Proving copyright subsistence? Consider the section 128 presumption

In actions for copyright infringement, respondents frequently challenge subsistence and/or ownership.  However, where the name of the author does not appear on the work, a name purporting to be that of the publisher does, and the work was published in Australia within the requisite 70 year period, then unless the contrary is established, section 128 provides that copyright shall be presumed to subsist in the work and the person’s name who appeared purporting to be publisher shall be presumed to have been the owner at the time of publication.

Over the last decade, the Federal Court has only had to consider this question twice, in both cases, upholding Microsoft’s reliance on the presumption (with Mallesons acting for Microsoft both times).

In Microsoft Corporation v DHD Distribution Pty Ltd (t/as Austin Computers) & Anor (1999) 45 IPR 459 Lehane J held that Microsoft purported to be the “publisher” of its computer programs because it had been the “…person who had issued or caused to be issued copies of the works, as they were first published”.  Accordingly, as Microsoft’s name had appeared on the works, it was correct for Microsoft to rely on the presumptions in s 128.

This reasoning was adopted by Conti J more recently in Microsoft Corporation & Ors v PC Club Australia Pty Ltd & Ors (2005) 67 IPR 262.

Given Microsoft’s success in this regard, it is worth bearing in mind that if you are the publisher of a work, satisfy the conditions of section 128, and are seeking to enforce your rights, there may well be benefit in relying on this provision.


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