With reference to Realestate.com.au Pty Ltd v Hardingham RP Data Pty Limited v Hardingham [2022] HCA 39 case
When we draft a
contract, we shall make clear the intellectual property, copyright, and moral
right obligations. Generally, clients are asking to transfer to them the IP
rights created under the contract and grant them a license to use the
background and third-party IP rights in connection with the contract.
When licensing the
rights, one must carefully consider the extent of such transfer. Especially as
the Client may transfer the right to a further party whose terms are not known
to the contractor (as happened to REMA in the below-addressed case)
The photographer
(REMA) entered into verbal agreements with real estate agencies to supply
photographs of the properties. There were no written contracts signed. It was
known to the parties that the agencies would upload the photos to a well-known
real estate website, i.e., Realestate.com.au Pty Ltd (REA). Under the terms of REA, which agencies accept when uploading photos, REA can sub-license the content as it desires. Under that term, REA granted a license to RP Data Pty
Limited (RP Data) (data and analytics property platform). RP Data then
reproduced REMA’s photos for use on their platform. REMA sued RP Data for
copyright infringement. This further proceeded to the High Court following the
Federal Court decision.
The High Court states
that:
“a reasonable person
in the position of the parties would have known that one of the very purposes
of REMA providing the photographs and floor plans to the agencies was so that
the agencies could provide them to REA and that the agencies had no real choice
other than to accept a term requiring them to provide a license to REA to use
the photographs and floor plans indefinitely and to provide them to RP Data”
(Para 113)
Therefore, the High
Court held that the RP Data did not infringe copyright.
The High Court also
refers to the grounds to consider the sub-licensable IP right an implied term.
"Apart from
being reasonable and equitable, capable of clear expression and
non-contradictory of the express terms of the contract, to be implied, a term
must be necessary to give business efficacy to the contract (which will not be
satisfied if the contract is effective without it), and it must be so obvious
that “it goes without saying” (Para 18)
Case:39
(hcourt.gov.au)
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Note: The article was also published on www.aact.lk
