Insight SRC IP Holdings Pty Ltd v The Australian Council for Educational Research Limited [2012] FCA 779 (24 July 2012)

COPYRIGHT – ownership of copyright in organisational health questionnaire – where author of questionnaire managing director and major shareholder of applicants – where author employed by Department of Education during period in which questionnaire made – where author engaged in PhD research – whether questionnaire made in pursuance of terms of employment with Department under s 35(6) of Copyright Act 1968 (Cth) (“the Act”) – whether questionnaire made by or under direction or control of Crown for purposes of s 176(2) of the Act – whether operation of s 35(6) excluded by agreement between author and Department or whether agreement about vesting of copyright within s 179 of the Act – relevance of subsequent conduct of Department and author in construing agreement.

Held: The circumstances in which the questionnaire was made fall outside the operation of ss 35(6) and 176(2) of the Act; the author of the questionnaire is the owner of copyright.

COPYRIGHT – assignment – purported assignment of copyright from author to first applicant in 2009 – where corporate trustee of author’s family trust part of chain of assignment – purported exclusive licence of copyright from first to second applicant in 2009 – whether effective assignment of copyright – subsequent purported assignment of accrued bare rights of action from author to corporate trustee to first applicant in 2011 – whether valid assignment of bare rights of action – whether “genuine commercial interest”.

Held: The deeds of assignment were effective to transfer copyright in the questionnaire and rights of action for infringement.

COPYRIGHT – damages – where cause of action accrued prior to assignment by author to first applicant – where owner of copyright at time of infringement not engaged in commercial exploitation of copyright – whether loss suffered – whether general damages available – calculation of loss of profits – award of nominal damages – whether award of additional damages warranted – ss 115(2), 115(4) of Copyright Act 1968 (Cth).

Held: The applicants are entitled to an award of nominal damages and additional damages.