Usually when you buy something you expect to own it outright.
For example, you buy your friend’s car – now you own a car to use. Your friend no longer has one. He can use yours, but only with your permission and upon your terms.
But when it comes to creative works and copyright, things are not quite so simple. In fact, it’s common for people to be confused about who owns the copyright in a work, especially if it has been commissioned. That confusion can lead to legal headaches for everyone involved.
What’s the problem?
To understand the legal issues, it helps to think of a common example: commissioning a photographer.
It’s common for small businesses to use an outside contractor to have some professional photography taken. But what if the photographer then used those images to promote their own business? Or sold prints to other people?
Your business might have paid for this work, but it doesn’t necessarily mean that you own the copyright in the work and that you can enforce copyright against the photographer, or anyone else for that matter. What’s more, making threats about it without actually holding the copyright could land you in even deeper legal hot water.
What is the law?
Copyright is a type of personal property, which means that you can sell (transfer) or license it to someone else.
Under the Australian Copyright Act, the author (creator) of a work is usually the first owner of the copyright. Unlike other types of intellectual property, they own copyright automatically upon creation of a work.
There are some exceptions. For example, employees who create original works in the course of their employment. However, this is not the case when it comes to outside contractors.
Any assignment of copyright to another person must be in writing and signed by or, on behalf of, the owner. Simply paying for a work to be created does not mean that you will own the copyright in it.
The requirement for an assignment of copyright to be in writing and signed includes assignments made via digital communications. The Electronic Transactions Act provides that signature requirements in federal laws can generally be met electronically, as long as the person and their intention can be identified.
This created some problems – particularly with wedding photographers selling private family photos – so in 1998, the law was changed. Now, contractors who take photographs for a private or domestic purpose don’t own the copyright in the photographs. But they can stop the photos being used for anything other than private or domestic purposes.
But, importantly, this exception does not apply to businesses. So if you use the same photographer for your wedding and your small business website – you own the copyright for the personal photos, but not the others.
Finally, if you make an unjustified or groundless legal threat asserting infringement of your copyright, then the other party could take legal action against you. (www.podlegal.com.au/jumping-the-gun-how-copyright-and-trade-mark-treats-can-backfire/)
What can you do?
As you can see, ownership of copyright can get a bit confusing when it comes to commissioned works.
But there are three easy things to remember to make sure you don’t get caught out when using a contractor to create original works:
- Make an agreement with the contractor about who will own the copyright – before engagement commences.
- Ensure the copyright is transferred to you upon creation of all original works – in writing and signed.
- Be aware that to assert copyright, you must own it, or risk making a groundless threat and opening yourself up to legal action.
Finally if you’re in doubt at all, get legal advice. You don’t want to go to enforce your rights only to learn that you have none.