¹ Most universities now are considering special provisions for ownership of intellectual property and many have either passed legislation or issued policy statements dealing specifically with this issue. Some examples are:

(a) Deakin University Statute 13.1 — Copyrights, Inventions and Patents 1979 and Regulation 13.1(1) — Copyright 1981, make specific provision in respect of copyright in “unit materials” which are created by a staff member in the course of duties, specifically for use in, or in connection with, a unit offered or to be offered by the University. Both the statute and regulation are currently under revision;

(b) University of Melbourne Statute 14.1 — Intellectual Property 1993; and

(c) Monash University Statute 11.2 — Intellectual Property 1994 and Intellectual Property Regulations 1994.

² Copyright Act 1968 (Cth), s 35.

³ See below at 346-348.

⁴ For example, academics have always negotiated and entered into their own publishing contracts and have been the recipients of royalties.

⁵ University of Melbourne Statute 14.1 — Intellectual Property 1993; Deakin University Statute 13.1 — Copyrights, Inventions and Patents 1979; Monash University Statute 11.2 — Intellectual Property 1994.

⁶ All faculties were asked to respond to questions addressing such issues as students, courses, campuses, staff, research and the community.

⁷ T Coady and Miller, S, “Australian higher education and the relevance of Newman” (1993)Google Scholar 36(2) Australian Universities’ Review 40.

⁸ This subject is an article in itself and has been explored extensively over many years. See, for example; John Henry Cardinal Newman, The Idea of a University (1852); K Jaspers, The Idea of a University (1960); SRothblatt, The Idea of the Idea of a University and its Antithesis(1989); M Allen, The Goals of Universities (1988).

⁹ Australian Vice-Chancellors’ Committee (AV-CC), “Ownership of Intellectual Property in Universities — A Discussion Paper” (1993) at para 3.1 suggested that university objectives can include, inter alia, the following: promotion of excellence in teaching, research and furthering knowledge; protection of the integrity and welfare of the institution; providing a resource for industry and commerce; obtaining an appropriate return for facilities, resources and services and providing fair remuneration and incentives for staff.

¹⁰ Unless they are produced specifically for use in distance education, open learning programmes and so on, in which case different considerations apply.

¹¹ R Dreyfuss, “The Creative Employee and the Copyright Act of 1976” (1987) 54 U Chic L Rev 590.

¹² The application of these principles, which are contained in Copyright Act 1968 (Cth), s 35(6), is not clear in the education context.

¹³ Section 14.1.6(1) University of Melbourne Statute 14.1 — Intellectual Property 1993 applies to intellectual property (which includes all copyright works and subject matter other than works) that are:

(a) … created by the originator in pursuance of his or her employment, studies, scholarship or research with or at the University; and

(b) … the creation of which has been contributed to substantially by the University … by way of funding, salary, resources, facilities, apparatus, or supervision.

¹⁴ See Balkin, R and JLR Davis, Law of Torts (1991);Google Scholar F A Trindade and P Cane, The Law of Torts in Australia (2nd ed 1993); and Clerk & Lindsell on Torts (16th ed 1989) for the liability of employers for torts generally of their employees.

¹⁵ For example, Deakin University Regulation 13.1(1), s 5, addresses this issue in the context of university assumption of copyright ownership of course materials created by academic employees in the course of employment, and incorporates an indemnity for th academic “against any claim by a third party for breach of copyright in respect of course materials published by the university.” Deliberate infringements by the author may warrant different treatment from unintentional infringements.

¹⁶ Vicarious liability in no way exempts the employee from personal liability for direct infringement: W R Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (2nd ed 1989) at para 2-003; Clerk & Lindsell on Torts above n 14, ch 3.

¹⁷ To determine whether the act was committed in the course of employment, one identifies the job the servantwas employed to do and then distinguishes the wrongful mode of doing authorised work (for which the employee is liable) from an act of a kind which the employee is not employed to perform: Goh Choon Seng v Lee Kim Soo [1925] AC 550; R Balkin and JLR Davis, above n 14 at 816. Universities cannot remove vicarious liability by instructing employees not to commit copyright infringements in the course of performing their duties: W R Cornish, above n 16 at para 2-004 and see generally Clerk & Lindsell on Torts above n 14.

¹⁸ Performing Right Society Ltd v Mitchell and Booker (Palais De Danse) Ltd [1924] 1 KB 762; Australian Performing Right Association Ltd v Miles [1962] NSWR 405; W R Cornish, above n 16 at paras 2-003 and 11-016; Clerk & Lindsell on Torts above n 14 at para 3-16; R Balkin and JLR Davis, above n 14 at 791.

