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Crown Solicitor's Office

Getting rights right: Lessons from the "I am Australian" decision

Rosa O'Connor, CSO Solicitor, Sarah Sandstad, CSO Senior Solicitor

The recent decision of Bennett J in Pocketful of Tunes Pty Ltd v The Commonwealth of Australia (2015) 112 IPR 346  demonstrates the need for agencies to ensure that they obtain licences with respect to all relevant intellectual property rights to avoid paying additional licence fees. In that case the Department of Immigration and Border Protection paid licence fees of $2954.20 to Radiowise for music licences through the Australasian Performing Right Association ("APRA") and the Australasian Mechanical Copyright Owners Society ("AMCOS") in relation to the performances of the "I am Australian" song but failed to obtain a licence in relation to the synchronisation right. "Synchronisation" involves the reproduction of a musical work with visual material, such as graphics and/or film.

The "I am Australian" song was used as a soundtrack to a film produced and distributed by the Department for use in citizenship ceremonies. All parties to the proceeding accepted that this use was "use for the services of the Commonwealth" and was thus covered by the statutory licence in s. 183(1) of the Copyright Act 1968 (Cth). The task before the Copyright Tribunal was to set terms under s. 183(5) for the Commonwealth's use of the synchronisation right. Justice Bennett noted at [18]:

"The principles to be applied in assessing compensation under s 183(5) of the Act are not the same as those to be applied in determining damages for copyright infringement. The determination is of the value of the right that has been exercised by the Commonwealth for which the copyright owner is compensated and not the loss suffered by the copyright owner."

The Tribunal ultimately ordered the Commonwealth to pay an additional $149,743.34 to the applicants on account of the synchronisation right holding at [65] "[t]he synchronisation right is an independent and valuable right".

The Crown Solicitor has recently negotiated a favourable agreement with APRA, AMCOS and the Phonographic Performance Company of Australia ("PPCA") in relation to payment by a central NSW Government agency of remuneration under s.183 of the Copyright Act for uses of music by the agency in the course of certain specific functions.  In broad terms, the agreement covers the agency in relation to performance in public of musical works, recordings of those performances, synchronisation and communication of those recordings on the agency's website, for particular purposes. The amount of remuneration payable is significantly less than the damages awarded in the above decision.

For further information, please contact Rosa O'Connor on tel: (02) 8224 5363 or Sarah Sandstad on tel: (02) 8224 5344.