Legal

Copyright 

Copyright law covers a wide variety of matters, including protection of software, books, artistic works, photographs, sculpture, musical works, dramatic works, films, video and television programs, to name a few.

In Australia, Copyright law is governed by the Copyright Act 1968 (Cth).

You do not have to apply or register to obtain copyright protection for such works; it comes into existence automatically when the work is created.

The main issue that arises in commercial life in relation to copyright is ownership. Often it is owned by the author and not the person who commissioned the author to create the work.

Accordingly, it is often necessary to transfer the copyright in the work from the author to the person who commissioned it. This is particularly the case in the IT industry where contractors are used to develop software.

Where the author is the employee of a business, the employer will own the copyright.

We can can attend to all of your copyright law needs, including:

• general advice and assistance in relation to copyright law;
• commercial agreements relating to copyright – licence agreements, transfer agreements (assignments); and/or
• copyright litigation and disputes.

Businesses that are likely to need copyright law advice include:

• publishers;
• software based businesses;
• IT contractors;
• web developers and designers; and/or
• anyone dealing with any of the above businesses.

IP Assignments

Apart from IP licences, such as software licences, the most common types of IP Agreements your business will encounter are IP assignments.

IP Assignments transfer the ownership of IP from one person to another. Typically these are used:

• in business sale agreements to transfer the IP of the business being purchased from the seller to the buyer;
• business restructuring – to transfer the IP of one company in a business to another; and
• to transfer IP created by a founder of a business or its employees to the business.

To be effective, IP Assignments must be in writing and signed by the IP owner and the transferee. An oral (unwritten) assignment of IP will not be effective to pass the ownership of the IP.

If the IP being assigned is registered IP (trade marks, designs, patents, plant breeder’s rights) then the change of ownership effected by the IP Assignment will also need to be recorded on the appropriate IP register.

Failure to record the transfer of ownership can prevent a claim for financial compensation in an infringement action and, in the case of trade marks, could lead to the removal of your trade mark from the trade marks register.

As with the sale of any asset, certain promises need to be sought from the seller. In relation to IP these are quite unique and specific for each different IP right; thus there can be no “one-size-fits-all” IP assignment.

The most common IP assignments that your business may need assistance with are trade mark assignments and copyright assignments. Trade mark assignments are generally limited to the transfer of registered and unregistered trade marks, whilst copyright assignments cover a wide range of applications from transfer of rights in photographs, artworks, software and websites – including bespoke software, artwork and webpage layouts.

IP Licences

As an IP owner you may want to allow someone else to use your IP possibly in return for payment or some other form of remuneration. Alternatively, you may wish to use some else’s IP (without infringing their rights). Permission to use IP is granted under an IP Licence.

The most common IP Licence that most businesses will encounter are software licences, ranging from the “take-it-or-leave-it” pro-forma Microsoft Office type licences, to licences of highly configurable software made specifically for your business or business type.

Whilst the principle behind an IP Licence is simple – to give permission to use IP – the detail is far from simple. Thought needs to be given to whether the licence of the IP is to be exclusive (thus preventing the owner of the IP using the IP), sole (allowing both the IP owner and licensee to use the IP, but preventing any other licences being granted) or non-exclusive.

In addition, the IP may only be licensed for a specific purpose or field of use. A simple example would be the exclusive licence of the copyright in a book, such as Harry Potter, to make a film out of the book. Although exclusive, this still leaves it to the IP owner to licence the copyright for a stage or theatre productions.

Most licences of IP are paid for by way of a royalty. Consideration of how this is to be calculated is also an issue that the parties must decide on. For instance, is it per unit of product sold, gross profit per unit or some other method. In this regard, there is rarely an “industry standard”.

It can also be useful to put IP Licences in place in the context of a group of companies. It is not unusual to see company structures having a company whose sole purpose is to own the IP of the group. Such IP can then be licensed for an appropriate royalty to other companies within the group, which can assist companies in moving money around a corporate group.

Also, where the IP right is a trade mark, putting such licences in place will enable use by other companies in the group to count as use by the registered owner, which may assist in preserving the trade mark registration against non-use attacks.

