This document is a deed of assignment.
The deed is between an author or owner of material assignor and the producer for the assignment of intellectual property rights in certain material. The material that is the subject of this agreement is defined in the schedule to the deed. The assignment set out in clause 2 may need to be revised to address the specific nature of the material and related intellectual property rights being assigned.
Each party provides warranties to the other party that it has:
- the authority to enter and to perform its obligations under the deed; and
- the ability to perform its obligations.
There are a number of warranties specific to the assignor, where they warrant to the producer that:
- the grant of rights will not infringe the rights of any other person; and
- the information they have provided to the producer is true and not misleading.
Copyright Act 1968 (Cth) (Act)
Moral rights under Part IX of the Act and performers protections under Part XIA of the Act are addressed in clause 4.2(e) in relation to warranties. Moral rights and performers’ protections may not be relevant to all applications of this deed of assignment. The following should be noted about moral rights as an author in respect of a work and of a performer in respect to a performance:
- moral rights are not transmissible by assignment (see sections 195AN(3) and195ANB(3) of the Act);
- authors and performers may consent to any act or omission that may otherwise be an infringement of moral rights (see sections 195AW, 195AWA and 195AXJ of the Act);
- copyright is a property right and so is transmissible by assignment (see section 196 of the Act). This is because they they are registered trade marks and service marks, registered designs and patents under their respective statutes.
The definition of confidential information in this deed is focused on the trade secrets and know how that may be the subject of the assignment. This definition should be compared to that which appears in the document called “Option deed”, which focuses on a range of information related to the option transaction that the contracting parties may wish to keep secret. That document is more appropriate for use when trade secrets and know how are not the subject of the assignment.
Clause 5(a) addresses the information that the assignor may retain because of the nature of the information, though that the assignment includes the equitable interests in it. For the basis of protection of confidential information under the law of equity rather than as a proprietary right, see Moorgate Tobacco Co Ltd v Phillip Morris Ltd (1984) 156 CLR 414,  HCA 73 ; Julie Breen v Cholmondeley W Williams (1996) 186 CLR 71,  HCA 57.
Clause 5(b) and 5(c) provide for the ongoing obligation of confidence on the assignor in relation to:
- any confidential information as defined in clause 1.1 that is being assigned by the assignor; or
other technical or business information disclosed by the producer to the assignor.
This document has been authored for Lexis Nexis by Morris Averill, Solicitor, Averill Media Legal Services.
This document is prepared with the assistance of Specialist Editor Jim Lennon, Special Counsel, Norton Rose Fulbright.