The Unique Work Made for Hire Relationship in California

Many clients think that they own the copyrights to the photos when they hire a photographer. But, in the United States, if the photographer is not the client’s employee (a w2 employee instead of a w9 independent contractor), the photographer owns the copyrights unless the photographer first agreed in writing and the work falls into one of 9 statutory categories.

Circular 9 from the U. S. Copyright Office explains: a work made for hire (WMFH) is ”a work specially ordered or commissioned for use as a contribution to a collective work, as a 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, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” The Circular emphasizes that when the work is created by an independent contractor, both parts must be satisfied–that is, the agreement must be in writing AND the work must fit one of those 9 categories. See also 17 USC 101.

On the other hand, if photos are taken by an employee within the scope of employment, then the photos are a WMFH and the employer is both the “author” and owner of the copyrights.

More companies now insist that they own the copyrights to avoid future infringement claims or licensing expenses, which can be a disadvantage to shooting WMFH photos.

However, in California, Labor Code Section 3351.5(c) provides:

Any person while engaged by contract for the creation of a specially ordered or commissioned work of authorship in which the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire, as defined in Section 101 of Title 17 of the United States Code, and the ordering or commissioning party obtains ownership of all the rights comprised in the copyright in the work.

Likewise, California Unemployment Insurance Code Sections 686 and 621(d) provide that:

Employer also means any person contracting for the creation of a specially ordered or commissioned work of authorship when the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire, as defined in Section 101 of Title 17 of the United States Code, and the ordering or commissioning party obtains ownership of all of the rights comprised in the copyright in the work. The ordering or commissioning party shall be the employer of the author of the work for the purposes of this part.

Therefore, you technically are an employee of any company that hires you to take photos pursuant to a WMFH agreement. Fortunately, the company then must provide workers’ compensation insurance to cover you if you get hurt on the job.

Because California companies have additional responsibilities when you’re an employee (such as payroll taxes and mandatory reporting to the state), they likely will try to avoid the traditional WMFH agreement by asking you to later transfer the copyrights or allowing you to keep some of the rights.

Whatever the agreement, be sure to review it closely so that you understand your rights.

 

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Mercy Ships Thanks You – Act by Noon Tomorrow to Add Your Support!

Besides getting a great deal yourself with the Complete Photography Business Bundle10% OF THE PURCHASE PRICE FOR EVERY BUNDLE SOLD WILL GO TO CHARITY.  One of the charities is Mercy Ships. Check this video where Mercy Ships thanks you for your support.

Check some of the great work by Mercy Ships.

Do something good for yourself and others. The 2016 5DayDeal Complete Photography Business Bundle will help you quickly get focused, inspired, and strategic about growing a photography career you love.

BUY THE COMPLETE PHOTOGRAPHY BUSINESS BUNDLE NOW (the deal ends and will no longer be available after tomorrow, Tuesday, March 1, at noon, pacific).

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Is a Musician’s WFH Contract Enforceable?

 

Many musicians today require photographers to sign a contract granting to the musician the copyrights (or a very broad license along with a restriction of the photographer’s use) of the photos taken at a concert in exchange for access at the concert. Are these contracts are enforceable? Probably.

Take, for example, the Juggernaut Contract required to be signed to photograph Janet Jackson. It seeks to give Juggernaut Productions all rights to photographs taken of the artist.  On first blush, the definition of “Photographs” is too broad, as it doesn’t limit the images at issue to those shot at the concert.  Therefore, if you took Janet Jackson’s photo on the street months after the concert, Juggernaut may argue that photo also belongs to the company.  The court probably wouldn’t agree.  But as to the photos you take at the concert after signing this agreement, Juggernaut likely would own the copyrights.

We asked Leslie Burns of Burns Auto Parts, a long-time supporter of photographers’ rights and recent law school graduate (who will be admitted to the California Bar next week!) to review the contract.  Leslie is working with our firm on a part-time basis as she continues her consultation services.  This is a summary of her analysis:

The first issue is whether it is a contract of adhesion:

a “standardized contract, which, imposed and drafted by the party of superior bargaining strength, relegates to the subscribing party only the opportunity to adhere to the contract or reject it.” Armendariz v. Foundation Health Psychcare Serv., 24 Cal.4th 83, 113 2000).

A photographer could argue that, because Juggernaut is offering the contract on a take-it-or-leave-it basis, the contract would be deemed null and void if challenged in court.  This argument, however, would not hold water.  A photographer does not have to take images of Janet Jackson (or any other celebrity in performance). The photographer wants to do so, but not doing so is certainly an option. Under Tricome v. Ebay, Inc., 2009 WL 3365873 (E.D. Pa. Oct. 19, 2009) that ability to not take advantage of the opportunity seems to be the significant factor in the contract not being a contract of adhesion. There, the court held that because plaintiff was not obligated to sell his products on eBay but rather chose to do so, eBay’s User Agreement was not a contract of adhesion.

