A recent decision of the Federal Court of Australia, Career Step, LLC v TalentMed Pty Ltd (No 2) [2018] FCA 132 (Career Step) provides a useful reminder of the principles that apply when determining whether a new copyright work is the result of joint authorship.

Joint Authorship – what does the law say?

The question of authorship is fundamental and often of critical importance because the general rule under Australian copyright law is that the author of a work is the first owner of any copyright subsisting in that work (subject of course to certain exceptions, such as that the first owner of a work created by an employee is their employer).

The Australian Copyright Act 1968 (Cth) defines a “work of joint authorship” as “a work that has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the other authors.”

Previous case law on the question of joint authorship has suggested that the test for establishing joint authorship involves an assessment of:

  1. the extent to which two or more people collaborate in the creation of a single copyright work – a question of sufficiency; and
  2. the type of skill and labour that each contributed – a qualitative question.

There has also been reference to whether there was a “common design” between the relevant collaborators.  If the various contributions of collaborators are in fact separate and distinct, case law suggests that the collaborators will not be joint authors for copyright law purposes.

Career Step case

The Career Step case involved a dispute about an online educational course for students wishing to become medical transcriptionists.  The question of establishing joint authorship was of critical importance for Career Step because the authorship of the materials was a key ground on which the respondents contested Career Step’s copyright infringement claims.  In particular, the respondents sought to challenge the existence of a single copyright work by reference to the circumstances of authorship of the materials in question.

Justice Robertson noted in Career Step that the respondents’ claims in relation to joint authorship would stand or fall depending on whether the identified work as a whole was considered a single literary work or whether each of the modules was considered a single work.

This decision of the Federal Court highlights a number of important questions to be considered when making an assessment as to whether a copyright work is the product of joint authorship.  It focuses on the definition of the copyright work in question (which is directly relevant to identifying the author of the work) and the possibility of identifying separate contributions of different authors.  In particular, the Federal Court appears to have been persuaded by Career Step’s evidence of collaboration during the creative process.

The Federal Court found that the work in question was a single work and was created by joint authors for copyright purposes.  Its reasoning appears to have been based on the following considerations:

  1. a work that consists of modules can still comprise one whole literary work for copyright law purposes (and did in fact constitute one single literary work in these circumstances);
  2. it is sufficient for joint authorship purposes to identify the relevant authors who as members of a group had the common purpose of creating the single work.  This seems to shift the focus from the sufficiency and qualitative questions posed in previous case law.  Justice Robertson appears to find that  “the identification of the persons who wrote the material establishes joint authorship” without considering whether the contributions were in each case the type of contribution that attracts copyright – ie whether there was sufficient effort of a literary nature for the collaborator to be considered an author of the work.  It is possible that sufficient evidence was adduced in the case to establish that the subject matter experts in question had expended sufficient qualitative effort so that this was not in issue, but in any event Justice Robertson does not appear to make this assessment in the decision;
  3. there is no requirement for joint authorship that there was one contributor with input into all aspects of a copyright work – there is no condition of “authorial collaboration in the entirety of the work”;
  4. if there is no evidence of collaboration between the relevant authors, there will be no joint authorship – joint authorship is not relevant if the copyright work in question comprises separate and distinct works;
  5. joint authorship will be found if it is not possible to separate the individual contributions of the persons involved in creating the relevant copyright work – the Federal Court was persuaded by the detailed evidence of the creative process that was produced by Career Step and which demonstrated the requisite inseparability; and
  6. on the other hand, a work is unlikely to be the result of joint authorship if it is clearly the result of independent intellectual effort.

Take away messages from the case.

This case serves as a useful reminder that when a new work is being created collaboratively:

  1. the question of whether or not a work is jointly authored is complex and depends on the circumstances.  There is no black and white answer, and the factors that persuade a court in its decision-making may differ depending in different situations;
  2. it may not be possible to identify at the outset of a creative process whether or not a resulting work is going to be the result of joint authorship, and this will turn on the creative process and the nature and extent of the collaboration between contributing persons in practice;
  3. it is generally preferable to execute a written agreement between the parties involved, outlining the agreed intellectual property ownership schematic and incorporating effective assignment clauses and moral rights consent clauses.  Where third parties are involved, these provisions should also include procurement obligations.  Do not rely on the possibility of claiming or refuting joint authorship under copyright law, as this will inevitably result in uncertainty and ambiguity;
  4. genuine collaboration needs to occur between authors for a work to be considered one of joint authorship rather than the result of separate and individual contributions.  If it is possible to separate the contributions of each author, joint authorship is unlikely to be found; and
  5. detailed and accurate records should be kept throughout the creative process of all of the authors who contribute to a work and the nature of their specific contributions.  If third parties are involved, obligations to keep such records should be included in the relevant agreement between the parties.  These records should be carefully preserved, as they may prove invaluable in the event that the created rights have to be enforced.

We would like to acknowledge the contribution of Amanda Cooper in preparing this blog.