¹⁹ Copyright Act 1968 (Cth), s 36(1).

²⁰ Although there still may be an authorisation if the requirements for this are present. See, eg, The University of New South Wales v Moorhouse (1975) 133 CLR 1; Australasian Performing Right Association Ltd v Canterbury-Bankstown League Club Ltd [1964] NSWR 138; J Lahore, Intellectual Property in Australia: Copyright Law (1978-994) at para 4.11.375ff.

²¹ J Lahore, above n 20 at para 4.11.375ff.

²² This term generally refers to copyright, patents, inventions, know-how, designs, trade marks, circuit layouts, eligible layouts, plant variety rights, trade secrets or confidential information.

²³ AV-CC, above n 9.

²⁴ There is no analysis of computer programmes. Whilst computer programmes are literary works, many people consider them to be more akin to the type of material protected by Patent Law, thereby arguably justifying different treatment for computer programmes from that given to other literary works. This is the approach taken in the AV-CC Discussion Paper, above n 9 at para 5.5.4. However, note that the Monash University Intellectual Property Statute, above n 1, treats literary works and computer programmes in the same way in the same circumstances. The comparison is beyond the scope of this article.

²⁵ There is no discussion of copyright ownership of material produced by students and visiting academics from other institutions. This requires a separate and more detailed analysis than is possible in this article.

²⁶ Cases where specific external funding is provided for a particular research project on conditions which address ownership of the resulting copyright will also be excluded from this analysis.

²⁷ Copyright Act 1968 (Cth), s 32.

²⁸ Section 10(1).

²⁹ Section 10(1).

³⁰ A separate copyright protection is available for the video and sound recording themselves as subject matter other than works: Copyright Act (Cth) 1968, ss 89 and 90.

³¹ Roland Corporation and Another v Lorenzo and Sons (1991) 22 IPR 245 at 251-253; A L Monotti, “Copyright Protection of Computerised Databases” (1992) 3 AIPJ135 at 143-147.

³² A L Monotti, “The Extent of Copyright Protection for Compilations of Artistic Works” [1993] 5 EIPR 156.

³³ Copyright Act 1968 (Cth), s 31.

³⁴ Copyright Act 1968 (Cth), ss 31(a) and 10(1). See also AV-CC, Copyright: A Comprehensive Guide for Higher Education Institutions to the Copyright Act 1968 as amended including 1989 Amendments at 4-6.

³⁵ Copyright Act 1968 (Cth), s 13(2) provides that the exclusive rights of the copyright owner include the exclusive right to authorise any person to do any acts comprised in the copyright.

³⁶ Part IX of the Copyright Act 1968 (Cth) gives only limited protection against “false attribution of authorship”.

³⁷ S Ricketson, The Law of Intellectual Property (1984) at paras 15.56-15.85; J Lahore, above n 20 at paras 4.15.455-4.15.510. The four main moral rights which are recognised in some European countries are rights of disclosure or publication, the right of recall because of change of opinion, the right of paternity being the right to claim authorship, and the right to integrity of the work.

³⁸ Which includes making a sound recording or cinematograph film of the work: see Copyright Act 1968 (Cth), s 21(1).

³⁹ Section 10(1).

⁴⁰ Section 196(1).

⁴¹ Section 196(2).

⁴² S Ricketson, above n 37 at paras 15.59 - 15.80; J Lahore, above n 20 at paras 4.15.455 -4.15.510.

⁴³ J Lahore, above n 20 at para 4.15.500; S Ricketson, above n 37 at paras 15.74 - 15.77. However, there has been a recent commitment by the Government to introduce moral rights legislation to protect artists’ rights to recognition as authors and to guarantee the integrity of their work. Joint media release: Minister for the Arts, Hon Michael Lee, MP and the Minister for Justice, Hon Duncan Kerr, MP, 21 June 1994, and Discussion Paper, Proposed Moral Rights Legislation for Copyright Creators (1994). The scope of moral rights recommended is limited to the rights of attribution and integrity. It is not proposed to include the moral rights of disclosure and withdrawal: at para 3.17.

⁴⁴ Berne Convention Article 6 bis. (1).

⁴⁵ Ibid.

