When a Work Is Not Your Own

It may come as a bit of surprise to learn that none of the words that I write on this blog belong to me. Yet, it is absolutely true.
image: Gonzalo Barrientos
The natural inclination is to assume that whatever we create belongs to us. After all, doesn't the Constitution grant to Congress the power to "promote the Progress of .... useful Arts, by securing for limited Times to Authors ... the exclusive Right to their respective Writings ...."? And, hasn't Congress exercised that power since at least 1790 to help authors retain those rights? However, as with most things in the law, there are some notable exceptions.

The exception that renders these writings the property of our firm comes in the form of the "work-made-for-hire" doctrine. This doctrine, first codified in the 1909 Copyright Act and defined in the current Copyright Act, states that the author of a work made by an employee within the scope of his or her employment, is the employer. The employer is the automatic owner of the work, and all of the exclusive rights that come with the work, and can register the work, assign its rights and take any other action that it wishes to with respect to the work.

At first blush, this may seem unfair. In reality, it makes perfect - and economic - sense. Under the current Copyright Act, which was enacted in 1976 and took effect on January 1, 1978, all original works of authorship are vested with copyright from the moment they are fixed in a tangible medium of expression - so, the book when it is written (or typed) down, the painting when it is painted, the photograph when it is affixed to the negative. If employees who create those works for their employer still have all of the rights in them, the employer would have to seek an assignment from the employee for everything that they create from the moment that the works are created and before the employer could legally use or exploit the work. This would be extremely inefficient, not to mention a possible sore point if there are negotiations to be had over the value of the work.

Also, the vast majority of the time, the employee will have no personal use for the work that they create since the employee is making it for their employer. When I write a brief, it's of little use to me personally, but it is of every use to my employer. The elegant work-made-for-hire solution allows the employer to have automatic ownership of that which they have hired the employee to produce and the employee has no extra work to deal with assigning over to their employer the copyrights in a work that they probably have no personal use in anyway .

To be sure, there will always be cases where there is a conflict. What if the employee makes something in their personal time that is beneficial to their employer? Is it still a work-made-for-hire or is it outside the scope? There have also been questions involving independent contractors and whether they are considered employees such that what they create would automatically belong to the person who hired them. The Supreme Court's influential decision in Community for Creative Non-Violence v. Reid, gives a great deal of guidance on when an independent contractor can be considered an employee for purposes of the work-made-for-hire doctrine and has been extremely helpful in the almost 20 years since it was issued, in answering this question.

The biggest area where confusion about the work-made-for-hire doctrine arises is with respect to independent contractors and work that they provide. There is a misconception that just by paying the vendor for whatever they have created that should mean that the payment covers all of the rights as well. The Copyright Act requires a little more than that for their to be a transfer of ownership of the rights in the work - even if the physical thing has already changed hands or the services have been rendered. The Act requires that all assignments of rights be in writing and this does not include a mere bill of sale showing the purchase of an item or service. The actual language to be used depends upon the circumstances involved and your IP counsel should be able to advise you as to what language is appropriate.

With respect to this blog, it is pretty clear that it is a work-made-for-hire and the author for purposes of copyright is my firm. Hence, this notice:

All text © 2008, Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.