Guest Blog Written by: Jennifer Lefere, Of Counsel at The Law Offices of Jere M. Friedman, PLLC, where she advises businesses and individuals in protecting their intellectual property assets.
It seems pretty simple – you hire someone to deliver some work to you, the work gets done and then you pay for it. It’s a work made for hire and you own that work – right? Not necessarily. You may have physical possession of the work but whether you own the copyright to the work is a different matter.
What works are protected by copyright?
All “original works of authorship” that are “fixed in a tangible medium.” If you hire someone to create a logo for you, that is an original work of authorship and, when printed, it is fixed in a tangible medium. Just assume that all creative works are protected by copyright.
Why do you care about owning the copyright?
You must own, or have a license to, the copyright in a work to reproduce, distribute, publicly display, publicly perform, or create derivative works based on that work. Essentially, you need the rights vested by copyright for any meaningful use of the work in your business.
So, if you hire someone to create something for you, how can you own the copyright in that work?
You can own the copyright if the work is a “work made for hire” under U.S. Copyright Law, Title 17 of the United States Code. For employees, it is pretty straightforward. All works prepared by an employee within the scope of the employee’s employment are works made for hire and, therefore, owned by the employer. It is important to note that the work must be “within the scope” of the employee’s employment. If your social media director writes a novel unrelated to his or her job duties, then you, as employer, likely will not own the copyright in the novel. If the social media director creates a software program for managing communication tools, however, it becomes less clear whether you, the employer, would own that software program. It is unlikely that you hired the social media director to write software so the software program may not be a work made for hire.
If you hire a third party (not an employee) to create work, that work can be a “work made for hire” if you enter into a written agreement with the third party stating that the work is a “work made for hire” AND the work is for use as one of the following:
- as a contribution to a collective work,
- as part of a motion picture or other audiovisual work,
- as a translation,
- as a supplementary work,
- as a compilation,
- as an instructional text,
- as a test,
- as answer material for a test, or
- as an atlas.
So, can that logo you hired a third party to create be a work made for hire?
Possibly, if the logo was created as part of an overall branding strategy or the design of a website, then an argument could be made that the logo is a “contribution to a collective work.” AND, if you had a written agreement!
But what if the logo was developed on its own and does not fit within one of the nine categories above?
You can still own the copyright of the work by having a written assignment. When a work is assigned to you, however, the author of the work can terminate the assignment during a five year window that begins 35 years after the assignment, at which point the copyright will revert back to the author. Due to this termination right, you may find yourself back at the negotiation table with the original author (especially if your logo has become extremely valuable).
When hiring third parties to create works, your best approach is to:
- Enter into a written agreement that is signed by the third party;
- Identify the work as a “work made for hire” attempting to have it fit into one of the nine listed categories above; and
- Include an assignment in your written agreement as a fall-back in case the work is held not to qualify as a work made for hire.