Common conundrums

Arts Law deals with a diverse range of legal concerns across all art sectors.  Below are some frequently asked questions over the last year, answered by some of our volunteer lawyers who provided an incredible amount of support and help to Arts Law during 2005. 

Please note that the answers to these questions cover only the basic information, are provided as general information only and should not be taken as legal advice.  If you have a specific issue you should contact Arts Law to discuss.

How can I protect the name of my book (or song or film)?

The words of a book, the lyrics and score of a song and a film are all protected by copyright.  However, their titles are not substantial enough to get automatic copyright protection. 

Brands (and other signs) can be protected by registered (and unregistered) trade marks.  Unlike copyright, protection is not automatic.  For registered trade marks there is a formal registration procedure, which incurs costs.  The rights are territorially limited (a registration in Australia only protects rights in Australia) and are renewable every 10 years.

To qualify for protection, the mark must be a 'distinctive' sign that distinguishes the goods (or services) from those of other traders.  It must also be used as a 'badge of origin' of the goods.  A trade mark says to the market "These are goods from a particular source.  If you see other similar goods with the same (or similar) name, those goods will have come from or have some relationship with the same source as these goods."

Many titles do not function as trade marks. They are not used as brands. For a band, its name is a trade mark, and functions as the badge of origin, but its songs don't. POWDERFINGER is a registered trade mark – and consumers know that if they see an album or a song by POWDERFINGER it will have certain qualities, and a certain style. POWDERFINGER is the badge of origin of the album or the song.  However, the band has not registered its song or album titles. Similarly, the publisher of a book (eg RANDOM HOUSE) and some authors (BEATRIX POTTER) are badges of origin, but their book titles do not function in that way.

It is more likely that blockbuster movie titles (like STAR WARS) are registered trade marks.  Some well known books are also registered (eg HARRY POTTER, although the marks are not owned by JK Rowling, but by the owner of the rights in the film). However, those marks are registered more for the merchandising associated with those brands, rather than for the film or the book themselves.  When used in merchandising, the titles do operate as brands.

For books, a practical step that you can take is to obtain an ISBN.  The ISBN (International Standard Book Number) is a 10-digit number that uniquely identifies books and book-like products published internationally. Each number identifies a unique edition of a publication, from one specific publisher. 

Matthew Hall, SWAAB Attorneys, Sydney

What does 'fair dealing' refer to when talking about copyright?

The 'fair dealing' provisions in the Copyright Act serve to balance the rights and interests of the copyright owner and the general public.  Copyright is a bundle of exclusive statutory rights designed to reward and encourage creative effort.  'Fair dealing' is a statutory defence which allows members of the general public to use copyright-protected material for certain approved purposes without payment of a licence fee or obtaining the copyright owner's permission. 

A 'dealing' is any use which the copyright owner would be entitled to prevent in usual circumstances.  For the defence to apply the dealing must be 'fair', having regard to the purpose and character of the dealing, the nature of the work, the possibility of obtaining the work commercially, the effect of the dealing on the value of the work and the amount and substance copied relative to the whole. 

The second requirement is that the 'dealing' must be for one of the prescribed purposes:

(a)        research or study;

(b)        criticism or review;

(c)        reporting news; and

(d)        giving professional legal advice.

'Research and study' means some form of systematic enquiry or effort to attain knowledge.  'Criticism or review' must involve some element of judgment, either in relation to the copyright work or another work.  Where the material is used for 'criticism and review' there must also be 'sufficient acknowledgement' (the author's name and the title of the work).  'News' is defined broadly to include any information, (current or historic, serious or humorous) which is deemed to be suitable for reporting. 

The defence only protects the person who has the required purpose.  It does not extend, for example, to agents who provide copied material for a fee to persons engaged in research or study. 

'Fair dealing' can be distinguished from the United State's concept of 'fair use'.  The factors that determine what is 'fair' are similar.  However, 'fair use' is not limited to the four purpose categories.  It is a much more flexible, open-ended concept.

Marjorie Hodgson, Jackson McDonald, Perth

How much of someone else's work can I incorporate into my work?

The short answer is anything that does not infringe the rights which belong to a copyright owner.   

So, as a rule of thumb, it is permissible to use:

(a)        those parts of a work which are neither original in themselves or don't constitute original compilations of other data;

(b)        insubstantial parts;

(c)        parts which might not be insubstantial but are reasonable in the circumstances provided always they are done by you for a purpose covered under the fair dealing provisions of the Copyright Act; or

(d)        any of the other 37 or so special purpose exceptions scattered like confetti throughout the Act.

