The Copyright Handbook

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The Copyright Handbook Page 30

by Stephen Fishman


  col aborate to become joint authors.

  discussion in Chapter 8, “Transferring

  Copyright Ownership.”)

  CHAPTER 7 | INITIAL COPYRIGHT OWNERSHIP | 163

  Who Owns Copyright in

  The owner of a work made for hire is

  Unpublished Letters?

  considered to be the author of the work

  whether the owner is a human being or

  Writers and historians may be especial y

  a business entity, such as a corporation

  interested in who owns the copyright in

  or partnership. As the author, the owner

  unpublished letters. Unless written by

  is entitled to register the work, exercise

  an employee as part of his or her job, the

  its copyright rights in the work (such as

  copyright in a letter usual y is owned by the

  publishing the work or adapting it to a

  person who wrote it. The recipient of the

  different medium), permit others to exercise

  letter owns only the physical letter itself—

  these rights, or sell all or part of its rights.

  that is, the paper and ink with which it was

  The actual creator of a work made for

  written. This means the recipient may not

  hire has no copyright rights in the work;

  reproduce or publish the letter without the

  the creator may not sell it, publish it,

  writer’s permission. The recipient of a letter

  prepare a derivative work from it, or even

  may, however, show it to others, deposit it

  read it in public. All the creator receives

  in a library, sell it, or even destroy it. But a

  is compensation from the hiring party,

  purchaser would acquire only the physical

  letter, not the copyright in the letter—

  whether a salary or other payment.

  that is, a purchaser could not publish or

  EXAMPLE: Real estate magnate Donald

  otherwise exploit the writer’s copyright

  Frump orders Manny, a longtime employee

  rights without permission.

  who serves as Donald’s publicist and

  ghostwriter, to write his autobiography. The

  resulting book, entitled The Art of the Steal, is

  a world wide bestseller. It is also a work made

  for hire. Donald earns $1 million in royalties

  Works Made for Hire

  and sel s the film rights for another $1 mil ion.

  Manny asks Donald for a 10% share of these

  Not all works are initially owned by the

  monies, reasoning that he is entitled to them

  person or persons who actually create them.

  since he actual y wrote the autobiography.

  If you create a protectable work on someone

  Donald refuses, but tel s Manny he’ll give him

  else’s behalf, that person (or entity) may be

  a $50 a week raise. Manny can take the raise

  considered the work’s author and thereby

  or leave it, but he is not legal y entitled to any

  initially own the copyright in the work, not

  royalties from the autobiography. As far as

  you. These types of works are called works

  the Copyright Act is concerned, Donald is the

  made for hire.

  book’s author.

  164 | THE COPYRIGHT HANDBOOK

  Obviously, it is vitally important for all

  Some History About

  writers to understand what is and what is

  Works Made for Hire

  not a work made for hire.

  Before the Copyright Act took effect in

  1978, no distinction was made between

  There Are Two Different Types

  works created by employees as part of

  of Works Made for Hire

  their job and commissioned works; both

  were automatical y considered to be works

  There are probably only two reasons why

  made for hire unless the parties expressly

  you or anybody else would go to the trouble

  agreed otherwise. No written work-for-hire

  of creating a protectable work for another

  agreement was ever necessary. When the

  person or entity: (1) You are that person’s

  1976 Copyright Act was being drafted,

  employee and creating the work is part of

  organizations representing writers and

  your job, or (2) a person or an entity that

  other creative people strongly urged

  is not your employer—a magazine, for

  that works made for hire be limited

  instance—asks you to create the work for

  to those created by actual employees,

  payment or some other remuneration (the

  and that commissioned works created

  Copyright Act calls this specially requesting

  by nonemployees not be considered

  or commissioning a work).

  works for hire. This way, the author of a

  As a result, there are two different types

  commissioned work would be the initial

  of works made for hire:

  owner of all the rights in the work and

  • works prepared by employees within

  would give to the commissioning party only

  the scope of their employment, and

  those rights he or she expressly agreed to

  • certain works prepared by non-

  give up in a transfer agreement. Publishers,

  employees that are specially ordered or

  film producers, and others strongly

  commissioned where the parties both

  opposed this. A compromise was reached

  agree in writing that the work shall be

  that was a partial victory for writers. Under

  considered a work made for hire.

  the Copyright Act, commissioned works

  would be works made for hire only if their

  Let’s examine each type of work made

  creators agreed in writing; and work-for-

  for hire.

  hire status was restricted to nine categories

  of commissioned works listed below in

  Works Created by Employees

  “Works Made for Hire by Nonemployees.”

  as Part of Their Job

  Works prepared by employees continued to

  be works for hire just as they were before.

