Recently, several different potential copyright clients inquiring whether they had a case for intentional copyright violation of their work have approached me. They all had similar stories. They worked as volunteers, interns or independent contractors for various companies. While working with those companies, they each created an original work in a tangible medium. They were not paid for their work, but rather were promised some sort of credit for their work, either in the form of college credits, or promotion of their name with the work. In each case, the other party did not deliver the promised consideration. As such, the potential client’s believed they had a copyright on the work they created, and further believed they could sue for copyright violation.
Their basic premise of someone using their creative work for that person’s benefit was sound. However, what each of these artists did not take into account was whether they created the pieces as work for hire. My analysis of each of their cases rested squarely on the legal principle of work for hire. It seems unfair, that one can put their creative talents to work for another, where that artist is not compensated in anyway for their efforts, yet the copyright would rest with the intended beneficiary of the work, and not with the artist who was uncompensated. Yet, the intended beneficiary of the work does in fact hold a strong claim on the exclusive rights to that work.
To determine who truly owns the rights to a work, a full analysis is generally required. As a general rule, under section 201(a) of the United States Copyright Act, copyright ownership “vests initially with the author or authors of the work.” 17 U.S.C. § 201(a). For example, if Victoria draws a picture of a park, she is the owner of the copyright.
However, in some situations, the creator of the work does not hold the copyright. The reason for this is the work is a “work made for hire.” A “work made for hire” is defined as: (1) “a work prepared by an employee within the scope of his or her employment;” or (2) nine specified types of work specially ordered or commissioned, “if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” The “work for hire” doctrine has been long recognized by the United States Supreme Court in Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903). Section 201(b) of the Copyright Act provides that in the case of a work made for hire, “the employer or other person for whom the work was prepared is considered the author … and … owns all of the rights comprised in the copyright.” 17 U.S.C. § 201(b). For example, Victoria is an employee of Animal 57 Web Productions. She draws a picture of a park that Animal 57 will use in its brochure. Animal 57, would then own the exclusive rights to that picture.
The central question, under the copyright law, to be asked to determine if the work is considered a “work for hire”, is who is an employee? In a United States Supreme Court case, an advocacy group, contracted with an artist to create a sculpture to be displayed for a Christmas Pageant. The advocacy group paid the artist pursuant to the contract, and “determined a number of key aspects of the design of the sculpture”.
The Supreme Court held that the artist owned the sculpture since he was not an employee of advocacy group. Moreover, the sculpture was not one of the nine specifically enumerated categories of commissioned works where the commissioning party owns the work. Community. for Creative Non-Violence v. Reid, 490 U.S. 730 (1989).
The Court held the test for whether the creator is an employee is the same as the test for “the common law of agency.” Cmty. for Creative Non-Violence v. Reid, 490 U.S. at 740–41.
The factors which should be considered are: (1) who supplies the materials, (2) the location of the work, (3) the duration of the relationship, (4) whether the hiring party can assign additional projects to the hired party, (5) the hired party’s role in hiring and paying assistants.
The aforementioned case increases in significance as the digital age progresses. As so many companies now hire independent contractors, rather than employees. The key element to look for is, whether the contractors and employees sign agreements stating that all work created while retained by employer, if it is not work made for hire, will be assigned to the employer.