copies of the agreement, sign both, and
transfer of his copyright in the article to the
send them to the creative party to sign. The
website.
creative party should keep one signed copy
and return the other to you.
174 | THE COPYRIGHT HANDBOOK
Authors Should Be Wary of Work-
EXAMPLE: Nastassia writes a nonfiction
for-Hire Endorsements on Checks
book and asks Bil , a librarian, to compile
an index for it. An index is a supplementary
Authors should be sure to careful y
work, one of the nine categories of special y
examine any checks they receive from
commissioned works. This means the index
magazines, newspapers, publishers,
will be a work for hire if Nastassia and Bill
or other sources for whom they have
both sign a work-for-hire agreement before
performed freelance work on other than
Bill starts work. Nastassia could have Bill
a work-for-hire basis. Some unscrupulous
sign a letter agreement worded like the one
publishers add language to their checks
shown below.
or purchase orders stating that the work
performed was a work made for hire.
Standard work-for-hire contract
Although the legal validity of such a
provision on a check is highly questionable,
Some people or companies that hire inde-
it is not prudent to sign and cash such a
pendent contractors to create works for hire
check as issued. Instead, either cross out
prefer to use longer agreements in the form
the offending language before cashing the
of a standard contract. Such agreements
check or return it to the publisher and
typically address a number of issues that
demand a new check without the work-
have nothing to do with copyright. You
made-for-hire language. The latter course
may wish to use such an agreement for a
will result in a delay in your payment, but
particularly complex or expensive project,
will help make clear to the publisher that
since it can provide you added protection.
your work is not a work made for hire.
The work-for-hire agreement form
included in this book covers the following
issues not addressed in the short letter
agreement discussed below:
• Writer’s independent contractor status.
FORM
The agreement includes a lengthy
You can download the following
provision designed to show that the
Sample Work-For-Hire Letter Agreement
writer is an independent contractor,
(and all other forms in this book) from this
not the hiring firm’s employee. (See
book’s companion page on Nolo.com; see the
Clause 6.) This can be very helpful
appendix for the link.
if the hiring firm is audited by the
IRS or a state agency and the writer’s
employment status is questioned.
CHAPTER 7 | INITIAL COPYRIGHT OWNERSHIP | 175
Sample Work-For-Hire Letter Agreement
April 1, 20xx
Bill Brown
2600 State St.
Chicago, IL 6000
Dear Bill:
This letter is to confirm that I have special y ordered or commissioned
you to prepare the fol owing work: a two-level alphabetical index for
the book entitled The History of Sex. The work will be delivered by
email in Microsoft Word format
This special y ordered or commissioned work shall be completed no
later than May 1, 20xx.
You agree that this special y ordered or commissioned work is a
work made for hire, and that I, as the person for whom the work is
prepared, shall own all right, title, and interest in and to the work,
including the entire copyright in the work.
You further agree that to the extent the work is not a work made
for hire, you will assign to me ownership of all right, title, and
interest in and to the work, including ownership of the entire
copyright in the work.
You also agree to execute all papers necessary for me to perfect my
ownership of the entire copyright in the work.
You represent and warrant that the work you create or prepare
will be original, will not infringe upon the rights of any third party,
and will not have been previously assigned, licensed, or otherwise
encumbered.
As compensation for your services, I will pay you $2,000 upon
satisfactory completion of the work.
176 | THE COPYRIGHT HANDBOOK
Sample Agreement (continued)
If this agreement meets with your approval, please sign below to
make this a binding contract between us. Please sign both copies and
return one to me. The other signed copy is for your records.
Sincerely,
Nastassia Kinsey
I agree with the above understanding.