⁴⁶ The right of disclosure or publication is not a right which is required by the Berne Convention (the legal foundation for the protection of moral rights) but is recognised in France as a right of divulgation: Copyright Act 1957, Article 19(1) Law No 57-298; in the Federal Republic of Germany as a right of dissemination, Copyright Act 1965, Article 12; and in Japan Copyright Law No 48 of 1970, Article 18.

⁴⁷ See Discussion Paper, above n 43 at para 3.17.

⁴⁸ This will be influenced by the nature of statutory moral rights that are eventually granted to authors and, in particular, whether these apply in employment and are able to be waived. Ibid at para 3.25ff. See also National Tertiary Education Industry Union, University Staff and Moral Rights (1994).

⁴⁹ Copyright Act 1968 (Cth), s 35(2).

⁵⁰ Traditionally, there has been a distinction between a contract of service, being the relationship of employer and employee, and a contract for services being the engagement of an independent contractor. See Stevens v Brodribb Sawmilling (1986) 160 CLR 16; Zuijs v Wirth Brothers Pty Ltd (1955) 93 CLR 561 at 572.

⁵¹ Copyright Act 1968 (Cth), s 35(6). There is some debate as to whether it is in accordance with members’ obligations under Article 1 of the Berne Convention to accord ownership in the employer. See The Honourable Mr Justice Whitford, Report of the Committee to Consider the Law on Copyright and Designs (1977, Cmnd 6732) at paras 548, 549, 570 and 571;Copyright Law Review Committee (CLRC), Report on Journalists’ Copyright (1994) at paras 6.08-6.14.

⁵² The policy underlying s 35(6) is accepted for the purposes of this article, because any recommendation for modifying or repealing that section has implications beyond academic employees. A rebuttable presumption applies to exclude the operation of this provision where a name purporting to be that of the author appears on copies of the work as published: Copyright Act 1968 (Cth), s 127(1). It is also possible to establish that the work is not made under a contract of service in pursuance of the terms of employment. See Noah v Shuba [1991] FSR 14 which considered the corresponding sections of the Copyright Act 1956 (UK), ss 20(2) and 4(4).

⁵³ Antocks Lairn Ltd v I Bloohn Ltd [1972] RPC 219.

⁵⁴ Copyright Act 1968 (Cth), s 35(3). The difficulty with deciding the nature of the contract militates against certainty. For that reason, Whitford J recommended in his report that the expression “contract of service” should be avoided in legislation and that “rights in employee works should be defined solely by reference to works made by employees in the course of employment”. See Whitford Committee above n 51 at paras 568, 575 and 609 (iii).

⁵⁵ Zuijs v Wirth Brothers Pty Ltd (1955) 93 CLR 561 at 571.

⁵⁶ Beloff v Pressdram Ltd [1973] 1 All ER 241 at 250; Stephenson, Jordan & Harrison Ltd v Macdonald and Evans (1952) 69 RPC 10 at 22 per Denning LJ.

⁵⁷ See Beloff v Pressdram Ltd [1973] 1 All ER 241 at 253 and Stevens v Brodribb Sawmilling (1986) 160 CLR 16 at 36-37 per Wilson and Dawson JJ for examples of the indicia which may suggest either a contract of service or a contract for services.

⁵⁸ In University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 611-613,external examiners who were employed to set and mark exam papers in return for payment of a lump sum, were not employed under a contract of service.

⁵⁹ Copyright Act 1968 (Cth), s 35(6).

⁶⁰ Stephenson Jordan & Harrison Ltd v MacDonald & Evans (1952) 69 RPC 10; Noah v Shuba [1991] FSR 14; see also Mobil North Sea Ltd v Inland Revenue Commissioners [1987] 1 WLR 1065 at 1072 for a similar approach by the House of Lords in the context of the Finance Act 1981 (UK).

⁶¹ Stephenson Jordan & Harrison Ltd v MacDonald & Evans (1952) 69 RPC 10 at 22 per Lord Denning.

⁶² Ibid at 24 per Lord Morris. These approaches were impliedly endorsed by Mummery J in the context of a guide written by an employee in Noah v Shuba [1991] FSR 14 at 26. He stated: “[I]t had not been shown that the accountant could have been ordered to write or deliver the lectures or that it was part of his duty to write or deliver them.”

⁶³ Harvey on Industrial Relations and Employment Law (1972-1993) at paras 399-550; Lister v Romford Ice & Cold Storage [1957] 1 All ER 125 at 143-144 per Tucker LJ.

⁶⁴ Harris’ Patent [1985] RPC 19 at 29.

