A fresh reminder to agree and document positions on IP

4 min read


The Federal Circuit Court provides a fresh reminder of the need for businesses in the creative industry to agree and clearly document positions on intellectual property (IP). A videographer who made a video under commission, without agreeing the IP position with the commissioner, found out that it was not the copyright owner in the video. Although the parties later signed a retrospective assignment, this did not have retrospective effect on third parties. As a result, the videographer could not claim copyright infringement against a party that had been given permission to use the video by the commissioner.

Key takeaways

  • The party that commissions and pays for the creation of a film is generally the copyright owner, unless a contrary intention is agreed at the time.
  • A retrospective ‘confirmatory’ agreement cannot change the copyright ownership position. A retrospective assignment is not effective to bind third parties, except where it is perfecting an earlier equitable assignment and conveying rights to sue for past infringement.
  • Copyright licences will bind each successive owner of the IP.

Who in your organisation needs to know about this?

Legal team, procurement and commercial contract management team, content creators. 

Background

Emprja Pty Ltd owns Abell Point Marina (APM). During the 2016 Clipper Round the World Yacht Race, APM hosted a stopover for the race, and Project 64 Pty Ltd, which operated a helicopter sightseeing business, participated in hosting the welcome party. Project 64 commissioned Whitsunday Aerial Solutions Professionals Pty Ltd (WASP) to film drone footage of the event.

Project 64 gave the footage to APM, and APM later authorised other parties to include the footage in videos on social media to promote later events.

WASP and Project 64 had no written agreement in 2016 about ownership of copyright in the footage, although after discovering APM’s usage (in 2018) they entered into a ‘confirmatory deed’ stating that WASP was the copyright owner, and an assignment deed of the copyright which was stated to have retrospective effect. WASP claimed APM’s usage was outside the terms of any licence which Project 64 was permitted to grant to APM, and therefore infringed WASP’s copyright.

Who owns a commissioned video?

In Whitsunday Aerial Solutions Professionals Pty Ltd v Emprja Pty Ltd [2021] FCCA 1548, the Federal Circuit Court found Project 64 to be the copyright owner in the 2016 footage. Under Australian law, copyright works are generally owned by the author, even if it is created under commission, unless the author assigns the rights to another person. However, under section 98(3) of the Australian Copyright Act 1968, copyright in films made pursuant to an agreement for valuable consideration is owned by the commissioner, subject to any agreement to the contrary. In this case, the oral agreement to engage WASP’s videography services did not include any discussion of copyright ownership, suggesting any agreement contrary to the default position at law. The 2018 ‘confirmatory deed’, which purported to formalise the oral agreement, could not retrospectively change that position.

Retrospective assignment

The court then turned to consider the 2018 assignment deed, which WASP said vested all copyright in the footage to WASP ‘with effect from the date of creation of‘ the footage.

The court found that the 2018 assignment was generally valid and effective, but retrospective rights in an assignment could only be established insofar as they perfect an equitable assignment retrospectively and validly convey rights to sue for past infringement. An equitable (ie, beneficial) assignment can arise where the parties agree to transfer IP, but the assignment does not fulfill the formalities required for a legal assignment – such as the requirement for a legal assignment of copyright to be in writing. In this case, WASP failed to establish that there was any agreement that it would own the copyright when the footage was commissioned. There was therefore no earlier equitable assignment. The 2018 assignment was an assignment of legal and beneficial title, not the perfection of an earlier equitable assignment. As against other parties, such an assignment cannot retrospectively change the legal reality that, in 2016, Project 64 was the owner of the copyright.

Further, the licence granted to APM by Project 64 (as the owner at the time) binds WASP as the successor in title.

WASP also argued that the licence granted by Project 64 to APM was limited to use of the video to promote the 2016 event, but the court was not convinced that there was sufficient evidence to support this argument.

Actions you can take now

  • When entering into any arrangement for the creation of new IP, parties should ensure that the agreed arrangements as to ownership and usage rights in relation to the IP is clearly documented in writing, before the IP is created.
  • Purchasers acquiring IP assets should undertake appropriate due diligence in relation to all licences and other encumbrances on any material IP.