Works Made for Hire

In week 1 we discussed how copyright ownership belongs automatically to the creator upon fixation of a an original creative expression in a tangible form.  The one significant exception to this is when “a work [is] prepared by an employee within the scope of his or her employment” 17 U.S.C. section 101.  In cases such as these, the company is considered the author and owns the copyright (yes, corporate entities can own intellectual property just like they can own physical property.)  Such works are known as “works made for hire,”  Some common examples are when a reporter writes an article for a newspaper, a composer writes a score for a movie, or a scientist writes a lab report for a private research company.

Determining whether a person is an employee of a company can be harder than you’d think.  In a ruling in Community for Creative Non-Violence v Reid a lot of different factors were listed as being relevant to determining when a person is an employee including:

• the skill required;
• the location of the work
• the duration of the relationship between the parties
• whether the hiring party has the right to assign additional projects to the hired party
• the extent of the hired party’s discretion over when and how long to work
• the method of payment
• whether the hiring party is in business
• the provision of employee benefits
• and the tax treatment of the hired party

Sometimes a work is commissioned.  This means that the work is created at the request of another person or company, and that person or company may even pay the creator for this work.  But this is considered to be very different than a work created within the scope of regular employment.  In order for copyright in a commissioned work to belong to the employer it must be explicitly stated (should contain the language “work made for hire”) in a contract that is signed by both parties.  Otherwise it is very likely that the independent contractor is the copyright holder.  (There is a small range of works that are usually considered works made for hire even if it is not explicit within the contract, you can read about these here.)

Joint Authorship

Another scenario that we conveniently overlooked in week 1 is that of more than one person contributing to the creation of a work.  Section 101 defines a joint work as one “prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.”

The concept of integration of the works is very important here.  For example a video made by Arthur that has a song played over it written by Beatrice would not constitute inseparable contributions.  One could relatively easily separate the song from the video.  Anyone wanting to do a public performance of the song and video together would need permission from both Arthur and Beatrice.

However, if Charlie and Diana recorded a duet together, this would clearly be an example of a work that has interdependent parts and was created with the intent that the parts be inseparable.  Copyright in a joint work is held equally by all parties that contributed to the work.  This means that each creator can grant copyright permissions without the consent of the other creators.  In this case either Charlie or Diane could grant permissions to have the recording performed in public.

This can become problematic quickly.  For example, what if Charlie and Diane each grant exclusive public performance rights to different people?  Situations like this are why many people require all authors or creators to sign license agreements or copyright transfers.   This can also be problematic if Charlie and Diane have different ideas about how they want their work used and by whom.  It is best to be very clear from the outset of any joint works what the expectations are for future use and licensing of the work.

Transfer & Licensing Vocab

One major way that copyright ownership differs from ownership of physical property is that it is possible to both give away and keep any of the rights of copyright.  For example I could give you permission to make copies of my work, while also retaining that right for myself.  Although it is also possible that I assign to you the right to make copies and I don’t retain that right for myself.  To keep things straight, we are going to use three main terms in discussing the transfer and licensing of copyrights:

Nonexclusive license: This is how we will describe agreements that grant permission for one or more of the copyright activities, but the copyright holder also retains these rights and may grant them to others.  It might include any subset of the list of copyrights (copying, distribution, derivative works, public performance & display) and it can be limited in other ways too.  It might be for a limited period of time, be applicable in a limited geographic area, or refer to only a particular format (print vs online or cd vs vinyl).   It might also be subject to termination if the terms of the agreement are not met.   A nonexclusive license can be somewhat informal.  It doesn’t necessarily have to be in writing, but it’s a good idea in all situations to get the details in writing.

Exclusive license: This is how we will describe a transfer of some but not all of the bundle of rights, where the original copyright holder does not retain the right to those activities or the right to grant others permission to engage in them.  For example if I grant you an exclusive license to copy and distribute these lecture notes, I cannot copy or distribute them myself or give this permission to anyone else.  An exclusive license must be in writing, and must be signed by the licensor.

Assignment (sometimes also called “all rights transfer”):  We will use this term to describe situations where the entire set of copyrights is signed over to another individual or entity, and none are kept by original copyright holder.  An assignment of copyright must be in writing, and must be signed by the licensor.

It doesn’t really matter what you call the agreement, it matters what language is contained in the agreement.  Outside this class you might hear some other terms for these same things (grant, transfer, permission, contract, etc.,) but the meaning of the words “exclusive,” “nonexclusive,” and “assignment” are the same everywhere.

This is the part where I remind you that I am not a lawyer and that this is not legal advice; rather, I am sharing information with you.

Getting or Granting Rights

This week’s content applies equally to situations where you want to license your own works for others to use and situations where you are seeking permission to use an existing work yourself.  The basic ideas are the same regardless of what side of the agreement you are on.  In all cases it’s important to understand whether what is being discussed is an exclusive license, a nonexclusive license, or an assignment.

At a minimum a licensing  agreement (either exclusive or nonexclusive) should:

• identify the copyrighted work(s) covered by the license
• identify the copyright holder (licensor) and the licensee
• indicate whether the license is exclusive or nonexclusive
• state the rights that are granted by the license
• expressly state time limitations (if any) on the license (i.e. how long the license will last)
• expressly state geographic limitations (if any) of the license (i.e. worldwide license vs. a license limited to a particular country)
• expressly state any format limitations (if any) of the license (ex. limited to print or digital)
• describe compensation (if any) owed to the licensor (payments, royalties, etc.)
• include the licensor signature and date of signature

Depending on your area of interest, there may be other important provisions, some of which have nothing to do with copyright are outside the scope of this course.  Some of these are covered in the readings for this week.  Examples of other considerations include:

• describe any conditions under which the license can be revoked
• if the agreement grants the right to create a derivative work, who will own the copyright in the derivative
• requirements that the work carry authorship attribution

A licensing agreement doesn’t have to be written with lots of legal jargon to be valid.  It should be clear and cover the minimum facts listed above.  If you find yourself dealing with a large or well-established company it is very likely that this company will have licensing language already in place that they will propose that you use.   This saves you the trouble of having to write an agreement yourself, but it is very likely that these documents will be written in legalese and that they will be written to the company’s advantage.  Even though they can be difficult to understand, you should take the time to read the forms, and request changes where you believe they are needed.

In Moodle your readings for the week may include some examples (depending on your area of interest) of simple and complex licensing agreements in a variety of areas as well as some guidelines to creating your own agreements.