Avoiding copyright litigation is becoming more challenging for attorneys representing artist, publishers and authors. Attorneys specializing in copyright litigation matters need to be proactive in managing their clients portfolios, registering copyrights and identifying problems before they occur. A lot of creative artists and employers do not understand how copyright law affects the ownership of art. LinkedIn recently had a great thread on the question of who owns an artistic work when an employee creates a work at the office. The post posed the following question:
I am a designer, but was asking for a colleague of mine. She recently received a letter from a former employee's (sic) lawyer telling her that if her work did not include the firm's name or was taken down immediately that she would be charged for damages. I was curious about what legal rights she had to the work she completed while under their employment.
Many of the answers to this question stated that there is a general presumption that a work made during employment is considered a “work made for hire” and, therefore, copyright rests with the employer. Other posts stated that artistic works are only works made for hire if the employment contract contains a clause that states that all works are made for hire. As you can see, the work made for hire doctrine can be confusing depending on the factual situation, and simplistic answers do nothing to clarify the law surrounding works made for hire.
Certainly, employment contracts can specify that all works made by the employee are “made for hire.” But what if the employment contract is silent on this issue? And what if the employee is really an independent contractor? §101 of the Copyright Act states that a “work made for hire” is:
(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 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 with the purpose of use in systematic instructional activities.
Confused yet? Starting with §1, the first question to answer is whether the artist is an employee or an independent contractor. In determining whether an artist is an employee for purposes of the Copyright Act, courts look at the skill required to create work, the owner of the tools and instrumentalities used to create the work, the location of the work, the duration of the relationship between the two parties, whether the assigning party has the authority to assign other projects to the artist, the extent of the hired artist’s discretion over the project, the method of payment, the artist’s role in hiring and paying assistants, whether the work is a part of the normal business of the employer, whether the artist gets employment benefits, and the tax treatment of the artist (e.g. whether the employer pays social security taxes, etc.).
Once it is determined that the work was created by an employee under the Copyright Act, the next question is whether it was created “within the scope of employment.” In determining this factor, courts look at the classic common law gency factors: whether the work was of the type the employee was hired to perform, whether the creation of the work occurred substantially within the authorized time and space limits of the job, and whether the work was actuated, at least in part, by a purpose to serve the interests of the employer.
If an employee within the scope of his or her employment made the work then the employer holds the copyright. If not, and the work was made by an independent contractor, then the copyright is held by the artist. There is, however, an exception to this rule. If the work was made by an independent contractor then the employer holds the copyright and it is considered a work made for hire if it was specially ordered or commissioned for use as a contribution to a collective work, a part of a motion picture or another audio-visual work, a translation, a supplementary work, a compilation, an instructional text, a test, answer material for a test, or an atlas, and if the parties expressly agreed in a writing signed by both parties that the work was made for hire.
Additionally, copyright in a work made for hire last for a term of 95 years since the first publication, or a term of 120 years from the year of its creation, which ever expires first. This duration also applies to anonymous or pseudonymous works.
As you can see, this can be difficult territory to navigate if you are not familiar with copyright law. If you are an artist or an employer that is facing a conflict over ownership of a copyright, or if you would like to fully define the ownership of a copyright in your employment agreement, please contact a copyright attorney with experience in this area.