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 accepted when uploading photos, REA can sub-license the content as it desired. 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 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)
Image – IP Rights Investigation Services Dubai | Trademark Investigations (gvs.ae)