⁶⁵ Adamson v Kenworthy (1931) 49 RPC 57 at 68. See also Harvey above n 63 at para 403.

⁶⁶ Also a doctor on the staff of a hospital, a master on the staff of a school or other person employed under a contract of service to give lectures orally to students.

⁶⁷ (1952) 69 RPC 10. This is also supported by dicta in Noah v Shuba [1991] FSR14 at 26.

⁶⁸ (1952) 69 RPC 10 at 18.

⁶⁹ Ibid.

⁷⁰ Harris’ Patent [1985] RPC 19 at 29 per Falconer J.

⁷¹ Ibid; Adamson v Kenworthy (1931) 49 RPC 57 at 68.

⁷² Stephenson Jordan & Harrison Ltd v MacDonald & Evans (1952) 69 RPC 10 at 22 per Lord Denning.

⁷³ If the compilation is made in the course of employment and infringes another’s copyright,the university is vicariously liable for the torts of the employee. If the university publishes 67the compilation, it is liable directly for its reproduction and publication of the offending work.

⁷⁴ So that it cannot be suggested that the research is in pursuance of the terms of employment.

⁷⁵ Noah v Shuba [1991] FSR 14; Stephenson Jordan & Harrison Ltd v MacDonald & Evans (1952) 69 RPC 10.

⁷⁶ Cornish, W R, “Rights in University Innovations: The Herchel Smith Lecture for 1991” [1992]Google Scholar 1 EIPR 13 at 15.

⁷⁷ Ibid.

⁷⁸ (1952) 69 RPC 10.

⁷⁹ This was developed to comply with obligations to formulate procedures to assess performance of staff, contained in s 6 of the Australian Universities Academic Staff (Conditions of Employment) Award 1988.

⁸⁰ See AV-CC above n 9 at para 4.1.

⁸¹ BP Refinery (Westernport) Pty Ltd v Shire of Hastings (1977) 52 ALJR 20 at 26.

⁸² Nelson v Dahl (1879) 12 Ch D 568 at 575 per Jessel MR; see also D W Grieg and J L R Davis, The Law of Contract (1987) at 560-575.

⁸³ Noah v Shuba [1991] FSR 14 provides support for this implied term.

⁸⁴ This is accentuated when the printing department retains the original material and leaves the teacher with one copy.

⁸⁵ See Explanatory Memorandum to University of Melbourne Statute 14.1 — Intellectual Property 1993.

⁸⁶ This principle is accepted by the various committees which have considered different aspects of copyright legislation both in Australia and the UK, namely the Spicer Report,(1965) at para 80; Report of the Gregory Committee (1968, Cmnd 8662) at para 271; Whitford Committee above n 51 at para 541.

⁸⁷ Whitford Committee above n 51 at para 571.

⁸⁸ Whether the principle permits ownership vesting in the employer rather than the author is debatable: see above n 51.

⁸⁹ In exceptional cases the contract can be used to vary the effect of the statutory provisions.

⁹⁰ Copyright Act 1968 (Cth), s 35(4) isolates works of journalists for special treatment by providing for a split in ownership which recognises employerownership of copyright as may be necessary for the purposes of the business, but employee ownership for all other purposes. The question of whether thissection should be repealed or modified has been considered by the Copyright Law Review Committee, with the majority recommending that s 35(4) be repealed. Its terms of reference did not include works created in employment generally, so the committee emphasised that it approached its report on the unquestioned presumption that s 35(6) lays down the normal rule for copyright ownership of employee works and is to remain as it is. See CLRC Report, above n 51 at para 10.03.

⁹¹ Knowledge of this further means of exploitation may influence the terms of employment negotiated. The argument is strengthened when the use is not related to the employer’s business.

⁹² A statutory amendment to s 35, similar to that provided for journalists, is not recommended. As business interests and purposes change, specific provisions cannot necessarily take into account these changes in a way that does justice to all parties.

⁹³ This was recognised by the Whitford Committee, but its recommendation was to leave the UK statute unchanged and to resolve these cases with special contractual arrangements: Whitford Committee above n 51 at paras 571 and 574.

⁹⁴ By analogy with the approach in Herbert Morris v Saxelby [1916] 1 AC 688 at 714 per Lord Shaw of Dunfermline, they do not become objectively confinedto that employer’s activities.

⁹⁵ Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37; Herbert Morris v Saxelby [1916] 1 AC 688.