Website Legals

There are four types of “legal” documents that are commonly seen on websites. Not all are needed. What is needed will depend on what your website does. Your website:

1. will need general Website Terms and Conditions;
2. it may also need a Privacy Policy;
3. an Acceptable Use Policy – if your website permits users to upload content to it; and
4. Terms of Sale – if you sell items or downloads from your website.

A quick rundown of the four main types of Website “Legal” documents is set out below, along with an indication of when each document is required; before that, though, a word of caution.

Don’t “re-use” Someone Else’s

Rule No. 1 in relation to website legals is that, no matter how tempting it may be, you should never “re-use” someone else’s website legals for your website. Firstly, this is because each website and business is different and what may be a reasonable set of terms for one business’s website may not be appropriate for your business. Secondly, the likelihood is that the website legals you are copying may have also been copied off someone else’s website. Thirdly, this is copyright infringement.

Website Terms and Conditions

Every website needs these, even if your website is merely a “brochure” site that simply informs users what you do, where you are and how to contact you. Website terms and conditions set out things like the reliance, if any, that may be placed on the content of your website, and excludes any loss or damage anyone suffers as a result of reliance on the information on your website. It also informs users of your IP, such as your trade mark rights and copyrights.

There will be other terms and conditions specific to your business that need to be included in the website terms and conditions and this is why a pro-forma set of terms and conditions, or someone else’s website terms and conditions, that have had no professional legal input, are at of little value and will not help protect your business on the Internet.

Privacy Policy

Privacy policies set out how your business will use the information it collects about visitors to its website or if you sell items or downloads from your website, how your business will use their personal information such as their names and contact details.

In Australia, a privacy policy for the purposes of complying with the Federal Government’s Privacy Act 1988 (Cth) may not be required by your business in certain circumstances, including if your business turns over less than $3 Million. However, if your business deals in personal information or your website collects sensitive personal information such as medical information or information about people’s political and religious affiliations, it may apply. As you can see, it’s complex.

Furthermore, if you do require a Privacy Policy, in order to comply with requirements under the Privacy Act 1988 (Cth), your business will also need to comply with many other requirements of that Act so as to be able to explain in its Privacy Policy how it will use the personal information it collects on its customers and users of its website.

Acceptable Use Policy

If your business has a website that allows users to upload content to it then you will need an Acceptable Use Policy. A simple blogsite is an example of this. The Acceptable Use Policy sets out what kind of content users may upload and what they may not upload, and what will happen if they upload material that they are not permitted to upload.

Acceptable Use Policies are generally aimed at protecting your business’s website from being used as a platform for the display of obscene, defamatory and vilificatory materials, and the liability that may flow from hosting such material on your website. Accordingly, the Acceptable Use Policy will seek to emphasise that the materials posted on your business’s website are not the views of your business. Your Acceptable Use Policy is also likely to contain provisions to allow the take-down of any materials posted.

E-Commerce – Terms of Sale

If you are selling products from your website, you will need to have a set of terms of sale governing that transaction that your buyers can agree to on making a purchase from your website. These will set out terms specific to your particular industry and products and deal with more pedestrian matters such as payment, delivery, returns and liability.

IT Agreements

The main type of IT agreements that most businesses may encounter are:

• software licences;
• software development agreements; and
• website development agreements.

They are needed to set out the rights that the parties have in relation to the software or website.

Development agreements may be for a simple “app” build where the requirements of the buyer are relatively easy to understand and deliver, or they may be very complex requiring the software developer to understand its customer’s business requirements and develop a system of integrated third party owned software to meet those requirements.

Software Licences and Software Development Agreements

For most businesses, software licences are generally provided on a “take-it-or-leave-it” basis. That is, if you do not agree to the terms of the licence, your business will not be provided with the software. This is usually for standard applications such as Microsoft Office, Adobe and “commercial-off-the-shelf” software packages.

However, industry specific software vendors may be more flexible and may allow some room for negotiation on the terms of the licence, service and support levels to maintain the software once purchased.

