Whether your business is well-established or in its initial start-up phase, having an engaging website and a prominent online presence is critical for your business to remain competitive in today’s world. But there are many potential legal pitfalls for the unwary; one of which is the question of who owns the intellectual property rights to the photographs, written content (including blog entries such as this one), and source code contained within the website. Like most legal questions, the answer is not always clear.
Under U.S. copyright law, an original work that is fixed in a tangible medium of expression is generally the property of the author who creates it. Not everything can be copyrighted. Types of “work” that can be protected by copyright include literary, pictorial, and graphic works, among some others. The original author, or someone deriving rights from the original author, has the exclusive right to control the use of the work, including reproduction, distribution, transfer, and display of the work.
An important exception to this general rule is the “work made for hire” doctrine. If a work, such as a photograph or written content that is included on your company’s website, is created by an employee within the scope of employment, then the employer – and not the employee – is automatically the exclusive owner of the copyright to the work, absent an agreement between the parties to the contrary. For example, this blog entry is owned by Cuddy & Feder LLP, not by yours truly.
The work for hire doctrine becomes more complicated when the author of the work is not an employee but an independent contractor. The distinction between an employee and an independent contractor is governed by the rules of agency law and is frequently a fact-specific issue. Although there is no bright-line rule, a crude rule-of-thumb is that the greater the level of control exercised over the creation of the work by the other party, the more likely the author will be considered an employee of the other party.
The distinction between an employee and an independent contractor is important because the work of an independent contractor will be considered a “work made for hire” only if:
- the work is specially ordered or commissioned;
- the parties expressly agree in a signed writing that the work will be considered a “work made for hire”; and
- the work is one of the following nine types of work designated under Section 101 of the federal Copyright Act (title 17 of the U.S. Code): (i) a contribution to a collective work, (ii) a part of a motion picture or other audiovisual work, (iii) a translation, (iv) a supplementary work (such as literary forewords, pictorial illustrations in a book, charts, or indices), (v) a compilation, (vi) an instructional text, (vii) a test, (viii) answer material for a test, or (ix) an atlas. Without all three of these conditions satisfied, the work will not be considered “for hire” and the original author will retain copyright to the work.Even if the work is specially commissioned from an independent contractor and there is a signed written agreement that expressly states that the work is made for hire, as is often the case, the original author may potentially retain the copyright if the work does not fall within one of the nine types designated under Section 101 of the Copyright Act. While certain written content is included, there are notable absences from the statutory list, including photographs.
As a result, if your company hires a photographer as an independent contractor to take new shots for your company’s website and you enter into a written signed agreement that expressly states that the photographs are “works made for hire,” the photographer may be able to retain ownership of the copyright to the photographs and may therefore be able to reproduce or display the photos in other media and could even sell the photos to a third party without your notice or consent. To avoid that outcome, you should ensure that the independent contractor assigns all intellectual property in the work to your company.
Your company would be well-advised to ensure that your written agreement with your independent contractor include words of assignment so that, even if the work does not constitute a “work made for hire” for copyright purposes, the independent contractor agrees to assign all right, title, and interest in and to the intellectual property in the work to your company. Here is some sample language for this issue:
The Contractor and the Company consider the products of the services to be rendered by the Contractor pursuant to this Contract (the “Work”) to be a work made for hire. The Contractor agrees that the Work and all rights therein are the sole and exclusive property of the Company, including without limitation all rights under or arising from U.S. copyright law.
If the Work is not considered to be a work made for hire under applicable law for any reason, then the Contractor hereby irrevocably and unconditionally assigns and transfers to the Company and its successors and assigns all right, title, and interest in and to the copyright in the Work and all other and further works based on, derived from, or incorporating the Work, and any and all copyright applications and registrations relating thereto, including all renewals and extensions thereof, without further notice or limitation.
Of course, there are several further legal issues that your company should address when working with independent contractors who are providing services or material for your website or marketing campaign, including protecting your company against potential liability in the event the contractor’s work infringes any copyright or proprietary rights of third parties or contains material that is otherwise contrary to the law.
Consult a knowledgeable attorney to avoid these pitfalls and ensure that your company’s marketing campaign is not hindered by any unnecessary legal disputes over the ownership of copyright.