As a copyright lawyer, I’m often asked by designers about ownership of their work. Does the client own the work or does the designer hold the rights? It’s complicated.
I created it – isn’t it mine?
The short answer is ‘not always.’ Leaving aside any licenses granted over the work, if you create a work (which for now we will assume is covered by the Copyright Act 1968 (Cth)), then you are the ‘author’ of that work. Ordinarily, this also makes you the owner of any copyright in the work.
However, there are exceptions to this when you are an employee. Under the Copyright Act, if you create a work as part of your employment under a contract of service or apprenticeship, then your employer owns the copyright in that work.
There are two circumstances where this isn’t the whole story:
- If you work for a newspaper, magazine or periodical, then although your employer owns the copyright (as set out above), there are exceptions in relation to the reproduction of the work for very limited purposes, such as reproduction for inclusion in a book, or reproduction of a hard copy facsimile (e.g a photocopy) of the work.
- Alternatively, if you have agreed to be paid to take a photograph (for private or domestic purposes), paint or draw a portrait, or make an engraving,then although the person who commissioned the work is the owner of the work, if they told you (or implied) why they wanted the work to be created, you can stop them using the work for any other purpose other than for the stated (or implied) purpose.
What about my contract?
This position can also be modified by the terms of any contract you agree to. For example, a lot of employment agreements contain clauses like this one:
The Employee agrees that COMPANY is the sole and exclusive owner of all Intellectual Property created or conceived, in whole or in part, by the Employee in the course of his or her employment, howsoever and wherever created or conceived, whether solely or jointly with others and whether during office hours or otherwise.
You have to be careful of any contract containing a clause like this, as it will change the ordinary position under the Copyright Act and may result in you losing rights you might otherwise have had over your work.
On the other hand, you may want to use a contract to ensure you keep some (or all) rights over your works. For example, you may wish to negotiate terms in your contract that allow you to continue to use anything you create in a portfolio, so you can show it to future employers or clients without infringing the copyright in that work.
Alternatively, you may want to retain ownership over some works (for example, for something you began working on before you were employed, but wanted to keep working on during your employment), and only let your employer use that work in certain ways.
These rights can all be included in the contract between you and your employer (though any agreement that assigns (or transfers) copyright must be in writing and signed by, or on behalf of, the person assigning their rights).
Some Important Questions
In any situation where you are creating works for another person or a business, to help protect your intellectual property, you should ask yourself a few important questions:
- “Am I an employee?” (ie, am I creating a work as part of my employment under a contract of service or apprenticeship?)
- “Do any exceptions about newspapers, magazines, photos, portraits or engravings apply?”
- “What does my contract say?” (ie, does my contract override the general legal position?)
If you aren’t sure of the answers to any of these questions, then you may not be sure who owns ‘your’ work, or what you (or they) can do with it!
We Can Help
We are always ready to help AGDA members understand their Intellectual Property rights, to review the specific terms of any contracts, or to assist in drafting clauses that can be used to ensure they keep control of their work. For more information, simply email Chris on [email protected] or give us a call on (02) 8297 1100 for a free initial consultation.
This article does not constitute legal advice, and is not intended to provide a comprehensive statement of the topics discussed within. This article does not create a solicitor-client relationship between you and Finn Roache Lawyers. You should seek legal and/or other professional advice before acting or relying on this article.