laws, the parties agree to the fol owing provisions:
• Writer’s Work has been special y ordered and commissioned by Client as a
contribution to a collective work, a supplementary work, or other category
of work eligible to be treated as a work made for hire under the United States
Copyright Act.
• Writer’s Work shall be deemed a commissioned work and a work made for hire
to the greatest extent permitted by law.
• Client shall be the sole author of Writer’s Work and any work embodying the
Writer’s Work according to the United States Copyright Act.
• To the extent that Writer’s Work is not properly characterized as a work made
for hire, Writer grants to Client all right, title, and interest in Writer’s Work,
including al copyright rights, in perpetuity and throughout the world.
• Writer shall help prepare any papers Client considers necessary to secure any
copyrights, patents, trademarks, or intellectual property rights at no charge
to Client. However, Client shall reimburse Writer for reasonable out-of-pocket
expenses incurred.
182 | THE COPYRIGHT HANDBOOK
8. Confidentiality
Writer will not disclose or use, either during or after the term of this Agreement,
any proprietary or confidential information of Client without Client’s prior written
permission except to the extent necessary to perform services on Client’s behalf.
Proprietary or confidential information includes:
• the written, printed, graphic, or electronical y recorded materials furnished by
Client for Writer to use
• business plans, customer lists, operating procedures, trade secrets, design
formulas, know-how and processes, computer programs and inventories,
discoveries, and improvements of any kind, and
• information belonging to customers and suppliers of Client about whom Writer
gained knowledge as a result of Writer’s services to Client.
Writer shall not be restricted in using any material that is publicly available, already
in Writer’s possession or known to Writer without restriction, or which is rightful y
obtained by Writer from sources other than Client.
Upon termination of Writer’s services to Client, or at Client’s request, Writer shall
deliver to Client al materials in Writer’s possession relating to Client’s business.
9. Terminating the Agreement
With reasonable cause, either Client or Writer may terminate this Agreement,
effective immediately upon giving written notice.
10. Writer’s Representations and Warranties
Writer represents and warrants that:
• Writer is free to enter into this agreement.
• Writer will not violate the right of privacy or publicity or infringe upon any
copyright or other proprietary right of any other person or entity.
11. Exclusive Agreement
This is the entire Agreement between Writer and Client.
CHAPTER 7 | INITIAL COPYRIGHT OWNERSHIP | 183
12. Applicable Law
This Agreement will be governed by the laws of the state of Oregon.
13. No Partnership
This Agreement does not create a partnership relationship. Writer does not have
authority to enter into contracts on Client’s behalf.
14. Assignment
Writer may not assign or subcontract any rights or obligations under this
Agreement without Client’s prior written approval.
15. Dispute Resolution
If a dispute arises under this Agreement, the parties agree to first try to resolve the
dispute with the help of a mutual y agreed-upon mediator in the fol owing location:
Portland, Oregon. Any costs and fees other than attorneys’ fees associated with the
mediation shall be shared equal y by the parties.
If it proves impossible to arrive at a mutual y satisfactory solution through
mediation, the parties agree to submit the dispute to binding arbitration in the
fol owing location: Portland, Oregon, under the rules of the American Arbitration
Association. Judgment upon the award rendered by the arbitrator may be entered
in any court with jurisdiction to do so.
Client:
AcmeSoft, Inc.
By: Minnie Marx
Vice-President
Date: April 1, 20
Writer:
Barton Finkle
Taxpayer ID Number: 123-45-6789
Date: April 1, 20
184 | THE COPYRIGHT HANDBOOK
EXAMPLE 2: Likewise, since Marlon paid
both parties being considered authors and
Tom to write his autobiography, Marlon
initial copyright owners.
would have the right to publish it. But, again,
EXAMPLE: Assume that Marlon in the
this would only be a nonexclusive license.
examples above worked with Tom in writing
Tom could sell the autobiography to others.
the autobiography, contributing not only
ideas, but also writing portions of the book.
