the necessary protection by conforming to the most recent industry standards in relation to security and encryption.  Be mindful of confidentiality, trust and security issues particularly whenever you are uploading your content to an online service.

Having a copyright protection notice on your work or producing evidence of an overseas copyright registration may raise a strong presumption of ownership in a work.

However that still doesn’t eliminate the possibility someone will challenge your ownership of copyright in a work.  If there is a dispute about who was the real creator of a work you may still have to go through procedures to prove your authorship and ownership of a copyright work.  A Court resolving an ownership dispute would evaluate all relevant evidence including oral and affidavit evidence from yourself as the creator, evidence of other persons present when the material was created or who witnessed early drafts of the work.

Early drafts of a work can be important evidence in themselves of ownership of copyright.  This is why it is important when producing a work that you think about retaining dated draft plans, copies and outlines of your work, similarly dated records of any associated research performed in producing the work, and keeping any written records of agreement which you enter into which are relevant to the ownership status of the work in question.

There are ways of protecting your content without granting access to the contents of your documents or files to a third party so that you don’t have to send files to the certifying body unless you were wanting to use them as an online storage medium. Remember also that if you are using an organisation for storage purposes these facilities will usually only be available if you continue to pay subscription fees. You should rely on having multiple backup systems, including offline backups of your works.

Technology  affords authors the option of having their works digitally fingerprinted, giving them not only a storage solution but also a digitally signed and time stamped certificate of content.

Ensure whatever solution or organisation you use conforms to acceptable industry standard digital signature technology.  For instance p7s refers to  PKCS #7 version 1.5.IETF 2630 (Public Key Cryptography Standard 7) and  designed to secure digitally signed content to a certain standard.

The legal status of the certificate is important in terms of whether it is likely to be recognised in most courts.   Encryption, time stamping, digital signature, and deposition is the best way to prove your copyright for the purpose of proof of ownership.

A digital fingerprint is a unique identifying sequence of digits which is the result of applying a mathematical algorithm to the complete content of a digital file. The process of applying a digital fingerprint generates an algorithm which will also detect the slightest alteration to a document within the fingerprint to detect infringement.

Digital technologies and various forms of Digital Rights Management have become an important part of protecting works in the online world, and there are provisions in copyright legislation which seek to prevent the circumvention of digital rights management systems for the purpose of protecting copyright works.

PROTECTING YOUR MATERIAL IF YOU ARE MAKING IT AVAILABLE ONLINE

Technological Protection Measures will not prove your ownership to a copyright work but may afford you some level of protection if you are proposing to make your work available online. There are various levels of sophistication of Technological Protection Measures. If you are proposing to make your work available online there are ways to limit access to your copyright workwithout your permission.

Technological Protection Measures are of two main types.  There are technical means of restricting access to your material and those that prevent copying.  You may be familiar with a lot of these kinds of technical measures ranging from password only access, view only documents and low resolution images. There are of course limitations and it is always possible for technological protection measures to be circumvented.  With respect to view only documents snapshots can be taken providing access to works to be disseminated.

The practical methods of protection have legal support in the rights given to copyright owners to take legal action against any person who has either made, supplied, distributed or imported devices to circumvent Technological Protection Measures (TPMs).  Distribution of services or devices that circumvent TPMs is a criminal offence under copyright laws of most jurisdictions.

Disclaimer:  This site is intended to operate purely as an informational  resource, a general overview of intellectual property and other related legal issues arising online.   It isn’t a substitute for professional legal advice from a lawyer certified to provide legal advice in your jurisdiction.  Neither is it intended to create an attorney-client  relationship.   The law varies in each jurisdiction and we do not warrant the accuracy, completeness or usefulness of any material you read here.

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