I paid for it – why don’t I own it? – the copyright trap, article by Margaret Ryan, Lawyer and Trade Marks Attorney

If your business commissions a graphic artist to create a logo and brand collateral for the business, who owns the copyright in the artwork? Have you thought about this?

It is important that businesses do think about this when commissioning third parties to create artistic works and literary works. These works can include:

• logos;
• artwork and wording on product packaging and brand collateral;
• product information such as manuals;
• photographs;
• advertising; and
• social media.

This is because the default position in Australia is that the author or his/her employer will own the copyright, not the commissioning party. This usually comes as a shock to most businesses because they assume that “if I pay for it, I own it”. In order to own the copyright, it is normally necessary to obtain a written copyright assignment from the author or his/her employer, such as the graphic design company or advertising agency.

It is best that this be done at the start of the engagement, when the business can exercise the maximum leverage over the author/employer. If the author is not prepared to assign the copyright, the business can go elsewhere.

If there has not been a copyright assignment, the business can still use the copyright material for the purpose for which it was prepared. However, problems can arise if the business wishes to use the material for a different purpose – for instance, instead of just using artwork on shopping bags, caps and T-shirts promoting the products, the business wants to use the artwork on a wide range of merchandise to be sold separately. Without a copyright assignment or an agreement from the author to use the artwork in such a broad way, the business would need to go back to the author and ask for permission to do this – and possibly pay an additional fee.

The question of ownership of copyright often comes up when someone else is copying the logo or collateral of the business. This may amount to a copyright infringement, which can be a useful claim for the business to be able to make to stop the infringing conduct. However, unless the business owns the copyright (or at least has a written exclusive licence to use the copyright) the business cannot make this claim. It is often at this time that a lawyer will suggest that the business try and get an assignment of the copyright. However, this may not be so easy if there is no ongoing relationship with the author or the author is difficult to locate. Alternatively, the author may be prepared to assign the copyright but only for a (sometimes substantial) fee.

It is recommended that a business think about copyright ownership at the outset of commissioning artistic or literary works so that they can agree in writing on who owns the copyright. This is best practice for businesses who understand that copyright is an important business asset.

29 January 2020

This article provides general information only, and is not intended as legal advice specific to your circumstances. Please seek the advice of a lawyer if you have any particular questions.

For more information, please contact Margaret Ryan at 

Margaret Ryan

Lawyer and Trade Marks Attorney

IP by Margaret™

E: margaret@ipbymargaret.com.au 

W: www.ipbymargaret.com.au 

PH: 03 9402 0778