Q&A With Miles Standish

miles.jpg

Solicitor, and portrait photographer.

I am a solicitor with 20 years’ experience, practicing principally in relation to technology, intellectual property and general commercial law. My first 5 years of practice was spent in the Intellectual Property & Technology practice group of a large national firm. The next 10 years I spent leading an in-house team of IP&T lawyers within the larger legal team of a major Australian bank.

Since 2010 I have run my own practice. I have a particular interest in helping creative professionals navigate the web of legal issues that affect their work. Years before attending law school, I studied photography at Prahran College under John Cato.

As well as my legal practice, I have a successful business as a portrait photographer. Through my business, Photodrama, I integrate portrait photographer into personal development and leadership programs. Photodrama has partnered with a range of program designers and facilitators, including Melbourne Business School, Duke University and IKD, working with participants ranging from head coaches and leaders at the Australian Institute of Sport, senior bank executives and law firm partners.

What are the current laws surrounding copyright with in the creative industry?

For most creative professionals, copyright is the most important intellectual property right to consider in relation to their work. The work of photographers, filmmakers, writers, musicians, theatre professionals, visual artists, architects and graphic designers is all work in which copyright will subsist.

Copyright is entirely a “creature of statute” – that is, the extent of copyright is completely set out in the Copyright Act, and there is no such thing as common law copyright. Whilst courts play a critical role in applying and interpreting the Copyright Act, the Commonwealth Parliament has the constitutional right to make and amend laws in relation to copyright. Whilst the first English Copyright Act (the “Statute of Anne” in 1706) vested copyright in published books in the author, rather than the publisher, copyright is subject to political and economic forces that do not necessarily always align with the interests of the creative professionals who make copyright works.

The current Copyright Act was passed by Parliament in 1968, and has been frequently amended – often belatedly in response to technological change, starting with amendments in the 1970s to deal with the phenomenon of the photocopies.

More recently, 2006 amendments addressed some of the copyright issues arising out of (then) emerging digital technologies, but conceptually and culturally, copyright remains deeply challenged by the digital world. Recently, proposals to introduce a “fair use” defence to copyright infringement have caused some anxiety in Australia. “Fair use” is a concept in US copyright law and, in simple terms, provides that fair use of copyright material does not infringe copyright. Introduction of a fair use defence was recommended by the Law Reform Commission in 2012 on the basis that the existing framework does not sufficiently promote innovation and the digital economy. Many creators and rights owners have expressed concern that a fair use defence would benefit global digital content aggregators and impact the ability of rights owners to realise the full commercial value of their copyright.

Earlier this year, the Federal Government released the exposure draft of a bill to amend the Copyright Act. The draft Bill does not attempt to introduce a broad fair use defence, and it is possible that the vigorous lobbying by anxious stakeholders has dissuaded the Government from pursuing the fair use defence further at this stage.

Nevertheless, the draft Bill does include some interesting new defences to copyright infringement which may be of interest to creative professionals. If passed, it will be a defence to copyright infringement if the use is fair dealing for the purpose of access by a person with a disability, and a related defence will be available to institutions assisting persons with a disability. Libraries and archives will have a defence to copyright infringement where the reproduction of the copyright material is for the purposes of archives and preservation.

What do creatives need to consider when putting together terms and conditions for a quote?

There are a number of important issues to consider. Ideally, your client would physically sign an agreement including your terms and conditions. Sometimes this is not practical, however. Therefore it is important to include language in your quote which makes it clear that, if the client accepts the quote and confirms the engagement, a binding contract will be formed on the basis of the terms and conditions which are attached to the quote.

Your terms and conditions should include clearly expressed terms in relation to ownership of copyright (which as a default position, should be retained by you) and the usage (or licence) rights granted to the client. Usage rights may be exclusive or non-exclusive, and can be defined by a wide range of factors, including the type of use (eg, commercial vs non-commercial), the type of media (print, online, billboard, POS, etc), time (initial campaign period only, number of years, perpetual), and geography (metro, regions, national, designated countries, global). You should clearly state that the fee only covers the agreed usage and that additional usage rights may only be granted upon payment of additional fee.

Payment terms should include any deposit or upfront payment requirements, whether or not refundable, consequences of cancellation. Where all or some of your fee is invoiced after the job, you should also clearly state that no licence is granted to your client unless and until your fee is paid in full. You might also consider including a right to charge interest on late payment, although you should resist the temptation to make this a penalty, as you may find it unenforceable in court if it comes to that.

You should also clearly state any requirements in relation to attribution of you as the creator of the work. Separate from copyright are “moral rights” which always vest in the creator of the work and which can’t be sold or licensed. Moral rights include the right to be attributed, the right to prevent false attribution, and the right to prevent “derogatory treatment” of your work. Whilst generally speaking these rights are enforceable unless expressly waived, in some circumstances (eg, where it is considered customary not to attribute a creator), they may be unenforceable unless there is an express contractual term dealing with them.

Should creatives have disclaimers/ terms of trade on their websites, and if so what should they cover?

Website terms and conditions are better than nothing, but often not a lot better! Many of the website terms I see would – in my view – prove to be worthless if tested in court. You need to be able to establish that a person engaging you has read and understood your website terms, and has understood that those terms would be incorporated into a contract with you. This means that terms and conditions which are buried “below the fold”, with an inconspicuous link, will in many cases be unenforceable.

In my view, important terms of trade (such as intellectual property licensing and payment terms) should always be set out in an individual agreement with your client. Website disclaimers are more sensible when limited to issues simply relating to use of the site itself: eg, a statement of copyright ownership, with no reproduction permitted without your permission.

How important are contracts when freelancing on a regular basis for the same company?

Very! It is obviously great to have a regular client, but it can be risky when your arrangements are on a handshake, rather than documented in writing. It is quite likely that the person you are dealing with now won’t be at the company in a few years, or could be in a completely different role. Their replacement may have quite a different view about the nature of your relationship, and your respective rights and obligations in relation to your work.

Ricky Mutsaers