A film is not a photo
and other lessons from
the Copyright Act
The Federal Circuit Court decision in Whitsunday Aerial Solutions
Professionals v Emprja 1 has served as a reminder of three key
things to remember when dealing with copyright works...
(1) The Copyright Act 1968 (Cth)
applies differently to Works
and Subject Matter other
than Works. It is critical to
understand the nature of the
work that you are dealing with
and the circumstances in which
copyright right arose.
(2) There is a significant benefit
in documenting commercial
agreements at the outset rather
than litigating over them later on.
(3) Assignments are important
documents and need to be
treated as such. It is important to
understand who has ownership
rights and how an assignment
of them is to operate.
Inspire March 2022
Background 10
In this case Whitsunday Aerial
Solutions Professionals Pty Ltd
(WASP) claimed that Emprja Pty Ltd,
trading as Abel Point Marina (APM),
infringed its copyright in film footage
of the 2016 Clipper Round the World
Race that was taken by a drone
owned and operated by WASP.
In 2016, APM was successful in
its proposal to host a race stopover
for the Clipper Round the World
Yacht Race. As part of hosting the
race stopover APM held a welcome
party for the crews of the yachts
participating. In late 2015, Project 64
Pty Ltd (Project 64) had acquired a
helicopter business called Helitaxi
which provided scenic flights out
of APM. Project 64 was looking
to promote the Helitaxi business
and agreed with APM that Helitaxi
would be a co-sponsor of the
welcome party.
As part of that sponsorship
arrangement, Project 64 agreed
to obtain drone footage of the
yacht stopover at APM, amongst
other things. Project 64 then
commissioned WASP to take the
drone footage.
The agreement between APM and
Project 64 as to sponsorship was not
documented, and neither was the
agreement between Project 64 and
WASP. WASP gave the 2016 Clipper
drone footage to Project 64 without
any specified limitation, and with no
watermarks as to ownership included
on the footage. Project 64 then
provided the same footage to APM,
again without any restrictions as to
use of the footage. WASP claimed
that that there was an oral agreement
between Project 64 and WASP, under
which WASP owned all the copyright
in the footage. As Project 64 was
only permitted to use the footage
to promote Helitaxi, APM’s licence
to use the footage was limited to
promoting the 2016 race.
When APM started using the
footage to promote the 2018
Clipper Round the World Yacht
Race, WASP claimed infringement
and commenced the proceedings
against APM.
Copyright in the
drone footage
It was not contested by the parties
that the drone footage was a
cinematograph film within the
meaning of the Act, however WASP
asserted that as it had created the
footage, it was the owner.
1 Justice Baird did not agree.
She found that WASP had been
commissioned by Project 64 to make
the footage within the meaning of
s 98(3) of the Act. Section 98(3)
provides that in the absence of
an agreement to the contrary,
the commissioning party will be
automatically deemed to be the
copyright owner of a cinematograph
film. Justice Baird found that
WASP had not established on the
balance of probabilities that there
was an agreement to the contrary
regarding ownership of copyright,
and therefore s 98(3) of the Act
operated to make Project 64 the
owner of the copyright. Having
considered the correspondence,
invoices, witness statements and
actions of the parties, Justice Baird
was not satisfied that there was
any agreement or even a discussion
as to the ownership of copyright.
Rather, at the time the footage was
created the parties had not even
turned their minds to the question
of copyright ownership.
WASP further asserted that even if it
did not own copyright in the footage,
the footage was only commissioned
by Project 64 for a limited purpose,
being that of promoting HeliTaxi, and
APM’s involvement in the Clipper
Round the World Yacht Race. Justice
Baird rejected this claim noting that
WASP did not include any copyright
notice or claim in the footage they
delivered, and no limitations were
discussed at the time. Project 64
commissioned the work as part
of its sponsorship of the APM
welcome party and the footage was
passed onto APM without limitation.
Whitsunday Aerial Solutions Professionals Pty Ltd v Emprja Pty Ltd [2021] FCCA 1578
It was not contested
that the drone footage
was a cinematograph
film within the meaning
of the Act, however
WASP asserted that as it
had created the footage,
it was the owner.
When WASP became aware of
APM’s more recent use of the
footage it sought to ‘confirm’
ownership of the copyright by asking
Project 64, in March 2018, to enter
into a ‘Confirmatory deed – Copyright
ownership’. This Confirmatory
Deed stated that WASP owned the
copyright in accordance with the
2016 oral agreement. Project 64
and WASP later entered a ‘deed of
assignment’ which stated that to
the extent Project 64 owned any
copyright in the footage it assigned
its rights to WASP ‘with effect from
the date of creation’.
Justice Baird in considering the two
deeds concluded that:
> the ‘Confirmatory deed –
Copyright ownership’ was
of no effect as it had already
been concluded that the oral
agreement did not vest copyright
ownership in WASP, therefore the
confirmatory deed could not alter
the status quo;
> the ‘deed of assignment’ was
generally valid and effective,
however it was subject to the
licence that Project 64 had
granted to APM to use the
footage. This was despite it being
expressed as assigning the right
from the date of creation. The
court found that Project 64 was
the owner of the copyright from
creation, and had granted a
licence to APM. WASP therefore
as successor in title was bound
by the terms of the APM licence
as per section 196(4) of the
Act. As there was no earlier oral
agreement, the deed could not
operate to perfect an earlier
equitable assignment. The
deed also did not operate as an
‘agreement to the contrary’ for
the purposes of section 98(3) of
the Act, and whilst it did operate
as a retrospective assignment
it did not negate the vesting of
copyright in Project 64 or the
operation of section 196(4).
Conclusion This case has highlighted the
importance of having a complete
understanding of how the Copyright
Act applies differently to differing
subject matter including with respect
to ownership. Both the nature of
the work and the circumstances
in which it was created must be
considered in determining the true
owner. With respect to assignment
documentation, whilst it often seen
as an administrative overhead, the
form and interaction with the Act
present challenges which need to
be carefully considered.
Inspire March 2022
The need for correct documentation
11 Melissa Wingard | Special Counsel
BA(Eng&Hist) LLB(Hons) GradDipLegPrac
GradDipAppFin&Inv MCyberSecOps
melissa.wingard@pof.com.au