Transfer of rights under a work-
Is Tom still the sole owner of the copyright
made-for-hire contract
in the autobiography? Probably not. The
What happens if the creator of a protectable
autobiography would probably constitute
work signed a work-for-hire contract, but
a joint work and would be jointly owned by
the requirements for work-made-for-hire
Tom and Marlon.
status were not satisfied? This could occur
where a work-for-hire contract was signed
Possible Court Help for
by a nonemployee, but the work created did
a Failed Contract
not fall within one of the nine categories
of specially commissioned works. In this
It is possible that a court would interpret the
event, a court might interpret the contract as
work-made-for-hire contract as a transfer by
a transfer by the creator of his rights in the
Tom to Marlon of all his copyright rights in
work to the hiring party.
his work. Tom would still be the initial owner
and author, but Marlon would stil end up
EXAMPLE: Assume that Marlon in the sec-
owning all the copyright rights in the work—
ond example above had Tom sign a contract
that is, he would have the exclusive right to
stating that the autobiography would be
publish it, create derivative works based upon
a work made for hire. Unfortunately for
it, and so on. But it’s also possible that a judge
Marlon, the authorship of entire autobiogra-
would rule the contract unenforceable and
phies does not come within one of the nine
simply award Marlon a nonexclusive license.
categories of specially commissioned works.
This means that regardless of what Marlon’s
contract said, the work is not a work made
for hire and Tom is the author and initial
owner of the copyright.
Assignment of Rights as Alternative to
Reliance on Work-Made-for-Hire Rule
Joint work created
Hopefully, it is clear by now that relying on
If the hiring party and creative party
the work-made-for-hire rule can be a risky
worked together on
the writing project, the proposition for the hiring party. Unless the work might constitute a joint work, with
hiring party is dealing with a conventional
CHAPTER 7 | INITIAL COPYRIGHT OWNERSHIP | 185
employee or commissioning one of the nine
You can also modify the work-for-hire
specially commissioned works discussed
agreements by deleting the work-made-
in “Specially Ordered or Commissioned
for-hire language and instead including a
Works,” above, under an express work-for-
provision like the following:
hire contract, it’s impossible to be absolutely
sure who will end up owning the copyright
You hereby assign to me ownership of al
in paid-for the work.
right, title, and interest in and to the Work,
The solution to this problem is to have
including ownership of the entire copyright in
the creator of the work transfer all or part
the Work. You also agree to execute all papers
of his or her rights—whatever they are—to
necessary for me to perfect my ownership of
the hiring party. As discussed above, this
the entire copyright in the work.
may mean that the creator will still be
considered the author and initial owner, but
the result will be that the hiring party will
EXAMPLE: Mark has hired Sal y to take
end up owning the copyright.
several photographs of toxic waste dumps
for his book. He has her sign the fol owing
EXAMPLE 1: Assume that Marlon, in the
assignment letter agreement.
examples above, had Tom sign an agreement
assigning to him all his rights in the
Sample Assignment
autobiography. Marlon would become the
Letter Agreement
owner of the copyright in the autobiography
by virtue of the assignment agreement.
April 1, 20xx
EXAMPLE 2: Similarly, had Mark, in the
Sally James
examples above, had his photographer
200 Beacon Hill
Sal y assign all her rights in the toxic waste
Boston, MA 10000
photos to him, Mark would have owned the
copyright in the photos.
Dear Sal y:
This letter is to confirm that you agree to
An assignment must be put into effect
prepare the fol owing Work: 25 black-and-
through a written transfer agreement signed
white photographs of the toxic waste dumps
by both parties. The agreement may be
on the attached list.
signed before or after the work is created. See
Chapter 8, “Transferring Copyright Owner-
ship,” for discussion of a simple bare-bones
assignment agreement and a sample form.
186 | THE COPYRIGHT HANDBOOK
(continued)
Assignments Can Be
Terminated After 35 Years
The Work shall be completed no later than
May 1, 20xx.
One possible disadvantage of using an
You hereby assign to me ownership of all right,
assign ment of rights as opposed to a
title, and interest in and to the Work, including
work-made-for-hire agreement is that
ownership of the entire copyright in the Work.
an assignment can be terminated by the
You also agree to execute all papers necessary
author or his or her heirs 35 to 40 years
for me to perfect my ownership of the entire
after it is made. (See Chapter 9, “Copyright
copyright in the work.
Duration,” for a detailed discussion.)
However, in most cases, this disadvantage is
You represent and warrant that the work
meaningless because very few works have a
you create or prepare will be original, will not
useful economic life of 35 years.
infringe upon the rights of any third party,
In addition, a work obtained by an assign-
and will not have been previously assigned,
ment from an individual will have a different
licensed, or otherwise encumbered.
copyright term than a work made for hire.