The test of what is or is not insubstantial is one of quality not quantity.  Any of the 'rules' bandied about which say a certain percentage is OK must not be trusted. There is a percentage relating to the study purposes, but even then, the purpose must be genuine.  I have heard it said by scholarly publishers that certain numbers of words are generally accepted, but even these change.  One poet's estate is said to have demanded royalties in relation to one word.  With images, sound recordings and film, the test is even tighter.  Arguably, the corner of the Mona Lisa's smile, however small, is a substantial part of the work; so is the sampling of a distinctive guitar attack – even if reorchestrated unrecognisably.

It gets interesting in relation to 'what' it is you are using.  You may be able to re-stage the shots from a film in your own film, or re-record a musical work (provided you observe the requirements of the Act and the prior material has been recorded).  That's because the owner of the copyright in those species of material don't actually have rights in those circumstances.

The better guiding rule is, if you are creator, create your own.  If you are a user, get permission or make sure you fall within a specific exception.

Dr Mark Williams, Partner, Norton White, Melbourne

What is chain of title?

The concept of 'chain of title' is quite old having originally been used in reference to all of the documents listing the transfers of land, tracing each transfer back to the original grant of land by the crown.  These documents formed the 'chain of title' to the land.  If a document, a link in the chain, was missing, then you could not be certain who owned the land, so no one in their right mind would buy it. In film it is the same.

The property is not land but intellectual property; the crown grant is the original material on which the story for the film is based.  All contributions to the script and the film need to have documents that grant the necessary rights to the production company to make the film.

In film the expression 'chain of title' is often used in reference to the documents that give the production company the rights in any underlying material to make the film.  For example, if the script for a film is based on a novel, there will need to be an agreement for the right to make the film based on the novel.  Each writer of the script will need to assign their rights to the production company, as will any script editors and anyone who works on the script, as well as the director and the individual who is producing the film personally.  You need to have all these documents before anyone will think about investing money in production.

Once the film is made, 'chain of title' can be used to refer to not just these underlying rights documents, but all the agreements with every one who worked on and virtually every thing that went into making the film.  All these elements need their own piece of paper… the paper chain of title.

Stephen Boyle, Australian Film Commission (AFC)

What are some tips for avoiding a defamation action when making a film or writing about a true crime?

When documenting a true crime, you will need to be careful to avoid defaming those people actually involved in the crime.  The law of defamation protects the reputation of individuals and smaller organisations.  If a statement in your book or film is likely to injure the reputation of a person, you may be sued for defamation.  However, the defamation action will only succeed if:

  • the person can be identified; and
  • you cannot establish a lawful excuse (ie a defence).

Ask: Can the person be identified?

In an account of a true crime – identification of the parties involved will often be difficult for you to avoid. 

Bear in mind the following:

  • A person doesn't need to be named to be defamed.
  • A person may be identifiable because of a relationship (eg the perpetrator's mother) or because they hold a unique position (eg the principal police officer).
  • Statements about a group may be actionable by one person within that group.  If the size of the group is small, you are at greater risk of a defamation action.
  • Only living persons can be defamed.

Ask: Can I rely on a defence?

‘Truth' will be the most likely defence that you can rely on.  In some States, it is a defence to prove that the matter you have published is true.  However, in the other States (including NSW), truth alone is not enough – there must also be a public benefit or interest. 

If you wish to rely on this defence, remember that:

  • You need to prove that the facts upon which you've relied are true. 
  • It is not sufficient to show that a witness believed a statement to be true.

    • There is normally no public benefit in resurrecting an old crime unless the past misconduct is relevant to the person's current position.

A simple way to minimise these risks is to obtain the consent of the person you are making the statement about (if this is possible). 

Kasey Ekert, Simpsons Solicitors, Sydney

What is ICIP?

ICIP is Indigenous peoples' cultural heritage, passed down through generations. ICIP is a holistic concept which includes cultural expression, such as body painting, rock art, carvings and weavings, dance, songs, stories, ceremonies and languages; culturally transmitted knowledge of science and the natural world such as traditional medicines; and connections with territory such as sacred sites.  ICIP is based in the history and territory of each Indigenous culture as it constantly evolves.  While it is communally owned, it may be embodied in contemporary works by individual Indigenous artists.  It could also be embodied in photographs, recordings or writings made by other people such as researchers and ethnographers.  Rules governing its ownership and use are found in customary laws of the relevant Indigenous group.

Is ICIP protected under Australian laws?

Partially. Indigenous claimants have successfully used Australian laws to prevent unauthorised use of their ICIP in some instances. For example, Indigenous artists have used copyright law against the unauthorised reproduction of ICIP embodied in their original artworks; and confidentiality laws to prevent the disclosure of secret ICIP.  There are also limited special laws protecting ICIP, such as sacred sites legislation.  However, many forms of ICIP remain unprotected under Australian law.  Indigenous advocates in Australia and elsewhere have protested against this lack of protection and are lobbying for stand alone legislation protecting ICIP.  In the meantime, cultural protocols can provide useful guidance for those wanting to use ICIP in their artworks, films, performances, writing, research or other projects.

