owned by the employee. Thus, it is not legal y
like the sample below.
necessary to sign an agreement to this effect.
However, an agreement stating that a par-
Sample Transfer Agreement
ticular work is not created within the scope
of employment can be a very good idea where
arguments might later develop about what the
For value received, the Yakima Daily News
hereby assigns to Scoop Jackson the exclusive
scope of employment entails. For this reason,
right to prepare derivative works based on the
Scoop had his employer sign the above docu-
series of five articles entitled “Do You Know
ment before he began work on the novel.
What You’re Eating?,” Parts 1–5, published in
An employer and employee are free to agree
the Yakima Daily News during April 20xx.
that the employee will own all or part of the
copyright in works created within the scope
Yakima Daily News, by
of employment. Such an agreement amounts
to a transfer of copyright ownership from the
Date:
employer to the employee. The employer is
Approved and Accepted:
still considered the author of the work made
for hire. To be effective, the agreement must
Scoop Jackson
be in writing and signed by both parties.
Date:
CHAPTER 7 | INITIAL COPYRIGHT OWNERSHIP | 169
Are scholarly writings works made for hire?
control over what professors write for such
Works created by professors and other
writings to constitute works made for
scholars employed by universities, colleges,
hire. Although academic institutions may
and other academic institutions pose a
“require” scholars to create scholarly works
special problem. Prior to the adoption of
or risk not being awarded tenure and other
the current Copyright Act in 1976, virtually benefits (“publish or perish”), they usual y all courts had held that the copyrights in
do not dictate what should be written or
lecture notes, articles, and books written
supervise the writing process itself. The
by professors were owned by the professors
principle of academic freedom is supposed to
themselves, not by the universities or
prevent universities from control ing the ideas
colleges that employed them. However,
expressed in scholarly writings. However, no
it’s unclear whether this special teacher
court has yet decided this question.
exception to the work-for-hire rules is in
Even if we assume that faculty members are
effect under current copyright law. It’s wise, employees, it’s not clear whether every thing therefore, not to rely on this exception.
they create fal s within the scope of employ-
So, if we assume there is no teacher
ment. Applying the factors set forth above, it
exception, are faculty works made for hire?
would seem that research publications would
They are if (1) faculty members are employees be within the scope of employment but textfor copyright ownership purposes and (2) the books would not. Faculty members are not
materials involved were created within the
paid by the university to write textbooks,
scope of employment. Unfortunately, there
while they are paid to produce research
are no court cases to guide us.
publications, such as scholarly articles and
To determine whether or not faculty
books (again, publish or perish).
members are employees, the agency law
However, as a practical matter, the
factors set forth in “Factors Considered in
question of whether faculty works are made
Determining Employee Status,” above, must
for hire may be academic (no pun intended).
be applied to decide whether the requisite
There are two reasons for this. First,
degree of control is present. Even if we apply
and probably most important, academic
these facts, there is still no clear answer. For
works usually have little or no economic
example, faculty members typical y receive
value, and colleges and universities have
employee benefits and are treated as employees no economic incentive to claim copyright
for Social Security tax benefits. These are
ownership in such works. There are few
strong factors showing employee status.
examples of universities stripping faculty
On the other hand, colleges and univer-
members of their copyright ownership.
sities typical y do not exercise sufficient
Second, most colleges and universities now
have written copyright ownership policies.
170 | THE COPYRIGHT HANDBOOK
Typical y, these policies permit faculty
Special y Ordered or
members to retain ownership of works created Commissioned Works
by their own independent effort—these
include, for example, journal articles, research We’ve seen above that in the employer-
bulletins, monographs, books, plays, poems,
employee context no work-for-hire agree ment
and works of art. However, many universities is necessary, and any type of protectable work claim sole or joint ownership of works
may be a work made for hire. In contrast,
prepared with substantial use of university
where a person or an entity asks a writer who
materials or facilities, administrative
is not an employee to prepare a protectable
materials such as faculty memos and reports,
work, that work may be a work for hire
or materials prepared as part of special y
only if (1) both parties sign a work-for-hire
sponsored projects. Some universities claim
agreement, and (2) the work is one of the
copyright ownership of computer software.