⁹⁶ Herbert Morris v Saxelby [1916] 1 AC 688 at 714 per Lord Shaw of Dunfermline. This principle is generally applied in the context of confidential information cases where a distinction is drawn between “objective knowledge” of specific information about the employer’s business which is of considerable value to the employer and “subjective knowledge” which is philosophically personal to the employee and forms part ofthe general stock of the employee’s knowledge gained during employment.

⁹⁷ Different considerations apply when these materials are produced at the specific request of the university to publish and disseminate to students, as in the case of distance education materials.

⁹⁸ This “tools of trade” argument also supports the traditional argument that lecture notes are not created in pursuance of the duties of employment: Stephenson Jordan & Harrison Ltd v MacDonald & Evans (1952) 69 RPC 10.

⁹⁹ However, the value of another’s lecture notes cannot be underestimated in terms of saving time in preparation.

¹⁰⁰ Copyright Act 1968 (Cth), ss 31 and 36.

¹⁰¹ Francis Day & Hunter Ltd v Bron [1963] 1 Ch 587.

¹⁰² Ibid.

¹⁰³ Zeccola v University Studios Inc (1982) 46 ALR 189; Corelli v Gray (1913) 29 TLR 570.

¹⁰⁴ Copyright Act 1968 (Cth), s 14(l)(a). See also Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at 469.

¹⁰⁵ Copyright Act 1968 (Cth), s 40. In De Garis & Anor v Neville Jeffress Tidier Pty Ltd (1990) AIPC 90-678, Beaumont J considered that “research” (at 36,330) and “study” (at 36,331) are intended to have their dictionary meanings of: “research — diligent and systematic enquiry or investigation into a subject in order to discover facts or principles: …” “study — 1 application of the mind to the acquisition of knowledge, as by reading, investigation or reflection. 2 the cultivation of a particular branch of learning, science or art: the study of law. 3 a particular course of effort to acquire knowledge: to pursue special medical studies … 5 a thorough examination and analysis of a particular subject…”. (Emphasis in original.)

¹⁰⁶ J McKeough and A Stewart, Intellectual Property in Australia (1991) at 160; S Ricketson, above n 37 at paras 10.2-10.8.

¹⁰⁷ Sillitoe v McGraw-Hill Book Company (UK) Ltd [1983] FSR 545 at 558; De Garis & Anor v Neville Jeffress Pidler Pty Ltd (1990) AIPC 90-678 at 36,330-1; University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 613.

¹⁰⁸ University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 613.

¹⁰⁹ Copyright Act 1968 (Cth), ss 14(l)(a) and 31(l)(a)(iii).

¹¹⁰ Instruction is not given for profit by reason only that the teacher receives remuneration for giving the instruction: Copyright Act 1968 (Cth), s 28(2).

¹¹¹ Section 28.

¹¹² Herbert Morris Ltd v Saxelby [1916] 1 AC 688 at 707. A restraint must be reasonable in the interests of both contracting parties and also in the interests of the public.

¹¹³ Stephenson, Jordan & Harrison Ltd v Macdonald and Evans (1952) 69 RPC 10.

¹¹⁴ If there is a strong case for universities having some rights in these lecture notes, balancing the interests of the academic and the university may involve the academic granting a limited licence to meet these needs.

¹¹⁵ However if these works are created in the course of employment, the current law vests copyright in the university employer: Copyright Act 1968 (Cth), s 35(6).

¹¹⁶ Where examination questions are not created under a contract of service, the authors own copyright in the questions: University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601.

¹¹⁷ See above at 346-348.

¹¹⁸ Copyright ownership of the database itself may vest in the institution as a literary work being a compilation if there is sufficient originality in its creation: Copyright Act 1968 (Cth), s 10(1). See also Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465.

¹¹⁹ This assumes that the work is made in pursuance of the terms of employment under a contract of service.

¹²⁰ Copyright Act 1968 (Cth), s 35(6).

¹²¹ Copyright Act 1968 (Cth), s 40.

¹²² De Garis & Anor v Neville Jeffress Pidler Pty Ltd (1990) AIPC 90-678; CCH, Australian Industrial and Intellectual Property, Vol 1 at para 8-590.

¹²³ Creation of a work using a substantial part of another work is not “diligent and systematic inquiry or investigation into a subject in order to discover facts or principles”: see De Garis & Anor v Neville Jeffress Pidler Pty Ltd (1990) AIPC 90-678.

¹²⁴ The right to publish is an exclusive right of the copyright owner: Copyright Act 1968 (Cth), s31(a)(ii).