Useful websites:

Our Culture Our Future research and consultation project on ICIP:

Examples of cultural protocols:

Sally McCausland, Senior Lawyer, Special Broadcasting Service (SBS)

What rights do session musicians have in a sound recording incorporating their performance?

Prior to 1 January 2005 and subject to any agreement to the contrary, a session musician ('Performer') who had authorised their performance to be recorded, generally had no further rights with respect to that recording and how it was used.

However, recent amendments to the Copyright Act now give Performers part ownership of copyright in sound recordings of their live performances.  The effect for session musicians, is that, subject to certain exceptions or agreement to the contrary, Performers now co-own the copyright in the sound recording of their live performance in equal shares with the person who owns the tape or device that the recording is made on.  Usually this will be the recording company. As co-owners, the Performer can have a say in how that recording is used and be entitled to royalties or a part of the other income generated from the recording.    

There are however important exceptions to this rule. Specifically, where the musician has been paid a fee for the session (that is, they were commissioned) or the recording has been made in the course of a musician's employment, the employer or person who commissioned the recording will become the copyright owner.  This is the most usual scenario and a session musician will almost always be asked to confirm this position by signing a 'release', assigning any and all rights in the recording of their performance over in return for a 'session fee'.

Performers will also soon enjoy so-called 'moral rights' in their performances. Moral Rights will give Performers the right of attribution, the right not to have their performance falsely attributed to someone else and the right not to have the recording of their performance treated in a way that will prejudice their honour or reputation.  Performers moral rights have been introduced into the Act but are yet to commence operation.

Darren Sanicki, Marshalls & Dent, Melbourne

How can I protect my idea for a TV show?

The difficulty in legally protecting an idea for a TV show is that copyright law does not protect ideas or titles for a TV show.

Copyright only protects work when it is expressed in a material form.  This means you should record your idea in writing, such as in a concept pitch and make it as detailed as possible.  The Courts denied copyright protection to a person claiming copyright in the title and general concept of his TV game show which he had disclosed to a TV network.  This was because there was not enough detail in the recorded version of the concept.

Due to the difficulties in satisfying the requirements for copyright protection when trying to protect an idea, the common strategy used is to enter into a confidentiality or non-disclosure agreement with the person/s you are disclosing your idea to.  The agreement needs to be signed before you disclose any information.  The recipient of the information agrees your information is confidential, to take appropriate steps to keep it confidential and not to disclose the information to any one (except persons authorised to consider the pitch who must also keep it confidential) without your prior consent.

Keep written records of who you meet with and disclose your idea to and the discussions about your idea.  Having this information may assist if you find out your idea has been disclosed to someone not authorised by you or it is used in a way not agreed to by you.

A possible way to protect the title for your TV show is by registering it as a trade mark. When you lodge the trade mark application you must use or intend to use the trade mark to distinguish your goods or services from other traders' goods or services.

Susan Larsen, Dobson Mitchell & Allport, Hobart

When do you need permission to screen a film in public?

The Copyright Act 1968 (Cth) (Act) grants the copyright owners of cinematograph films certain exclusive rights, including a public performance right (causing a cinematograph film to be seen or heard in public), for example, by the public screening of a film.

The copyright owner of a film is the 'maker' of the film – the person who makes the arrangements necessary for the making of the film.  This is usually the producer of the film (and can be a natural person or a company).

There is also an exception in the Act where a film is 'commissioned' – that is, when it's made pursuant to an agreement for valuable consideration for another person.  In this case, that other person would be the owner of copyright, rather than the maker/producer of the film.

How do I get permission?

Permission must be obtained from the copyright owner of the film, and usually involves the person screening the film entering into a licence with the owner (and also often paying the owner a monetary amount) in consideration for permission to screen the film being granted.

Persons wishing to screen a film should start by contacting the film's Australian distributor for the distributor to arrange permission from the copyright owner.

If you can't identify an Australian distributor, then contact the producer of the film (as stated in the film's credits).

If all your efforts to obtain permission fail, you are still not permitted under the Act to screen the film in public.

Whether you charge people to attend the screening, how many people attend the screening, whether it's part of a film festival etc doesn't affect whether you need permission to screen the film.

If the performance is outside of the domestic lives of the audience and the audience is part of the copyright owner's 'public' then the performance will be a public one and you therefore, need permission.

If the copyright term has expired, then you are permitted to screen the film in public without obtaining any consent.  The copyright term for a film made on or after 1 May 1969 is 70 years after the expiration of the year of first publication (or indefinite if unpublished).

Even if you are screening an international film, in most cases you will need to obtain permission.  Again, as a starting point contact the Australian distributor, or if there isn't one, the producer named in the credits of the film.

Jocelyn Paterson, Senior Associate, Phillips Fox Lawyers, Sydney

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