The only other major argument for a photographer is related to adhesion: unconscionability (see Williams v. Walker-Thomas Furniture Co., 350 F.2d 445, 449 (D.C. Cir. 1965)). Because unconscionability requires both a procedural and a substantive aspect (although on a sort of sliding scale–that is, more of one and less of the other, either way) that argument likely would fail here, as well.

The procedural aspect is covered by the adhesion argument. Substantively, to be unconscionable, the terms must be so one-sided as to “shock the conscience.” Kinney v. United HealthCare Services, Inc., 70 Cal.App.4th 1322 (Cal.App. 4 Dist., 1999). Although the terms of this contract are certainly not in the interest of the photographer, it seems unlikely that they would be seen as one-sided enough. The photographer gets a benefit (at least in theory) of getting to shoot Ms. Jackson in concert and to get to use the resulting image(s) in a news item, or even otherwise, albeit with the permission of Juggernaut.

Moreover, because this is a California contract (the contract specifies California as the choice of law), a California statute permits a party to show the context of the contract so as to permit better understanding of its formation and the abilities of the parties to enter into the contract, specifically:

CAL. CIV. CODE § 1670.5 (b) When it is claimed or appears to the court that the contract or any clause thereof may be unconscionable the parties shall be afforded a reasonable opportunity to present evidence as to its commercial setting, purpose, and effect to aid the court in making the determination.

This statute would permit Juggernaut to show how the “unregulated” use of the image(s) would be harmful to the artist as well as showing how the contract was entered into by two commercial parties, both of whom had an understanding of the terms and nature of the contract.

Specifically, here, the photographer is not some uninformed victim to the contract. The photographer is a business person and as such the courts generally expect a certain amount of business savvy of the photographer. The photographer could choose not to sign the contract and not do the shoot. Therefore, the photographer should be aware of the terms used in the contract, understand the ramifications of signing it, and would therefore be making a conscious choice to accept the terms.

Speaking of California law,  photographers should keep in mind that California has stronger rights of publicity laws and the control of one’s likeness is generally more often held to be more important than the economic rights of others to make money from that likeness.

The last possible argument for a photographer might be the work-made-for-hire claim in the contract. It is unlikely that a court would find that the circumstances enumerated in this contract would fit the requirements for a work-made-for-hire (see 17 U.S.C. § 101).  However, even if the WMFH is not upheld, the agreement includes an “in the alternative” assignment clause. Therefore, the photographer would be bound by the apparently legitimate assignment of rights clause. An assignment of copyright it must be in writing, which is satisfied by this contract.

Now, there is one small issue in the assignment language, but it appears to be a typo. The contract reads:

In the event that the Photographs are determined not to be a “work-made-for-hire,” this agreement shall constitute an assignment to Company of any and rights in and to the Photographs.

The word “all” is omitted from the standard language “any and all rights.”  A court probably would not find this to invalidate the clause.

While each contract is different and courts may interpret them differently, the safest assumption is that the Juggernaut agreement would be upheld by a court.  Photographers should act accordingly.

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Now Available – Forms for Photographers

The right form can make or break your business.  While hiring an attorney to create a customized contract or release for your specific needs is best, it can be expensive. But now you can get customizable contracts and release forms in Microsoft Word created by the Photo Attorney specifically for photographers. Choose from the following forms:

  • Adult Model Release
  • Copyright Infringement Cease & Desist/Demand Letter
  • Copyright Transfer Form
  • DMCA Takedown Notice
  • Independent Assistant Photographer
  • Liability Release, Assumption of Risk, and Arbitration Agreement
  • Minor Model Release
  • Portrait Session Contract
  • Property Release
  • Stock Photography License with Terms and Conditions
  • Wedding Photography Contract

Order yours today from the Products page!

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Photographer Awarded $1,000 for Unauthorized Use of Photo

Christopher Boffoli reports that he was awarded $1,000 plus court costs in the “small claims” court of the King County District Court System (state court) in Seattle for the unauthorized use of his photo. His case was against a real estate agent who used one of his images in one of her commercial listings. He reports on the events at Photo.net.

While copyright infringement claims must be pursued in a federal court, some courts have treated copyright infringement as a breach of contract claim, which can be decided by a state court. The option usually is available in those circumstances where the parties negotiated a license deal but the user failed to pay. Check my January 18, 2006, blog entry for more information.

We can’t tell whether the judge in Christopher’s case treated his complaint as a breach of contract. However, subject matter jurisdiction can never be waived, so there is a risk that the judgment could be vacated. Further, most federal courts require that your photograph be registered with the U.S. Copyright Office before the court has jurisdiction to hear your copyright infringement claim. See 17 U.S.C. 411 (“no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title”) and my March 26, 2005, blog entry for more information.