¹²⁵ SeeEisenberg, R, “Academic Freedom and Academic Values in Sponsored Research” (1988)Google Scholar 66 Texas Law Review 1363, for a discussion of arguments limiting the traditional American concepts of academic freedom for the products of sponsored research.

¹²⁶ R Dreyfuss, above n 11.

¹²⁷ For example, Copyright Act 1965 Federal Republic of Germany, Article 12.1; Copyright Act 1957 Law No 57-298 France, Article 19.

¹²⁸ Joint media release: Minister for the Arts, Hon Michael Lee, MP and the Minister for Justice, Hon Duncan Kerr, MP, 21 June 1994; see also Discussion Paper, above n 43.

¹²⁹ R Dreyfuss, above n 11.

¹³⁰ If the rights are granted by way of express licence, the university is protected in the event of an assignment of copyright: Copyright Act 1968 (Cth), s 196(4).

¹³¹ University of Melbourne Statute 14.1 — Intellectual Property 1993, s 14.1.6(3), vests copyright in literary works in the university and requires an assignment of a specified class of works to the author.

¹³² However, the academic may grant a licence for use of the material without a charge. Provision is made for such profit sharing in Deakin University Statute 13.1 — Copyrights, Inventions and Patents 1979, s 8.

¹³⁴ The classic formulation of restraint of trade is in Nordenfelt v Maxim Nordenfelt Guns and Ammunition Co [1894] AC 535. All covenants in restraint of trade are prima facie void and cannot be enforced unless they are “reasonable … in reference to the interests of the parties concerned and reasonable in reference to the interests of the public, so framed and so guarded as to afford adequate protection to the party in whose favour it is imposed, while at the same time it is in no way injurious to the public.” Ibid at 565 per Lord Macnaghton. See also Electrolux Ltd v Hudson [1977] FSR 312; Schroeder Music Publishing Co Ltd v Macaiday [1974] 3 All ER 616 at 623 per Lord Diplock.

¹³⁵ Herbert Morris Ltd v Saxelby [1916] 1 AC 688 at 707 per Lord Parker of Waddington.

¹³⁶ Ibid.

¹³⁷ Electrolux Ltd v Hudson [1977] FSR 312 at 323; Schroeder Music Publishing Co Ltd v Macaulay [1974] 3 All ER 616 at 623.

¹³⁸ Regulation 13.1(1) Copyright, s 3. Both this regulation and Statute 13.1, Copyright, Inventions and Patents are under revision.

¹³⁹ This proviso reinforces the need for the academic to be identified as author in the materials.

¹⁴⁰ Copyright Act 1968 (Cth), s 28 permits a limited public performance of literary works without infringement.

¹⁴¹ Servants cannot be prevented from using their personal skill and knowledge in the service of another: see Herbert Morris Ltd v Saxelby [1916] 1 AC 688 at 710 per Lord Parker of Waddington; Attwood v Lamont [1920] 3 KB 571 at 589-590.

¹⁴² Electrolux Ltd v Hudson [1977] FSR 312 at 325; Schroeder Music Publishing Co Ltd v Macaiday [1974] 3 All ER 616.

¹⁴³ Electrolux Ltd v Hudson [1977] FSR 312 at 325; Triplex Safety Glass Co Ltd v Scorah (1937) 55 RPC 21 at 28.

¹⁴⁴ AV-CC, above n 9 at para 5.5.1.

¹⁴⁵ Ibid at para 3.2. Whilst this committee did not make a direct recommendation, it noted that universities traditionally waive rights to ownership in lectures, books and articles.

¹⁴⁶ Ibid at para 3.2(l)(c). Other criteria identified, such as substantial use of resources, use of pre-existing intellectual property, institutional funding and team generation of intellectual property are less likely to be relevant to the creation of traditional literary works.

¹⁴⁷ Ibid at para 3.1. Other objectives include: protecting the integrity of the university, providing a resource for industry, obtaining a return for use of facilities outside the mainstream activities of teaching and research, providing fair remuneration, providing incentives for staff, increasing business acumen and fostering corporate identity.

¹⁴⁸ The AV-CC states that “universities traditionally waive rights to ownership in lectures, books and articles”: see above n 9 at para 3.2.

¹⁴⁹ See above at 360-362.

¹⁵⁰ See AV-CC, above n 9 at para 3.2, “Substantial use of institutional resources and/or services”.

¹⁵¹ This was the view submitted to the Whitford Committee by the British Copyright Council: Whitford Committee above n 51 at para 556. This does not exclude split ownership as a contractual solution for particular types of literary works.