types of work set out in “Works Made for
Where a university policy permits a faculty Hire by Nonemployees,” below.
member to retain copyright ownership
Express work-for-hire contract required
of his or her work—which is usual y the
case—the question of whether the work is a
A specially commissioned work constitutes
work made for hire does not arise. But, if a
a work made for hire only if the commis-
university does claim ownership on the basis sioning party and the creative party both
of a copyright policy, it must be determined
sign a written contract providing that the
if the policy is legal y enforceable. It is
work shall be considered a work made for
enforceable if the policy is contained in an
hire before the work is created. The written
employment contract signed by the faculty
agreement is absolutely crucial.
member. However, quite often there is no
EXAMPLE: Steve hires Sara to write an
formal signed employment contract between
introduction for his book. Both Sara and
the university and faculty member. In this
Steve sign a contract stati
ng that the
event, a university might claim that copyright
introduction will be a work made for hire.
ownership is transferred to it by virtue of
When Sara completes the introduction,
institutional policies set forth in faculty
Steve will be considered its author for
handbooks or bylaws. Whether such claims
copyright purposes.
would be upheld by the courts is unclear.
The bottom line is that any faculty
Freelance contributions to magazines
member should carefully investigate his
and other col ective works
or her university’s copyright policies—
preferably before taking the job.
The term freelance writer usually connotes
a self-employed person who contributes
CHAPTER 7 | INITIAL COPYRIGHT OWNERSHIP | 171
articles to newspapers, magazines, and
But, if you insist on using a work-for-hire
similar publications. Although you may not agreement, be sure to:
naturally think of freelance articles as works
• Get a ful -blown work-made-for-hire agree-
made for hire, they are if the freelancer and
ment signed before the creative person starts
the publication that buys the work both
work on the project—don’t rely on informal
sign a work-for-hire agreement.
go-aheads or engagement letters.
• Include an assignment to you of the
EXAMPLE: The editor of The Egoist Magazine
creative person’s copyright rights in the
asks Gloria, a freelance writer, if she would
agreement—this way, if the finished work
be interested in writing an article for the
is for some reason determined not to be a
magazine on nightlife in Palm Beach. Gloria
work for hire, you’ll still own all the copy-
says yes. The editor then sends Gloria a
right rights by virtue of the assignment.
letter agreement to sign setting forth such
terms as Gloria’s compensation and the
deadline for the article and its length, and
Works Made for Hire
stating that the article shall be a work made
by Nonemployees
for hire. If Gloria signs the agreement, her
Works made for hire must be created by an
article will be a work made for hire—that is,
employee within the scope of employment,
the magazine will be the author and initial
unless they fall into one of the fol owing
owner—instead of her.
nine categories:
• a contribution to a collective work,
such as a magazine or newspaper
TIP
article or an anthology (see Chapter 6,
Copyright tip for publishers and
“Adaptations and Compilations”)
editors. Although the Copyright Act gives the
• a part of a motion picture or another
publishers of websites, magazines, periodicals,
audiovisual work, such as a screenplay
and other collective works the right to use work-
• a translation
made-for-hire agreements with freelance writers,
• supplementary works, such as
this doesn’t mean that they should exercise
forewords, afterwords, supplemental
this right. Many successful freelancers simply
pictorial illustrations, maps, charts,
refuse to sign work-for-hire agreements or will
editorial notes, bibliographies,
demand substantial extra compensation to do
appendixes, and indexes
so. General y, it’s wiser—and more supportive of
• a compilation (see Chapter 6)
the arts—simply to have the author assign the
• an instructional text
rights that the magazine real y needs, and retain
• a test
the others.
• answer material for a test, and
• an atlas.