  A natural consequence of the employer-

  employee relationship is that the employer

  owns whatever it pays an employee to

  CHAPTER 7 | INITIAL COPYRIGHT OWNERSHIP | 165

  create. It’s assumed that an employee agrees

  • just who is an employee, and

  to this when taking a job. For example,

  • exactly when a work is written within

  Ford Motor Co. doesn’t have to tell persons

  the scope of employment.

  it hires to work on its assembly lines that

  they won’t own the cars they make or

  Who is an employee?

  have them sign contracts to this effect.

  The U.S. Supreme Court has held that a

  Similarly, an employer doesn’t have to tell

  person is an employee for copyright purposes

  an employee that it will own copyrightable

  if the person on whose behalf the work is

  works created on the employer’s behalf—the done has the right to control the manner and employee is supposed to know this without means by which the work is created. It makes

  being told. For this reason, no written<
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  no difference what the parties call themselves

  work-for-hire contract is required in the

  or how they characterize their relationship.

  employer-employee context.

  If the person on whose behalf the work

  EXAMPLE: “Scoop” Jackson is hired to be

  is done has the requisite right of control,

  a salaried reporter for the Yakima Daily

  the person hired is an employee and any

  News, which is owned by a privately held

  protectable work created within the scope

  corporation. He is required to write stories

  of employment is a work made for hire. It

  for the regular online and hardcopy editions also makes no difference whether the control of the newspaper as well as post material

  is actual y exercised, so long as the right to

  on the newspaper’s blog and Twitter feed.

  exercise it is present. ( CCNV v. Reid, 109

  This content will be considered works made S.Ct. 2166 (1989).)

  for hire, and the Daily News will own the

  If a legal dispute results as to whether

  copyright to it. The Daily News does not

  the creator of a protectable work was an

  have to tell Scoop this and need not draw

  employee, the courts are supposed to

  up a work-for-hire agreement for him to sign. examine a variety of factors to determine

  The example above is obvious, but the

  whether the requisite degree of control was

  work-made-for-hire rule is not limited to

  present in the relationship. Many of these

  works written by in-house editorial staffs.

  criteria are quite broad, and there are no

  The rule extends to anything written by any concrete guidelines as to how they should

  employee within the scope of employment,

  be applied. As a practical matter, this means

  including reports, memoranda, letters, and

  that judges have great discretion in deciding

  in-house newsletters.

  who is and who isn’t an employee for

  One problem in applying the work-made- copyright purposes.

  for-hire rule in the employer-employee

  Two factors are of prime importance:

  context is determining:

  • whether the hiring firm pays the

  worker’s Social Security taxes, and

  166 | THE COPYRIGHT HANDBOOK

  • whether the hiring firm provides

  is involved, there is always a risk it will not

  employee benefits.

  be deemed an employment relationship

  The court held that a part-time computer for copyright purposes. This could happen

  programmer employed by a swimming pool even though you treat such a worker as an

  retailer was not the company’s employee for employee for tax purposes.

  copyright purposes and the programmer

  was therefore entitled to ownership of a

  Factors Considered in

  program he wrote for the company. The

  Determining Employee Status

  court stated that the company’s failure

  to provide the programmer with health,

  Here is a list of some of the factors judges

  unemployment, or life insurance benefits,

  are supposed to consider in determining

  or to withhold Social Security, federal,

  if a person is an employee for copyright

  or state taxes from his pay, was a “virtual

  purposes. This is not an exclusive list, and

  admission” that the programmer was an

  no single factor is determinative:

  independent contractor. The court stressed

  • the skill required to do the work

  that the company could not treat the

  • the source of tools and materials

  programmer as an independent contractor

  used to create the work

  for tax purposes and then turn around and

  • the duration of the relationship

  claim he was an employee for copyright

  • whether the person who pays for

  ownership purposes—he had to be treated

  the work has the right to assign

  additional projects to the creative

  the same way for both purposes. (Aymes v.

  party

  Bonelli, 980 F.2d. 857 (2d Cir. 1992).)