In sum, while the judgment is at risk of being challenged for subject matter jurisdiction, it would cost the defendant a lot more time and money to dispute it – only to be vunerable to the same result (or worse, if Christopher’s photo was timely registered) in federal court. But it’s safest to pursue infringement claims in federal court.

Congrats to Christopher to standing up for his rights!

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The Not-So-Fine Print


Here are some more terms and conditions that need close review (and some are alarming!):

Share the Experience Photo Contest – The Rules states that:

Submission of an entry in this Contest constitutes entrant’s irrevocable assignment, conveyance, and transference to Sponsors of all right, title, and interest in the entry, including, without limitation, all copyrights.

Alliance of Actions Sports – The User Content Submission Agreement provides:

In connection with all User Content you submit using the User Content Submission Features, you grant to ALLI, and the Affiliates, the unqualified, unrestricted, unconditional, unlimited, worldwide, irrevocable, perpetual and royalty free right, license, authorization and permission, in any form or format, on or through any media or medium and with any technology or devices now known or hereafter developed or discovered, in whole or in part, to host, cache, store, maintain, use, reproduce, distribute, display, exhibit, perform, publish, broadcast, transmit, modify, prepare derivative works of, adapt, reformat, translate, and otherwise exploit all or any portion of your User Content on the Site and any other channels, services, and other distribution platforms, whether currently existing or existing or developed in the future, of ALLI, and the Affiliates (collectively, the “Platforms”), for any purpose whatsoever (including, without limitation, for any promotional purposes) without accounting, notification, credit or other obligation to you, and the right to license and sub-license and authorize others to exercise any of the rights granted hereunder to ALLI, and the Affiliates, in our sole discretion.

Nature Conservancy Digital Photo Contest:

By entering the contest, you hereby grant to The Nature Conservancy (i) a nonexclusive, worldwide, irrevocable, royalty-free license to reproduce, distribute, publicly display and publicly perform the photographs you submit to The Nature Conservancy, and (ii) the right to use your name, city, state and country of residence in promotions and other publications.

City of Toronto Photo Contest – The Rules state:

By entering the contest, you agree to have any of your winning photos and photos that receive honourable mention displayed at City locations and used in City of Toronto print and electronic communication materials, advertising and promotional materials and on the City’s website, for any purpose and at any time in the future, without any fee or other form of compensation.

Art Wolfe’s Photo Contest:

By entering the contest, entrants grant Art Wolfe, Inc a royalty-free, world-wide, perpetual, non-exclusive license to display, distribute, reproduce, and create derivative works of the entries, in whole or in part, in any media now existing or subsequently developed, for any purpose, excluding resale. Any photograph reproduced will include a photographer credit. Art Wolfe, Inc. will not be required to pay any additional consideration or seek any additional approval in connection with such uses.

The rules apparently have been revoked. Of course, as a wonderful professional photographer, we’re sure that Art doesn’t need our photos for any purpose other than the contest!

Thanks to Bill Boswell, Thomas Di Nardo, Arcady Genkin, and Annie Libby for submitting these alerts.

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Statutes of Limitation for Breach of Contracts

Many photographers enter into contracts with clients where the photographer agrees to perform photography services in exchange for payment. But what happens when you don’t get paid after you’ve rendered the services?

A client’s failure to pay for services rendered pursuant to contract constitutes a “breach of contract.” If you can’t otherwise get your client to pay, then you may sue for the payment in state court in a breach of contract action. When the amount due is relatively small, it may be easiest and best to file suit in “small claims” or “magistrate” court. Some courts have minimum amounts to sue starting at $1,000 and all have maximums ranging up to about $15,000. Even if you’re owed more than the maximum, you can forego the excess and seek the maximum allowed by the small claims court.

Since the economy has slowed, some clients don’t have money now. So you may want to wait a bit to sue, hoping that the client gets money later (balancing the risk that the client will go out of business). But the time that you have to make your claim is limited. This is based on a legal principle called “the statute of limitations.” Statutes of limitation, in general, are laws that prescribe the time limits during which you can file lawsuits. The deadlines vary with the type of claim and depend on the state where the claim is made. The purpose of them is to reduce the unfairness of defending actions after a substantial period of time has elapsed. They allow people to go on with their lives, regardless of guilt, after a certain amount of time has passed.

In the United States, the statute of limitations to sue for breach of a written contract ranges from 3-15 years. It usually is a bit shorter for an oral contract. As an alternative, you may want to sue for copyright infringement instead of breach of contract if the client has used your photos without payment. Copyright infringement has a 3 year statute of limitations. Check my January 16, 2006, May 26, 2005, and August 15, 2008 blogs for more information.

Whatever you do, be sure to take steps to protect your work and your business!

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