¹⁵² Ibid at paras 558-567.

¹⁵³ These objections influenced the Whitford Committee against adopting such a proposal: ibid at paras 569-570.

¹⁵⁴ This was the recommendation of the Whitford Committee: ibid at paras 571-575.

¹⁵⁵ This may also be the case with many artistic, dramatic and musical works, but an analysis of these works is beyond the scope of this article.

¹⁵⁶ Even if it were, universities can equally satisfy their concerns by vesting copyright ownership in the academic and using contracts to provide for such things as reimbursement of expenditure, a licence to use materials, and profit sharing if appropriate. Furthermore, a contract can be used to address matters of liability arising from infringement of copyright and other torts.

¹⁵⁷ University copyright ownership is provided in such circumstances under the University of Melbourne Statute 14.1 — Intellectual Property 1993 and Monash University Statute 11.2 — Intellectual Property 1994, but the validity of these provisions is questioned in the absence of agreement, as they are inconsistent with Copyright Act 1968 (Cth), s 35(2).

¹⁵⁸ An important factor for universities to consider before assuming ownership of such works, as opposed to requiring financial contribution, is the potential assumption of liability for copyright infringements, and other torts such as libel, occurring in these works.

¹⁵⁹ AV-CC above n 9 at para 3.2(iii) considers this as one factor to be considered when the policy for waiver of rights is determined.

¹⁶⁰ University of Melbourne Statute 14.1 — Intellectual Property 1993, ss 14.1.6(3) and (4).

¹⁶¹ This obligation creates a similar administrative burden to that which would apply in the previous example. Note the different approach taken by Monash University: s 2.5 and reg 2.1.1 vest copyright ownership in the employee in certain categories of works and thereby avoid the need for an assignment of copyright in specific works.

¹⁶² University of Melbourne Statute 14.1 — Intellectual Property 1993, s 14.1.6(3).

¹⁶³ Ibid, s 14.1.1.

¹⁶⁴ Copyright Act 1968 (Cth), s 35(3) provides that: “The operation of any of the next three succeeding sub-sections in relation to copyright in a particular work may be excluded or modified by agreement.” An alternative procedure to individual assignments for each work is an agreement which changes the operation of s 35(6) for a specific category of works.

¹⁶⁵ University of Melbourne Statute 14.1 — Intellectual Property 1993, s 14.1.6(l)(a).

¹⁶⁶ Stephenson, Jordan & Harrison Ltd v Macdonald and Evans (1952) 69 RPC 10. It is unwise to rely upon Stephenson’s case as authority for employee ownership in lecture notes, as the reasoning in the case is flawed. In any event, given that most, if not all lecturers will at some stage write out lecture notes, and that proper performance of oral lectures in most disciplines requires adequate preparation beforehand, a court may not accept the argument that the scope of duties of a person employed to give lectures orally did not include writing lectures down.

¹⁶⁷ University of Melbourne Statute 14.1— Intellectual Property 1993, s 14.1.6(l)(b).

¹⁶⁸ See AV-CC above n 9 for a discussion of the criteria to be taken into account in determining ownership of intellectual property in general (at para 3.2) and the important differences which exist for academic literary works and which may justify different treatment (at para 5.5). The omission of required assignment of copyright in lecture notes is not as drastic as at first appears, because of the operation of Copyright Act 1968 (Cth), s 28.

¹⁶⁹ University of Melbourne Statute 14.1 — Intellectual Property 1993, ss 14.1.4 and 14.1.7(2).

¹⁷⁰ Statutory Rule 2.23 — Intellectual Property Committee.

¹⁷¹ Frisby v BBC [1967] Ch 932.

¹⁷² Copyright Act 1968 (Cth), s 35(6).

¹⁷³ Note the position taken on ownership rights in works created under employment contracts by World Intellectual Property Organisation (WIPO) in its Draft Model Provisions for Legislation in the Field of Copyright, CE/MPC/1/2-1, (1989) at s 37, referred to in CLRC Report above n 51 at paras 7.40-7.41. The first alternative vests economic and moral rights in the author but requires a transfer to the employer of economic rights “to the extent necessary for the customary activities of the employer at the time of creation of the work.” The second provides that “the first owner of economic rights shall be the employer, the author being entitled to the moral rights.” For a discussion on international approaches to employee rights in copyright, see CLRC report, above n 51, ch 7.