As compensation for your services, I will pay
Works made for hire are protected for 95
you $2,000 upon satisfactory completion of
years from the date of publication or 120
the work.
years from the date of creation, whichever
If this agreement meets with your approval,
comes first. Works by individuals are pro-
please sign below to make this a binding
tected for the life of the person plus 70 years.
contract between us. Please sign both copies
(See Chapter 9, “Copyright Duration,” for a
and return one to me. The other signed copy
detailed discussion on how long copyright
is for your records.
protection lasts.) Few works have a useful
Sincerely,
economic life of 70 years, let alone 95 years,
Mark Anthony
so this difference is usual y meaningless.
Mark Anthony
I agree with the above understanding.
Jointly Authored Works
Sally James
Things can get even more complicated when
Date: April 2, 20xx
two or more individuals create a work that
is not a work made for hire. Such a work
Taxpayer ID#: 123-45-6789
is normally jointly owned by its creators—
that is, each contributing author shares in
the ownership of the entire work. A joint
CHAPTER 7 | INITIAL COPYRIGHT OWNERSHIP | 187
author’s life is not quite as simple as that of It is not necessary that the authors work an individual copyright owner. There may
together or work at the same time. Indeed,
be restrictions on what each joint author
it is not even necessary that they know
can do with his or her ownership share, and each other when they create their respective joint authors must account to each other for contributions.
any profits they receive from commercial
EXAMPLE: Paul writes a children’s story
exploitation of the joint work.
with the intention that it be combined with
a number of il ustrations to be created by
When Is a Work Jointly Authored?
Jean. Unfortunately, Jean dies before she can
create the il ustrations. Five years later, Paul
A work is jointly authored automatical y
meets Mary, a successful artist. Mary reads
upon its creation if (1) two or more authors
Paul’s story and tel s him that she would like
contributed material to the work, and (2)
to create the il ustrations for it. Paul agrees.
each of the authors prepared a contribution
Mary creates the il ustrations. Mary and Paul
with the intention that it would be combined
combine Paul’s story and Mary’s il ustrations
with the contributions of the other authors as
into a single integrated work—a children’s
part of a single unitary work. We’ll refer to
book. The book is a joint work, co-owned
such works as joint works.
by Mary a
nd Paul. This is so even though
EXAMPLE: Peter and Christianne agree
Paul had never met Mary when he wrote his
to write a biography of Saddam Hussein
story and the story was written years before
together. Peter writes the chapters
Mary drew her il ustrations. All that matters
covering the first half of Saddam’s life,
is that when Paul and Mary created their
and Christianne writes the remainder.
respective contributions they intended that
They combine their work to form a single
they be combined with other work to form
biography of Saddam’s entire life. The
an integrated whole.
biography is a joint work by Peter and
Christianne.
How much material must a person
contribute to be a joint author?
Authors’ intent is control ing factor
The respective contributions made to a
The key to determining whether a work is a joint work by its authors need not be equal
joint work is the authors’ intent at the time
in terms of quantity or quality. But, to be
the work is created. If the authors intended
considered a joint author, a person must
that their writing be absorbed or combined contribute more than a minimal amount of
with other contributions into an integrated work to the finished product. For example,
unit, the work that results is a joint work.
a person who proofreads and makes spelling
188 | THE COPYRIGHT HANDBOOK
corrections to a book written by another is
Joint authors need not be human beings
not a joint author of that book.
A joint author doesn’t have to be a human
May a joint author only contribute ideas?
being. A corporation, a partnership, or
another business entity can also be a joint
Most courts require that a person’s contri-
author.
bution consist of protectable expression—
that is, actual written work—for the person
EXAMPLE: Sunnydale Farms, Incorporated,
to be considered a joint author. One who
a large corporation that manufactures
contributes ideas or other unprotectable
and sel s gardening implements and seeds,
agrees to coauthor a book on urban gardens
items is not entitled to an ownership interest
with Ralph, a famous expert on roses. Ralph
in the work’s copyright unless the parties
writes the chapters on growing flowers, while
expressly agree to it, preferably in writing.
The Copyright Handbook Page 33