When it comes to copyright works, having clear rights of ownership and maintaining good records are essential.

Ownership

Under the Copyright Act 1994, the default position is that the person who created the original copyright work ("the author") is the first owner1 of rights in that work. You create it, you own the rights in it – simple.

The position changes in two situations: first, if you create the work during the course of your employment, in which case your employer is the first owner of copyright in the work; and, second, if you create the work as a result of a commission – this is known as "the commissioning rule".

The commissioning rule applies to works such as computer programs, paintings, drawings and photographs; it does not apply to literary works such as articles and books.

The rule is that where a person commissions and pays or agrees to pay for the creation of such a work and that work is made as a result of the commission that person will be the first owner of any copyright rights in that work. So if you commission a photographer to take photos of your staff for your website, and you promise to pay for those photos, you will be the first owner of copyright in those photos.

You can opt out of the commissioning rule by mutual agreement with the person creating the work for you. This is a common practice among creative agencies and photographers, who may have in the past been burned by clients who promised to pay for works created under a commissioning arrangement but who subsequently did not pay. In such cases the agency or photographer was left not only out of pocket but also without any rights (other than moral rights) in the works they created. Ouch!

Maintaining good records

If your business regularly creates or commissions original copyright works, you should as a matter of best practice maintain an accurate record and file of your copyright works.

Your records should identify the following details as a minimum:

  • title of work
  • date of creation or modification
  • version number (if a modification or variation of a prior work)
  • name of the author(s) (employee or supplier)
  • status of the author(s) (employee's position or third party company status)
  • if applicable, evidence of the commissioning arrangement (such as a contract) under which the work was made.

If you create or commission different kinds of copyright works you should identify those different categories of works and segregate the works accordingly.

Maintaining good records of copyright works achieves two things: first, it makes your life easier by enabling you to locate all your copyright works in one place; and, second, it makes establishing your rights in the copyright works easier if you find yourself in a dispute involving those rights.

Footnote

1A legal term to describe a person entitled to make an application for a patent. In New Zealand this includes any person claiming to be the true and first inventor, the assignee of the inventor, or the legal representative of a deceased inventor or his/her assignee.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

James & Wells Intellectual Property, three time winner of the New Zealand Intellectual Property Laws Award and first IP firm in the world to achieve CEMARS® certification.