¹⁷⁴ P Bousquet, “Externally Sponsored Faculty Research under the ‘Work for Hire’ doctrine: Who’s the Boss?” (1988) 39 Syracuse Law Rev 1351 at 1369-1373.

¹⁷⁵ Of which he or she is the identifiable author.

¹⁷⁶ This is similar to the approach taken in the Deakin University Statute 13.1 — Copyrights, Inventions and Patents 1979 and Regulation 13.1(1) — Copyright, s 3. See also Monash University Statute 11.2 — Intellectual Property 1994, ss 2.7 and 2.13 which limit the extent of the rights given to the “originator’s teaching and research purposes”.

¹⁷⁷ Monash University Statute 11.2 — Intellectual Property 1994, s 2.14.2 only gives the author the right to say whether or not he or she is to be acknowledged as author of an adaptation or modification of the work, and if so the form of the acknowledgement.

¹⁷⁸ Ibid, s 2.3.2. The effect of this section seems to be that the university must, where it owns the copyright, enter into an agreement with the originator “regarding the distribution of any revenue between the University and the originator where the intellectual property is sold or licensed by the University.”

¹⁷⁹ Note the provisions of Deakin University Statute 13.1 — Copyrights, Inventions and Patents 1979 and Regulation 13.1(1) — Copyright, s 2.

¹⁸⁰ See AV-CC above n 9 at para 3.2 for a list of rights of the author which may require protection.

¹⁸¹ This is the approach taken by University of Melbourne Statute 14.1 — Intellectual Property 1993, s 14.1.6(3) and (4) and Monash University Statute 11.2 — Intellectual Property 1994, s 2.6.

¹⁸² The Explanatory note to the University of Melbourne Statute 14.1 — Intellectual Property 1993, refers to the requirement to pay an annual fee to CAL for use of copyright works owned by others as one reason for a clearer policy on copyright ownership.

¹⁸³ This is more relevant for works such as electronic databases, computer aided instruction, multimedia teaching, interactive learning computer software and language laboratories. See the Explanatory Note to the University of Melbourne Statute 14.1 — Intellectual Property 1993, which refers to the extent of investment made by the University in computer related works and the use of university resources generally in the creation of significant works.

¹⁸⁴ Monash University Statute 11.2 — Intellectual Property 1994, s 2.3.2.

¹⁸⁵ S Ricketson, above n 37 at paras 13.114-13.116.

¹⁸⁶ Any reproduction of the published work will infringe the publisher’s copyright in the published edition: Copyright Act 1968 (Cth), ss 88 and 92.

¹⁸⁷ See for example the University of Melbourne draft Statute 14.1 — Intellectual Property, ss 14.1.2(4) and 14.1.5(2)(v). This approach was discarded in the final statute. Instead, it was replaced with a right to recover substantial costs from this income. See Regulation 2.23 Intellectual Property Committee, Appendix B, Guidelines, Procedures and Criteria for Reporting Intellectual Property, s 1.4.

¹⁸⁸ University of Melbourne Statute 14.1 — Intellectual Property 1993, s 14.1.6(4)(b). The reference to recovery of costs incurred for supervision is odd in relation to student works because the university has already been paid for supervision.

¹⁸⁹ Explanatory note to University of Melbourne Statute 14.1 — Intellectual Property.

¹⁹⁰ However, University of Melbourne Regulation 2.23 — Intellectual Property Committee, Appendix B, Guidelines, Procedures and Criteria for Reporting Intellectual Property, s 1.4, limits reporting of literary works created solely for the purpose of publication in an academic publication to those whose substantial costs exceed 5% base professorial salary and whose anticipated royalty income exceeds 10% base professorial salary.

¹⁹¹ The problems facing Universities have been clearly summarised and developed by W R Cornish, above n 76.

¹⁹² See for example the former Monash University Statute 11.2 — Discoveries, Inventions and Patents, s 1: ‘Any patentable discovery or invention, to the extent to which it is made or contributed to by a member of the staff of the University acting in the course of his employment … shall be the property of the university unless otherwise determined in accordance with any regulation made pursuant to this statute.” Furthermore, a typical clause in the contract of employment is as follows: “Any invention or design made by a member of staff, in the course of University duties or when using University resources, shall be the property of the university.”

¹⁹³ The provisions of University of Melbourne Statute 14.1 — Intellectual Property 1993 recognise this but lean too far in favour of the university.

¹⁹⁴ AV-CC above n 9 at para 3.1.

¹⁹⁵ Ibid.