Whether you’re a software development business distributing software for the masses or a bespoke developer of software, we can assist you to develop a sensible pro-forma software licence for the safe exploitation of your software. Similarly, if you are considering spending a large amount on a software system or solution, we can help your business avoid common pitfalls in IT procurement.

The recent advent of “cloud” based services, where your business does not load the software onto its computer system, but instead allows your business to access the software and data on-line has dramatically changed the nature of software procurement and use. Despite this, many software agreements continue to be done on the basis of an IP Licence Agreement rather than Access or Subscription Agreement – with little regard to the changes that “cloud” computing has had on the legal underpinnings of the arrangement.

Website Development Agreements

Website development agreements are also a very common IT agreement. However, agreements setting out the expectations, rights and obligations of the developer and their customer are rarely entered into, for the simple reason that the legal cost of the website development agreement is disproportionate to the cost of the website. When a dispute arises (as it often does) all that exists is a couple of emails and two unhappy businesses.

Commercial Agreements

As well as IP and IT agreements, your business will inevitably need to enter into other commercial agreements at different points in the development of its business and innovation. The most common form of commercial agreements that your business may encounter include the following:

1. Non-disclosure Agreements – to protect your confidential and proprietary information during business discussions;
2. Terms of Business – your business’ front line defence in dealing with customer disputes;
3. Supply Agreements – to lock in the supply of important materials and products for your business;
4. Distribution Agreements – to govern the sale of products through a sales network; and
5. Franchising – for licensing rights to operate a franchise and understanding the requirements of the Franchising Code, when it applies and how to apply it.

Non-Disclosure Agreement

If your business or innovation is based on a concept that will become public and easily copied once launched, and you need the help of others to commercialise your concept, then you will need a non-disclosure agreement. This prevents others from disclosing your concept to others and from using and copying your innovation themselves.

For ease of use we have packaged up our standard non-disclosure agreements as a paid download at a price which includes one hour of professional time.

Franchising

A franchise is where a brand and proprietary rights are licensed by the franchisor, as the controller the brand and proprietary rights or method, to others to run a business under the brand and using the proprietary rights. Such rights are usually licensed for a defined geographical area or region.

In Australia, franchising is regulated by a code of conduct under the Federal governments, Competition and Consumer Act 2010 (Cth). The code is mandatory and so if your business model fits the definition of a franchise under that code, you are bound by it and must comply with it.

The legal requirements under the Franchising Code extend to much more than the franchise agreement, which is generally confined to the conditions around the licence of the brand and proprietary rights to the franchisee. The franchisor is required to maintain a Franchise Disclosure Document, and keep it current. This document is provided to potential franchisees to give them a snapshot of important information about the franchised business, from the territory, CVs of the current directors, financial situation of the franchisor, requirements to purchase certain goods or services of the franchisor and much more. Compiling the initial franchise disclosure document and keeping it up-to-date is a significant task requiring input from within your business, your lawyer and accountant.

The franchisor must also ensure that all franchisees execute a notice informing the franchisor that it has sought legal, financial or business advice from a professional or declined to do so.

Franchising is a serious undertaking and one that will require significant input from an appropriately experienced lawyer.

For franchisors and would be franchisors, we can help you maintain and prepare all of the necessary documentation in accordance with the Franchising Code. For franchisees we can cut through the volume of documentation that you will receive from the franchisor and cut to those items that you need to know to make an informed decision on whether to take on the franchise.

IP Disputes

If you believe your IP rights or rights under a contract have been breached please contact us.

If you have received a letter demanding you “Cease & Desist” contact us IMMEDIATELY.

Legal disputes are expensive and time consuming, and a distraction that any business can do without. IP disputes, are no different and are often more difficult than most commercial disputes. There is rarely such thing as a “cast iron case” and costs can mount up quickly even before court action commences. It is not uncommon for costs issues to dominate and often spoil settlement of the dispute.

Consequently, your business needs a clear idea of where its stands in a dispute situation at a very early stage to allow you to determine the most efficient dispute resolution strategy.