Bill Brown
Date:
Taxpayer ID#:
CHAPTER 7 | INITIAL COPYRIGHT OWNERSHIP | 177
The key to doing this is to make
obligate you to others without your
clear that the writer, not the hiring
consent. (See Clause 13.)
firm, has the right to control how
• Exclusive agreement. Business contracts
the work will be performed. You wil
normally contain a provision stating
need to emphasize the factors the
that the written agreement is the
IRS and other agencies consider in
complete and exclusive agreement
determining whether a client controls
between those involved. This is to help
how the work is done. Of course, a mere
make it clear to a court or an arbitrator
recitation without adherence to these
that the parties intended the contract
understandings won’t fool the IRS.
to be their final agreement. A clause
Think of this clause as a reminder to you
such as this helps avoid claims that
and the writer about how to conduct
promises not contained in the written
your business relationship. For a detailed
contract were made and broken. (See
discussion of all the legal issues involved
Clause 11.)
in hiring independent contractors, see
• Choice of law. It’s a good idea for your
Working With Independent Contractors,
agreement to provide which state’s law
by Stephen Fishman (Nolo).
will govern if you have a dispute with
• Confidentiality. If, during the course of
the client. This is particularly helpful
his or her work, the writer may have
if you and the writer are in different
access to your valuable trade secrets—
states. There is some advantage to
for example, business plans, methods
having the law of your own state
and techniques not known by your
govern, since your local attorney will
competitors, or customer lists—it is
likely be more familiar wi
th that law.
reasonable for you to include a non-
(See Clause 12.)
disclosure provision in the agreement.
• Assignment and delegation. As a general
(See Clause 8.) Such a provision means
rule, either party may assign its rights
that the writer may not disclose your
and delegate its obligations under a
trade secrets to others without your
contract unless it’s expressly prohibited.
permission.
This means, for example, that the
• No partnership. It’s wise to make
writer could hire someone else to do
clear that you and the writer are
the work called for in the agreement.
separate legal entities, not partners
If you want to prevent a writer from
or coventurers. If the writer is viewed
delegating duties under a work-for-hire
as your partner, you’ll be liable for
agreement, you should include a clause
the writer’s debts and the writer will
prohibiting it without the hiring firm’s
have the power to make contracts that
consent. (See Clause 14.)
178 | THE COPYRIGHT HANDBOOK
• Arbitration. One important function
EXAMPLE: AcmeSoft, Inc., a large soft ware
of a contract is to provide a means
developer, hires Barton Finkle, a freelance
for resolving disputes. As you
translator, to translate the manual for
probably know, court litigation can
its AcmeWrite program into French. A
be very expensive. To avoid this cost,
translation is one of the nine categories
alternative forms of dispute resolution
of special y commissioned works, so the
have been developed that don’t
translation can be a work made for hire if
involve going to court. These include
both parties sign a work-for-hire agreement.
mediation and arbitration.
AcmeSoft drafts the work-for-hire contract
The work-for-hire contract contains
shown below for Barton to sign.
a provision requiring the parties to take
advantage of these alternate forms of dispute
FORM
resolution. (See Clause 15.) You’re first
required to submit the dispute to mediation.
You can download this Work-Made-
You agree on a neutral third person to serve
For-Hire-Agreement (and all other forms in
this book) from this book’s companion page
as mediator and try to help you settle your
on Nolo.com; see the appendix for the link.
dispute. The mediator has no power to
impose a decision, only to try to help you
arrive at one.
Agreements with employees
If mediation doesn’t work, you must
As discussed above, protectable works created
submit the dispute to binding arbitra tion.
by an employee within the scope of employ-
Arbitration is usually like an informal court ment automatically become works made for
trial without a jury, but involves arbitrators
hire. The employee’s consent is not required
instead of judges and is usually much
and an express work-for-hire agreement is
faster and cheaper than courts. You may be
not necessary. Indeed, the employer need
represented by a lawyer, but it’s not required. not even inform the employee that it will You should indicate in the mediation/
own the copyright in his or her creations.
arbitration clause where the mediation or
However, costly disputes can develop
arbitration would occur. You’ll usual y want concerning whether a work is created within it in the city or county where you live or
the scope of employment. For example, an
work. If you and the writer live or work a
employee who creates a work partly at home
long distance apart, you’ll have to agree on a outside working hours might claim it is not location.
a work for hire because the work was done
outside the scope of employment.
CHAPTER 7 | INITIAL COPYRIGHT OWNERSHIP | 179
For this reason, it is a very good idea to
EXAMPLE 2: Marlon, a wel -known actor, pays
have a written agreement describing the
Tom $50,000 to ghostwrite his autobiography.
employee’s job duties so it will be clear
Tom’s work could constitute a work made
whether a work is created within the scope
for hire only if Tom was Marlon’s employee
of employment. It’s also wise to include
and the work was created within the scope of
in the agreement a provision assigning
employment. Assume that Marlon does not
(transferring) to you the copyright rights in
exercise sufficient control over Tom for him to
any job-related works that for some reason
be considered Marlon’s employee. Who owns
do not constitute works made for hire.
the copyright in Tom’s work? Tom does! Tom
is entitled to sell the autobiography to others,
serialize it in magazines, sell it to movie pro-
What Happens When a Work
ducers, and so on.
