Commercialising Your Intellectual Property – Copyright Assignment and Copyright Licences

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Two Ways of Commercialising Copyright

Under section 196(1) of the Copyright Act 1968 (Cth), copyright is personal property and therefore is able to be transferred to another person through assignment. Under the same provision, a copyright owner can also grant a licence to another person to use the copyright in a specific way. These are the two primary ways that copyright can be exploited for financial gain.

The Difference between Assigning Copyright and Licensing Copyright

Whether or not you choose to assign your copyright or licence it out to another to use will depend on whether you wish to retain ownership or not. This is the fundamental difference between copyright assignment and copyright licensing.

Assigning copyright means that you are transferring ownership of the copyright to another person or party for a sum of money. Assignment may not be forever, however, and may be “partial”. This means that copyright is assigned for a limited time, and on specific terms.

Licensing on the other hand is only temporary. Here you are not transferring ownership to another person. Rather, you are giving permission for another person to use your intellectual property in a way outlined in its copyright rights. In this circumstance, however, you can still sue a third party for copyright infringement as you are still its owner under the Copyright Act. There are different types of Copyright Licences, being:

  • Exclusive licences; and
  • Non-exclusive licences.

Licences often involve the licensee paying the copyright owner royalties to use his or her work, a lump sum. Licences may also be a bare licence, authorisation or permission where there is no consideration (money) exchanged.

How do I Assign my Copyright?

In order to assign copyright certain formalities must be complied with. Under the Act[1] the assignment of copyright (whether full or partial) will not be valid unless the assignment is contained in writing. The Act also provides that the assignment can be limited to a specific region in Australia or for a specific time period.

If you do intend to make a partial assignment, however, it is extremely important that the assignment is expressed without unlimited terms or absolutely. If this happens there will be right to have the copyright reverted to you.[2] If the partial assignment is expressed in unlimited and absolute terms, however, whether or not you intended for the copyright to revert to you after a particular period of time may not matter, and there may be no right of reversion.

In these circumstances it is important to engage a lawyer familiar with legal drafting.

How do I Licence my Copyright out to Others?

Under section 10 of the Copyright Act, to be valid an exclusive licence must be reduced to writing. Other types of licences should also be reduced to writing in the form of a licensing agreement. Generally the terms of a licence will be set out in a formal Copyright Licence Agreement.

We’ve put together more information about the types of copyright licences in our resource centre.

If you need any assistance regarding Copyright laws, contact a member of our Intellectual Property Law team on (07) 3252 0011.

This article was written by Eduardo Cruz (Associate).

[1] Copyright Act 1968 (Cth) s 196(3).

[2] Sumner v Beyond Properties (2003) 59 IPR 268.