Whether you are the plaintiff or the defendant we will help your business deal with the dispute in the most efficient matter possible to achieve commercially sound outcomes. This may mean going to court or reaching a quick early settlement on the matter.

Generally, settlement is a much better, controlled and efficient option to the resolution of a dispute. Your legal costs will be significantly less than commencing legal action and much less than a full trial. It takes significantly less time to end the dispute and allows you to get back to concentrating on running your business. You will also know the outcome as it will be set out in black and white in the settlement deed, which is usually a relatively short document of several pages, rather than a 50 page judgment of a court, which may be subject to appeal to a higher court or bench.

However, settlement is a two way process and if attempts to settle do not work, it will be necessary to resort to legal process. Generally, this does not immediately mean adversarial court action, as the parties may be required to attend mediation and other forms of alternative dispute resolution before commencing court action.

We can assist your business with all aspects of the dispute resolution process, from pre-action correspondence and settlement negotiations, pre-trial processes, commencing or defending proceedings in the Federal Court and preparing for trial.

If your IP rights are being infringed or the other party to a contract are in breach call us today to discuss your infringement strategy.

If you have received a letter demanding that you Cease & Desist infringing someone else’s IP or other rights call us NOW. We urge you not to ignore such letters. The next set of documentation you may receive may be notification of commencement of court action against your business.

Privacy Law

Privacy law relates to the use that businesses, governments and other bodies may make of personal information that they have collected or acquired about an identifiable individual. As such it has two sides:

• the businesses, governments and other bodies that want to use that information for commercial gain (in the case of businesses) or to further their aims (in the case of governments and other bodies); and
• the individuals whose personal information is being collected, stored and used by businesses, governments and other bodies.

Whilst there are privacy acts in most Australian states, the main piece of legislation is the Federal government’s Privacy Act 1988 (Cth), which was recently amended to broaden its application to businesses, as well as government bodies.

The personal information that the privacy laws apply to is information that relates to an individual. This is usually their name, contact details such as their address, telephone number, mobile number and email address, credit card details and other information your business or organisation may collect on them.

The Federal privacy laws provide a set of guidelines called the “Australian Privacy Principles” or “APPs” that organisations are to adhere to in relation to the collection, storage and use of personal information of individuals.

There are 13 APPs arranged into 5 groups or parts, as set out below:

Part 1 Consideration of personal information privacy – these relate to the systems that organisations need to have in place to manage personal information, including having a clearly expressed and up-to-date privacy policy and allowing individuals the option of not identifying themselves. This part also contains requirements relating to the implementation of practices, procedures and systems that will ensure an entity’s compliance with the APPs.

Part 2 Collection of Personal Information – this part provides that an organisation shall only collect personal information unless it is reasonably necessary for, or directly related to, an organisation’s functions or activities. Additional requirements are set for collection of sensitive personal information, being information relating to an individual’s health, religious belief, political affiliations, race and sexual preferences. Sensitive personal information can only be collected if it is reasonably necessary for the organisations functions or activities AND the individual consents to its collection, storage and use.

Part 3 Dealing with Personal Information – if an organisation collects personal information for one purpose it must not use or disclose it for a different purpose unless the individual consents to that secondary purpose. This part sets out the general prohibition on use or disclosure of personal information for the purpose of direct marketing as well as restrictions on the disclosure of personal information outside of Australia.

Part 4 Integrity of Personal Information – this part is concerned with ensuring that the personal information held by organisations is the accurate, up-to-date and complete. This part also seeks to ensure that personal information is protected from misuse, interference, loss or unauthorised access, modification or disclosure.

Part 5 Access to and Correction of Personal Information – this part sets out procedures for individuals to access their personal information and if necessary correct it. They also set out how personal information and the Privacy Act interact with the Federal government’s freedom of information laws.

Businesses with a turnover of less than $3 Million are not required to comply with the Privacy Act. However, this is NOT the case if your business deals in personal information (such as selling personal information for the purposes of direct marketing information) or where it collects sensitive personal information.