The person who creates a Part 111 work is the owner of the copyright S35(2) with exceptions set out in S35(4), (5) & (6) which can be excluded or modified by way of an express areement pursuant to S35(3). For instance, 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 will vest in the Employer. Therefore drawing the distinction betweeen an Employer and an Employee becomes critical in any investigation over ownership of copyright. This difficulty has become more pronounced with the increasing use of outsourcing. It is also sometimes difficult to discern whether a person was a contractor and whether that contract confers any rights in IP to the contractor. This rule however doesn’t have any application to employees of newspapers, magazines or periodicals who produce literary, dramatic and artistic works. Copyright is split 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 1V subject matter in the maker or producer subject to any agreement modifying this position. s97(2), S98(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 signed transfer of copyright.  There are however some exceptions for films and sound recordings where the 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 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 of 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. It is prudent to 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, these default ownership rules can be modified or excluded by express agreement to the contrary S35(3).

Joint ownership arises where two or more people are involved in a collaborative effort in producing a work, in which case issues of joint authorship may arise. 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 fo 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 in enforcing it, as this requires the consent of all parties, who are deemed to own the work as tenants in common in equal shares.

When considering entering into any collaborative copyright work it is therefore prudent to enter into a written agreement to reflect the desired ownership situation and which contains any necessary assignments. 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 in fact suffered. 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 had to decide whether the defendant’s time in testing and ironing out software bugs in the Plaintiff’s software was the ‘right kind of skill and labour’ sufficient to give rise to an entitlement to be treated as a joint author of a 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 in 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 renders to an author of a book.