Assignment of Copyright

Assignment of Copyright

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This document is intended to achieve a legal transfer of copyright that meets the requirements of section 196 of the Copyright Act 1968 (Cth) (Copyright Act), which requires an assignment to be in writing and signed by or on behalf of the assignor and which also allows for a total assignment or a partial assignment of the copyright.

Section 16 of the Copyright Act states a “partial assignment of copyright shall be read as a reference to an assignment of copyright that is limited in any way” and section 196 allows for either all the copyright to be transferred or the transfer of copyright can be:

  • limited by describing the classes of acts that are with the exclusive right of the copyright owner (such as, describing specific media and methods of exploiting the copyright); or
  • limited to geographic areas or jurisdictions (such as, worldwide, specified countries, or so as to apply to a place in or part of Australia); and
  • applied to a specified period or for the duration of copyright.

There is a body of case law that considers the circumstances in which a court will determine the copyright is transferred by an equitable assignment when there is no assignment in writing that is signed by or on behalf of the assignor: see Robin Ray v Classic FM plc [1998] EWHC Patents 333; [1998] FSR 622; R Griggs Group Ltd v Evans [2005] EWCA Civ 11, [2005] FSR 31.

There is also case law on when a court will determine there is an implied licence of copyright in the absence of a signed agreement that is an effective legal assignment of copyright: see Concrete Pty Ltd v Parramatta Design and Developments Pty Ltd [2006] HCA 55; (2006) 229 CLR 577.

Copyrighted works

The copyrighted works (literary works, dramatic works, musical works and artistic works) or materials other than works (eg cinematographic film and sound recordings) should be clearly specified in SCHEDULE 1 item 1. If the item 1 description is considered to be insufficient to describe the copyrighted works then attach further appropriate material as numbered annexures.

Performer’s protection

If the material being assigned is cinematographic film it may incorporate copyrighted works and other material (such as cinematographic film and sound recordings) that are owned by a third party; or the cinematographic film may include performances that are subject to the performers' protection provisions in Part XIA of the Act. Sound recordings may also include performances that are subject to the performers' protections. The absence of the necessary permission of performers, whose performance in recorded on the film, video or sound recording may result in the performers having a right of action to stop the unauthorised exploitation of their performance.

Moral rights

Part IX of the Copyright Act 1968 provides for moral rights of performers and of authors of literary, dramatic, musical or artistic works and cinematograph films. Sections 195AW and 195AWA of the Act address authors' consent in relation to moral rights and section 195AXJ addresses performers' consent in relation to moral rights. SCHEDULE 1 item 4 provides additional provisions relevant to moral rights and performers' protections if required.

Note that, where it is appropriate to have the author of the works as a contracting party, document “Assignment of copyright works from assignor with moral rights consent from the author” can be used to address the author's moral rights. Alternatively, the assignee may want to take the benefit of an author's moral rights consent in a separate agreement such as precedent “Moral rights deed of consent”.

Part XIA of the Copyright Act provides for performers' protections. Cinematographic film and sound recordings may contain performances in respect of which Part XIA applies. Where the assigned works contain such performances the assignee may want to have the benefit of any agreement with the performer that provides a release or consent to describing the permitted uses of the performance.

Tax

The transaction may be subject to GST (as addressed in clause 6(a)) alternatively in respect to a ‘foreign resident’ assignee the payments may be subject to ‘withholding tax’ (as addressed in clause 6(b)). That is, the payments will be a ‘royalty’ (as defined by Australian Income Tax Legislation) and subject to the withholding tax provisions of that legislation when the royalties are to an assignor who is a ‘foreign resident’.

However, if the payment is made to resident of a country with which Australia has a tax treaty, the rate of withholding tax may be reduced or no tax is required to be withheld.