  • who determines when and how long

  The moral is this: If you don’t pay a

  the creative party works

  worker’s Social Security taxes or provide

  • the method of payment

  him or her with benefits, you should assume

  • who decides what assistants will be

  the worker is an independent contractor for

  hired, and who pays them

  copyright ownership purposes.

  • whether the work is in the ordinary

  Given the track record in the courts,

  line of business of the person who

  you can probably safely assume that a

  pays for the work

  formal salaried employee for whom you pay

  • whether the creative party is in

  Social Security taxes and employee benefits

  business for him- or herself

  would be considered an employee for

  • whether the creative party receives

  copyright purposes. However, the rules are

  employee benefits from the person

  ambiguous and given to highly subjective

  who pays for the work, and

  interpretation. When anything short of a

  • the tax treatment of the creative party.

  formal, salaried employment relationship

  CHAPTER 7 | INITIAL COPYRIGHT OWNERSHIP | 167

  TIP

  Letter to the Y akima Daily News

  A person who pays someone else

  to create a protectable work should not rely

  March 1, 20xx

  on the work-made-for-hire rule outside the

  Bill Hearst, Publisher

  context of a formal salaried arrangement.

  Yakima Daily News

  Instead, the person should have the creator

  1000 Main St.

  transfer to him or her the needed rights. A

  Yakima, WA 90002

  written agreement must be signed by both

  parties to accomplish this.

  Dear Bill:

  This letter is to confirm the understanding

  we’ve reached regarding ownership of my

  When a work is created within

  novel, tentatively titled You Are What You Eat.

  the scope of employment

  You acknowledge that my novel will be

  Not everything an employee writes belongs

  written on my own time and shall not be

  to the employer. An employee’s writings and

  written within the scope of my employment

  with the Yakima Daily News.

  other copyrightable works are works made

  for hire only if they are created within the

  It is expressly agreed that I shall be the owner of

  scope of employment. An employee’s work

  all rights in the novel, including the copyright.

  is created within the scope of employment

  Furthermore, the Yakima Daily News will sign

  all papers necessary for me to perfect my

  only if it:

  ownership of the entire copyright in the work.

  • is the kind of work the employee is

  paid to perform

  If this agreement meets with your approval,

&n
bsp; • occurs substantially within work hours

  please sign below to make this a binding

  at the work place, and

  contract between us. Please sign both copies

  and return one to me. The other signed copy

  • is performed, at least in part, to serve

  is for your records.

  the employer. ( Mil er v. CP Chemicals,

  Inc., 808 F.Supp. 1238 (D. S.C. 1992)

  Sincerely,

  (quoting Restatement of Agency).)

  Scoop Jackson

  Scoop Jackson

  Unless an employer and employee agree

  otherwise, anything an employee writes

  I agree with the above understanding and

  outside the scope of employment is not a

  represent that I have authority to make this

  work made for hire. This is so even if the

  agreement and to sign this letter on behalf of

  work arises out of the employee’s activities

  the Yakima Daily News.

  on the employer’s behalf.

  Bill Hearst

  Date: March 2, 20xx

  168 | THE COPYRIGHT HANDBOOK

  EXAMPLE: Recal our intrepid reporter Scoop

  The agreement can be entered into

  Jackson in the example above. Assume that

  either before or after the employee creates

  Scoop writes a series of articles for the Yakima the work. See Chapter 8, “Transferring Daily News exposing unsafe practices in

  Copyright Ownership,” for a detailed

  the meat packing industry. Of course, these

  discussion of transfer agreements.

  articles are works for hire the copyright to

  which is owned by Scoop’s newspaper. Scoop

  EXAMPLE: Assume that Scoop Jackson in the

  also writes a novel on his own time about

  example above wants to write a nonfiction

  a reporter who exposes the meatpacking

  book based on his articles about the meat-

  industry. Although the novel is based on

  packing industry. Of course, these articles were

  Scoop’s experiences as an employee-reporter,

  works made for hire and Scoop’s employer, the

  it is not a work for hire because it was not

  Yakima Daily News, is considered their author

  created within the scope of his employment—

  for copyright purposes. For this reason, only

  that is, his job duties as a reporter did not

  the Daily News has the right to create deriva-

  include writing fiction.

  tive works based upon them. Scoop gets the

  Daily News to agree to let him create a book

  Works created by an employee outside

  from the articles. Scoop and the News must

  the scope of employment are automatical y

  both sign a transfer agreement. It might look

 

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