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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Sierra Trading Post’s Photo Contest is No Bargain

Sierra Trading Post (STP) is a great place to pick up some bargains on outdoor goods. While you have the chance to win a $200 STP Gift Card from its photo contest, just by entering means that you may get less than you bargained for.

Specifically, when you enter STP’s photo contest, you agree to the Terms and Conditions, which state in part (emphasis added):

ENTRANT’S GRANT OF RIGHTS: By participating in the Promotion, each entrant irrevocably grants Sponsor and its agents and successors and assigns a non-exclusive, unlimited, worldwide, perpetual, royalty free, transferable license and right (but not the obligation) to reproduce, publicly perform, distribute, exploit, publicly display, and otherwise use the Submission in any way, for any reason, and in any and all media (including but not limited to the Contest Site), without limitation, and without further notice, consent or consideration to the entrant. Without in any way limiting the foregoing, Sponsor shall have the right, in its sole discretion, to modify and make derivative works of the Submission for any purpose which Sponsor deems necessary or desirable, and each entrant irrevocably waives any and all so-called moral rights they may have therein. Sponsor shall have the right to freely sublicense its rights hereunder, in whole or in part, to any person or entity. Sponsor shall retain the rights granted in each Submission even if the Submission is disqualified or fails to meet the Submission Requirements.

There’s not much that STP can’t do with your photo submission. At least you keep you copyright and you’re not restricted with using it. Just seems that STP is getting the benefit of the bargain here!

Hat tip to Mike Calabro.

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Reminder: Provide Input on Register of Copyrights

Let the Librarian of Congress, Carla Hayden, know what you want out of the Register of Copyrights position.

Participate in the online survey by January 31, 2017

If you need some help with what to say in the survey, the Illustrators’ Partnership has provided some suggestions. Note that your name and information provided through the survey will appear online.

 

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Test your copyright knowledge!

Happy New Year! Get a good start on 2017 by testing your copyright knowledge. When you’re finished with the quiz, you can get additional information on each of these questions at http://www.photoattorney.com/test-copyright-knowledge-quiz-notes/.

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Librarian of Congress Seeks Input on Register of Copyrights

The public will have the opportunity to provide input to the Library of Congress on expertise needed by the Register of Copyrights, the Librarian of Congress, Carla Hayden, announced today.

Beginning today, December 16, an online survey is open to the public. The survey will be posted through January 31, 2017. Input will be reviewed and inform development of knowledge, skills, and abilities for fulfilling the Register position.

Information provided through the survey will be posted online and submitters’ names will appear. Note that input will be subject to review, and input may not be posted that is off-topic or contains vulgar, offensive, racist, threatening or harassing content; personal information; or gratuitous links to sites that could be considered spam. The Library’s complete comment policy can be viewed here.

To provide input through the survey, click here.

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Don’t Get Your Copyright Advice from Mr. Wonderful

On Shark Tank last Friday, an entrepreneur with a clothing design business reported that a third-party company had copied her t-shirt design, which later was sold at Target. Target removed the shirts from its stores after the designer complained.

Mr. Wonderful (Kevin O’Leary), then asked, “Did you copyright your design?” The designer replied, “I had not at the time . . . .” Mr. Wonderful then asserted “So they really hadn’t broken any law at the time.”

~WRONG!~

A work is protected by copyright “when fixed in a tangible medium of expression.” Even if the work is never registered with the U.S. Copyright Office, the copyright exists and is protected by copyright law. So, once the designer printed her t-shirt design, she owned a copyright and likely would be entitled to the profits that Target and the third-party company obtained from the infringing sales.

If a copyright for a work is registered, the owner gets additional benefits such as the option to recover statutory damages for infringements and the inference that the person who registered the copyright is the owner.

During the show, Shark Lori Greiner then added, “. . . it’s a great lesson, though, in knowing that when you have unique designs, copyright them. It’s not a lot of money to do so.”

