Works made for hire… what’s that? The works made for hire doctrine allows an employer, or in very specific situations an entity to commission a work from an individual and have the copyrights vest not in the person doing the work but vest in the commissioning party. How do we pull of such magic, well…. Carefully.
First things first, we need to understand who the author of a work is under copyright law.
Who is an author?
Under the copyright law, the creator of the original expression in a work is its author. The author is also the owner of copyright unless there is a written agreement by which the author assigns the copyright to another person or entity or a written agreement that allows copyright to vest in another person or entity. In cases of works made for hire, the employer or commissioning party is considered to be the author.
Under the 1976 Copyright Act as amended (title 17 of the United States Code), a work is protected by copyright from the time it is created in a fixed form. In other words, when a work is written down or otherwise set into tangible form, the copyright immediately becomes the property of the author who created the work. Only the author or those deriving their rights from the author can rightfully
claim copyright. The exception to this principle of authorship are works that are “made for hire”. In such a case, the employer, not the employee will own the copyright to the work.
Anyone and everyone who has worked in a creative field as an independent contractor should immediately sit up and pay attention.
Section 101 of the copyright law defines a “work made for hire” as
1 a work prepared by an employee within the scope of his or her employment
or
2 a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for a publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes; and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and intended to be used in systematic instructional activities.
Is the work a “work for hire”?
The determination can be tricky. To determine whether a work is
made for hire, one must first ascertain whether the work was
prepared by
(1) an employee or
(2) an independent contractor.
If you are an employee and you create something that is in the due course of your employment then in all likelihood what you have created is a work made for hire and you will not enjoy any rights to that work. (please note that “employee” here is defined under the general common law of agency which we will not go into today.
If the work is created by someone who is not an employee, but rather an independent contract, (again see the common law of agency) then if the work is specially ordered or commissioned we look at part 2 of the statutory definition.
Such a work can be a work made for hire only if both of the following conditions are met: (1) it comes within one of the nine categories of works listed in part 2 of the definition and (2) there is a written agreement between the parties specifying that the work is a work made for hire. Funny enough the specific language here is extremely important, as is the timing of when the agreement is entered into.
The timing and the specific language required to form a valid work for hire agreement are discussed in a few cases. Take the case of Playboy vs. Dumas, 53 F.3rd 549 (2d. Cir. 1995) In this case an artist had provided Playboy with numerous drawings over the years which Playboy used in their magazine. This was all done without a formal agreement between the two parties, and the only indication as to what rights were transferred were ledgers on the backs of checks that were used to pay for the artists services.
In that case the Court held that:
“We therefore find that the 1976 Act requires that the parties agree before the creation of the work that it will be a work made for hire. We are not convinced, however, that the actual writing memorializing the agreement must be executed before the creation of the work.”
Seemingly the court ruled in favor of Playboy and stated that as long as the parties had an understanding that they were entering into a “work for hire” agreement then memorializing that agreement could happen at a later date. However, a further analysis needs to take place as to the exact wording on the memorializing documents. The court stated that some of the earlier ledgers did not have the exact wording “work made for hire” on them and therefore found that the writing was insufficient to satisfy section 101(2) of the Copyright act, and it was insufficient to form a “work for hire” agreement. Some of the later ledgers went on with more detail and actually included the phrase “work for hire” the court found those sufficed the writing requirements of section 101(2).
However, also please note that there is case law that states that if the parties do not enter into a written agreement before the commencement of the work then the work cannot be a work for hire.
The bottom line is that if you are contemplating entering into a work for hire agreement. 1. Make sure you use specific language. 2. Do not allow commencement of work before the agreement is signed by both parties. 3. Have a competent attorney draft your documentation for you so as to limit your risk to a lawsuit. 4. Have your attorney draft you a rights assignment agreement that you use in concert with your work for hire agreement just in case the work for hire is unenforceable.
The information provided here is intended to provide general information and does not constitute legal advice. You should not act or rely on such information without seeking the advice of an attorney and receiving counsel based on your particular facts and circumstances. Many of the legal principles mentioned might be subject to exceptions and qualifications, which are not necessarily noted. Furthermore, laws are subject to change and vary by jurisdiction.
Sources:
http://www.ivanhoffman.com/work.html
http://www.copyright.gov/title17/92chap2.html
http://depts.washington.edu/uwcopy/Copyright_References/
http://topics.law.cornell.edu/wex/Copyright
http://www.copyright.gov/title17/
This article reposted from sasik|moon, a legal blog about Entertainment, Business and surviving in Hollywood
Partner of the legal firm sasik|moon, Pawel Sasik is an attorney specializing in entertainment and technology. Pawel has consulted on various multi-million technology development projects ranging in scope from entertainment / social media to professional practice facilitation tools. Some of his projects include, the enterprise grade litigation and transactional tools from RealPractice™ and the social entertainment website yoostar.com™. Pawel’s understanding of technology and law has allowed him to focus on assisting film makers produce and distribute their films through traditional and non-traditional methods. A native of Poland Pawel is fluent in Polish. Pawel holds a Juris Doctorate degree from Loyola Law School Los Angeles and business and music degrees from the University of Southern California and can be often found strumming the guitar or writing a script for relaxation.