172 | THE COPYRIGHT HANDBOOK
Special Rules for California
specially commissioned pursuant to a work-
made-for-hire agreement. Such agreements
California law provides that a person
are commonly used in the film industry.
who commissions a work made for hire
However, the Writers Guild of America
is considered to be the employer of the
(the screenwriters’ union) has entered into
creator of the work for purposes of the
collective bargaining agreements with the
workers’ compensation, unemployment
entertainment industry providing that
insurance, and unemployment disability
its members are entitled to retain certain
insurance laws. (Cal. Labor Code § 3351.5(c);
copyright rights in their made-for-hire
Cal. Unemployment Insurance Code §§ 621,
screenplays. The Writers Guild should be
686.) No one is entirely sure what impact this
consulted about this.
has on persons or entities who commission
works made for hire. Neither the California
courts nor state agencies have addressed
Copyright Tip for Writers
the question. However, it may mean that the
commissioning party has to obtain workers’
If you sign a work-for-hire agreement, you
compensation coverage for the creative party
are not considered the author of the work
and might be liable for any injuries the person
even though you created it. This means
sustains in the course of work. It might also
the commissioning party does not have to
mean that special penalties could be assessed
give you credit for your work. If you want
against a commissioning party who wil ful y
credit, be sure to include in the agreement
fails to pay the creative party any monies due
a provision requiring the commissioning
after the person is discharged or resigns.
party to give it to you. It should specify the
These potential requirements and
size, type, and placement of your credit.
liabilities are one reason why it might be
desirable for those commissioning work in
California not to enter into a work-made-
for-hire agreement, and instead have the
Supplemental works
creator assign the desired copyright rights
An author or publisher who hires an inde-
to the commissioning party in advance.
pendent contractor (that is, a non employee)
to compile an index or bibliography, put
together an appendix, take some photographs,
or create a few il ustrations, maps, or charts
Screenplays
to supplement the text would natural y
Screenplays are among the types of work
assume that it will own the copyright in the
that are considered to be made for hire if
paid-for work. By now you should know
CHAPTER 7 | INITIAL COPYRIGHT OWNERSHIP | 173
that this will be true only if both parties
Work-Made-for-Hire Agreements
sign a work-made-for-hire agreement or the
independent contractor signs an agreement
As mentioned abov
e, a work created by an
assigning rights in the work to the author or independent contractor—that is, a person
publisher. If they do neither, the contractor
who is not an employee—can be a work for
will own the copyright in the work he or she hire only if a written work-for-hire agreement creates. However, the commissioning party
is signed by both parties. The law is unclear
will probably be entitled to use the work.
as to whether the work-for-hire agreement
must be signed before the work is started or
Unsolicited manuscripts are not
can be signed afterwards. One court says it
special y commissioned works
must always be signed beforehand. ( Schiller
& Schmidt, Inc. v. Nordisco Corp. , 969 F.2d
A work is specially ordered or commissioned 410 (7th Cir. 1992).) But another court ruled only if it is created at the commissioning
that the parties need only verbal y agree
party’s request. By definition, an unsolicited before the work is begun that it will be a manuscript is not requested and thus
work for hire and a written agreement may be
cannot be considered a specially ordered or signed after the work is started or completed.
commissioned work. This fact cannot be
( Playboy Enters. v. Dumas, 53 F.3d 549 (2d
altered by contract.
Cir. 1995).) Even so, it is always advisable
EXAMPLE: Archie, a beginning freelance
to have a signed work-for-hire agreement in
writer, writes an article about a trip he took
hand before work is begun, since it might
to Pago Pago and sends it to the Cheap
be difficult or impossible to prove you had
Travel website—a well-known subscription
a verbal agreement with the author that the
site that routinely publishes freelance
work would be a work for hire.
submissions. The website accepts the
article for publication and sends Archie a
Work-for-hire letter agreement
contract saying that the work will be a work You don’t need to use a long contract for a made for hire. Although Archie’s article
work-for-hire agreement; a short letter or
comes within one of the nine categories of
memo can do the job. A letter agreement
special y ordered works (it is a contribution
has two advantages: It’s easy to draft and is
to a collective work), it is not a work made
for hire because it was not written at the
much less intimidating to a creative person
website’s request. However, if Archie signs
than a long contract. You should make two
the contract, it might be considered a
The Copyright Handbook Page 31