#16471 - Copyright Ownership And Duration - Intellectual Property (IP) Law

04. Copyright - Ownership and Duration

MML 587-607, 612-20; 17 U.S.C. §§ 101 (“joint work,” “work made for hire”), 201, 302-305

• Copyrights have limited duration

A. Initial Ownership of Copyrights

• § 201(a): “Copyright in a work protected under this title vests initially in the author or authors of the work...” Authors get the copyright but who are the authors?

  • Individual who writes, composes, or paints an original work of authorship on her/his own acquires the copyright upon the work’s creation

• Often easy to tell, except for special categories of works

  1. Works made for hire

  2. Joint works

  3. Collective works

(1) Works Made for Hire

1909 Act Regime

• § 26. “the word ‘author’ shall include ‘an employer in the case of works made for hire.’

  • ‘Work made for hire’ was not defined

  • Court presumed that any works created within the scope of employment/ commissioned by independent contractors vested in the employer

  • Work made during employment/ hired to do something copyright vests automatically in the employer

  • Employee: presumption that works prepared by employees within the scope of employment were works made for hire

  • Independent Contractor: presumption that commissioned works were made for hire

    • instance and expense” test

• Presumption arise when mutual intent of parties is that the title to the copyright shall be in the person whose instance and expense the work is done

• Rebutting Presumption:

  1. express agreement to contrary

  2. evidence establishing contrary intent of the parties, including:

     • industry custom

     • lack of supervision/ creative control by employer

       • the hiring party lacked the right to direct and supervise the manner in which the work was created

     • course of dealing

     • work not created at the instance and request of the hiring party

• Works created prior to Jan 1, 1978 remain subject to this test

1976 Act Regime

• § 201. Ownership of Copyright

  • (b) Works Made for Hire. In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.

• § 101. A “work made for hire” is

• (1) a work prepared by an employee within the scope of his or her employment; or

• (2) a work falling within one of 9 enumerated categories of specifically ordered/ commissioned works + evidenced by a written agreement, signed by both parties expressly stating that the work is intended to be a ‘work made for hire’:

  1. a contribution to a collective work

  2. a part of a motion picture or other audiovisual works

  3. a translation

  4. a supplementary work

  5. a compilation

  6. a instructional text

  7. a test

  8. answer material for a test

  9. an atlas (graphics)

• Test to decide whether someone is an employee

• Statutory Interpretation:

  • “Where Congress uses terms that have accumulated settled meaning
    under . . . the common law, a court must infer, unless the statute
    dictates, that Congress means to incorporate the established meaning
    of these terms.” Common Law Agency Test

Main concerns

1. How close to conventional employment is the arrangement - salary & benefits

2. Who owns the means of production – tools

3. Who controls the action?

Exercise of creative judgment is not as important as originality cases

• Rejected other possible Tests used by different Circuits – on

  1. Right to Control most used

  2. Actual Control most used

  3. Common Law Agency

  4. Formal, Salaried Employee

  • Court mostly relied on the first two tests, but copyright is not something physical

• Community for Creative Non-Violence v. Reid (Supreme Court 1989)

  • Facts: CCNV entered into oral agreement with a sculptor, Reid, to produce a sculpture of homeless in America to raise funds for the homeless. Upon completion, Reid claims copyright of the statute CCNV argue it owns the copyright by virtual of ‘work made for hire’ DC held for CCNV CA reversed Supreme affirmed CA

  • Held for Reid: R is not an employee of CCNV but an independent contractor

    • General rule: Artist is the author(s) of the work s.201(a) 17 USC

    • Author = person who translates an idea into a fixed, tangible expression entitled to copyright protection s.102

    • Exception: works made for hire under s.101

      • (1) work prepared by an employee within the scope of his/her employment; or

      • (2) 1 of the 9 categories of specifically ordered/ commissioned works

        • Not applicable here

  • Issue: Whether the sculpture in issue is a work prepared by an employee within the scope of his/her employment?