Does Not Satisfy the Work-
Made-for-Hire Requirement?
Hirer has nonexclusive license to use work
What happens if someone hires another
to create a work with the belief that it will
At the very least, a person who pays an
constitute a work made for hire, but it turns author to create a protectable work has a
out that the work-for-hire requirements
nonexclusive license to use it as intended.
were not satisfied? It won’t be the end of the This seems only fair, considering that the world, but the person laying out the money hiring party paid for the work. A person
might be in for an unpleasant surprise.
with a nonexclusive license in a work may
use the work, but may not prevent others
The creator of the work owns the copyright
from using it as wel . Nonexclusive licenses
may be implied from the circumstances;
First of all, since the work is not a work for
no express agreement is required. (See the
hire, its creator (or creators) are the author
detailed discussion of nonexclusive licenses
and initial owner of all the copyright rights. in Chapter 8, “Transferring Copyright
EXAMPLE 1: Mark pays Sal y, a freelance
Ownership.”)
photographer, to take some photographs of
EXAMPLE 1: Since Mark, from Example 1
toxic waste dumps to supplement his treatise
above, paid Sal y to take the toxic waste
on toxic waste management. Sal y is not Mark’s
photos for inclusion in his book, he would
employee, and Sal y and Mark did not sign a
have a nonexclusive license to use them
work-for-hire agreement. As a result, Sal y owns
in the book. But this would not prevent
the copyright in the photos. This means that
Sal y from al owing others to use the
Sal y may sell them to others, reproduce them,
photographs in other publications.
create derivativ
e works from them, or otherwise
exercise her copyright rights in the photos.
180 | THE COPYRIGHT HANDBOOK
Work-Made-for-Hire Agreement
This Agreement is made between AcmeSoft, Inc. (Client), with a principal place of
business at 122 Harr Drive, Portland, Oregon, and Barton Finkle (Writer), with a
principal place of business at 1900 Leafy Lane, Ashland, Oregon.
1. Services to Be Performed
Writer agrees to perform the fol owing services: Translation into French of the
AcmeSoft user manual for the program AcmeWrite 1.0.
2. Deadline
Writer’s work must be completed by June 15, 20
.
3. Payment
In consideration for the services to be performed by Writer, Client agrees to pay
Writer as fol ows: $10,000.
4. Terms of Payment
Writer shall be paid $1,000 upon signing this Agreement and the rest of the sum
described above when the Writer completes services and submits an invoice.
5. Expenses
Writer shall be responsible for all expenses incurred while performing services
under this Agreement.
6. Independent Contractor Status
Writer is an independent contractor, not Client’s employee. Writer’s employees
or contract personnel are not Client’s employees. Writer and Client agree to the
fol owing rights consistent with an independent contractor relationship:
• Writer has the right to perform services for others during the term of this
Agreement.
• Writer has the sole right to control and direct the means, manner, and method
by which the services required by this Agreement will be performed.
CHAPTER 7 | INITIAL COPYRIGHT OWNERSHIP | 181
• Writer has the right to perform the services required by this Agreement at any
place, location, or time.
• Client will not withhold FICA (Social Security and Medicare taxes) from Writer’s
payments or make FICA payments on Writer’s behalf, make state or federal
unemployment compensation contributions on Writer’s behalf, or withhold
state or federal income tax from Writer’s payments.
• Writer is ineligible to participate in any employee pension, health, vacation pay,
sick pay, or other fringe benefit plan of Client.
• Client shal make no state or federal unemployment compensation payments on
behalf of Writer, and Writer will not be entitled to these benefits in connection
with work performed under this Agreement.
7. Intellectual Property Ownership
To the extent that the work performed by Writer under this Agreement (Writer’s
Work) includes any work of Authorship entitled to protection under the copyright
The Copyright Handbook Page 32