THE COMMISSIONING RULE & “PUBLISHERS' COPYRIGHT” | by James Carnie & Stuart Bradshaw, Clendons

Pending the adoption of Copyright Amendment laws, the current ‘commissioning rule' provides that copyright belongs by default to the commissioner of a photograph, and not the photographer (unless the parties specifically agree by contract that the commissioning rule does not apply).

Many photographers have been caught by the commissioning rule and unintentionally parted with ownership of copyright in their works. The proposed law change will - if enacted - eliminate the ‘commissioning rule'. In the meantime, the importance of unambiguously contracting out of the commissioning rule was recently illustrated by Maxim Group Ltd v Jones Publishing Ltd & Ors (Auckland High Court, December 2008).

Artistic Works

Although Maxim may have contributed original photography and writing, or individual elements of graphic design, no evidence of this was submitted to the Court. Even if Maxim had done so, and these elements were considered original enough to attract copyright protection, then contracting out of the commissioning rule would have been essential to ensure Maxim's ownership of that copyright.

Maxim's terms of trade did stipulate that the client would be licensed to use the artistic works only for the intended project, and only once payment had been received, with all creative work retained as Maxim's property. However, Maxim had permitted the Jones group to publish the magazines before payment had been received, and often before invoicing (an understandable occurrence when racing toward a print deadline).

Maxim had effectively authorised the magazines' publication and could not now claim copyright infringement. Not only did this pattern of trading contradict Maxim's terms of trade, but there was no evidence that the Jones group had viewed or accepted these terms in any event.

The importance of clearly raising the issue of the statutory commissioning rule, and contracting on terms so that the photographer retains copyright, cannot be overstated. Maxim v Jones in particular, demonstrates the need to ensure that:

> Terms of trade are very clear about copyright ownership (exclude the commissioning rule and are not dependant on variables such as payment)
> Those terms are accepted by the client (indicated by a signed agreement); and
> The parties act consistently with those terms of trade.

Any departure from the written agreement should be clearly recorded and confined to a particular event, so as not to override the written terms of trade.

Typographical Arrangements

‘Typographical arrangement' refers to the combination of features that give the entire publication its distinct appearance (those features include typeface, and the spacing / relationship / distribution / frequency of the elements of text, photographs and advertisements).

Maxim was unaware that the Copyright Act deems the publisher to be the author of this typographical arrangement, and not the designer of the magazine. Contracting out of the commissioning rule does not displace the statutory rule that the publisher is always the author and first owner of the typographical arrangement of a published edition. Given that a substantial part of Maxim's creative work concerned the "typography, design and layout of the subject magazines", its claim against the publisher was unlikely to succeed.

Ultimately, no contracting out of the so-called "publishers' copyright" over typographical arrangements is permitted, but unlike a photographer's copyright the duration of protection is restricted to 25 years.

James Carnie (Principal) and Stuart Bradshaw (Solicitor) are specialists in intellectual property law at Clendons: See, or call (09) 306 8000.

Photo: © Mark Hamilton