    • 4 interpretations: court: employee = common law agency meaning

    1. Work is prepared by an employee whenever the hiring party retains the right to control the product

       • Court: would distort meaning of ensuing subsection 101(2)

    2. Work is prepared by an employee when the hiring party has actually wielded control with respect to the creation of a particular work

    3. The term employee carries its common-law agency law meaning

       • Court agreed with CA: employee should be understood in light of the general common law of agency

    4. Employee only refers to formal, salaried employees

  • Whether a hired party is an employee under the general common law of agency

    • List of relevant, nonexclusive, non-determinative factors:

      1. Skill required

      2. Source of instrumentalities and tools

      3. Location of the work

      4. Duration of the relationship between the parties

      5. Whether the hiring party has the right to assign additional projects to the hired party

      6. Extent of the hired party’s discretion over when and ow long to work

      7. Method of payment

      8. Hired party’s role in hiring and paying assistants

      9. Whether the work is part of the regular business of the hiring party

      10. Whether the hiring party is in business

      11. The provision of employee benefits

      12. Tax treatment of hired party

  • Applying to this test, Reid was an independent contractor and not an employee, as he:

    • Though CCNV members directed enough of Reid’s work to ensure that he produced a sculpture that met their specifications, but:

1. The extent of control the hiring party exercises over the details of the product is not dispositive

2. R supplied his own tools

3. Worked in his own studio (impossible daily supervision)

4. Retained for less than 2 months (relatively short period of time)

5. During and after this time, CCNV had no right to assign additional projects to Reid

6. R had absolute freedom to decide when and how long to wok (apart from deadline for completion)

7. CCNV paid R $15,000 – a sum dependent on completion of a specific job, a method by which independent contractors are often compensated

8. Total discretion in hiring and paying assistants

9. Creating sculpture was hardly regular business for CCNV (not a business itself)

10. CCNV did not pay payroll or Social Security taxes, provide any employee benefits, or contribute to unemployment insurance or worker’s compensation funds

    • Independent contractor CCNV not the author but CA: CCNV may be a joint author of the sculpture if they prepared the work ‘with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole’ s.101 17 USC would be co-owners of the copyright

    • Court wanted to have a predictable test

      • If all pointed at the same direction, more straightforward and predictable

      • But not all cases are as clear multifactor test would allow litigants to dispute their statuses

• Rationale for ‘Works Made for Hire’ doctrine Why give right to employer:

  • Deemed to be a corporate creation ab initio need not be assigned

  • Reduction of transaction costs: no need to negotiate/ execute assignment agreements avoid inalienability of the termination transfer right

  • Employer is investing resources into employee and money. As a reward of bearing that risk, employer should get title

    • Employer is the author – since employee under the supervision of the employer

  • Party that is best positioned to exploit the work should have the title-companies can do this more easily, because they have collection of people working on related parallel goals

    • CCNV is a good utilizer – take the sculpture on a tour

    • [Parties settled on how to utilise the work]

• But: where to put the default rule matters because

  • Not all parties are sophisticated enough to know their rights

  • better to put default rule in favor of the employee, to force the employer to bargain with the employee

• Factors in determining whether an employment relationship exist:

Most Important

1. Provision of employee benefits

2. Tax treatment of the hired party

3. Method of payment

4. Skill required

5. Right of hiring party to assign additional projects to the hired party

6. Source of instrumentalities and tools

7. Extent of hired party’s discretion over when and how long to work

8. Duration of relationship between parties

9. Whether work is part of the regular course of hired party’s business

10. Location of work

11. Hired party’s role in hiring and paying assistants

12. Right to control work being performed

13. Label

14. Whether hiring party is in business

Least Important

• Within scope of employment

  • (Restatement (2nd) of Agency § 228 (1958)): 3-part test for determining if an employee’s conduct is within the scope of his employment:

    1. It is of the kind of work he is employed to perform;

    2. It occurs substantially within authorized work hours; and

    3. It is actuated, at least in part, by a purpose to serve the employer.

• Assignment caveat: express signed agreement identifies employee as author (still work-made-for-hire)

• Difference between whether an author is an author

  • If employee had been made an author can terminate any transfer of copyright as a copyright...