Good advice, Lori, except it’s better to call it “registering” your copyright. If copyright owners tell others that they are “copyrighting” their works when they actually are registering them, others may believe that the works are not protected until that time.

To best protect your works, register your copyrights today (and refer to it that way).

 

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Copyright Office’s Notice of Register Change

From the U.S. Copyright Office:

NewsNet 638
October 25, 2016

Karyn Temple Claggett Appointed Acting Register of Copyrights

Librarian of Congress Carla Hayden has appointed Karyn Temple Claggett as Acting Register of Copyrights effective October 21. Maria A. Pallante, who served as Register since 2011, submitted her resignation from the Library of Congress effective October 29.

“Maria’s service as Register has laid the groundwork for important modernization efforts in the Copyright Office, which I intend to pursue working in close collaboration with Congress and stakeholders. Improved information technology for the office will be a top priority. I am committed to making sure the copyright system of the United States is effective, efficient, and secure,” said Hayden.

Prior to Pallante’s term as Register, she served as Deputy General Counsel (2007-2008) and Associate Register and Director of Policy and International Affairs (2008-2011) for the office. From 1999-2007 she was Intellectual Property Counsel and Director of Licensing for the worldwide Guggenheim Museums. She also worked for two authors’ organizations in New York, serving as Assistant Director of the Authors Guild Inc. and as Executive Director of the National Writers Union. She practiced at the Washington, D.C., law firm and literary agency Lichtman, Trister, Singer and Ross and completed a clerkship in administrative law for the appellate division of the U.S. Department of Labor.

“I am pleased to announce that Karyn Temple Claggett will serve as Acting Register while a national search is conducted for a new permanent Register,” Hayden said. “Karyn is a skilled intellectual property lawyer and manager, and I am confident she will provide excellent leadership for the Copyright Office in the interim.”

Temple Claggett has served since 2013 as Associate Register of Copyrights and Director of Policy and International Affairs for the United States Copyright Office. In that role, she has overseen the office’s domestic and international policy analyses, legislative support, and trade negotiations. She has directed the Office of Policy and International Affairs, which represents the Copyright Office at meetings of government officials concerned with the international aspects of intellectual property protection, and provides support to Congress and its committees on statutory amendments and construction.

Prior to joining the Copyright Office, Temple Claggett served as Senior Counsel to the Deputy Attorney General of the United States, where she assisted with the formulation of Department of Justice policy on legal issues and helped manage the Department of Justice’s Task Force on Intellectual Property. She also spent several years in the private sector as Vice President, Litigation and Legal Affairs for the Recording Industry Association of America and at the law firm Williams & Connolly, LLP. She began her legal career as a trial attorney for the U.S. Department of Justice’s Civil Division through its Honors Program and also served as a law clerk at the U.S. Court of Appeals for the Sixth Circuit. Temple Claggett earned her law degree from Columbia Law School, where she was a senior editor of theColumbia Law Review and Harlan Fiske Stone Scholar. She earned her BA from the University of Michigan.

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Seeking Applicants for Columbia-Cravath Copyright Clinic

From the Copyright Alliance:

For the past several years the Copyright Alliance has been a proud partner of the Columbia-Cravath Copyright Dispute Pro Bono Clinic.  Each fall semester the law firm of Cravath, Swaine and Moore LLP and law students enrolled in Columbia University provide free legal representation to individuals and small businesses in lawsuits involving cutting edge copyright issues.

To assist the Clinic, the Copyright Alliance reaches out to individual creators and small businesses in all disciplines to solicit for candidates for the program. In addition to having a copyright dispute that is new and ripe for litigation, for a dispute to be accepted by the Clinic it should present an interesting copyright issue, the resolution of which would benefit the creative community. Critically, candidates should be located in the New York City area and be unable to afford legal services.

If you are interested in learning more about this program, please go to www.copyrightalliance.org/content/pro_bono_trial_services_0, where you will find both the application requirements and an application. Because the Clinic only takes a limited number of clients each semester, applications do not guarantee representation.

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The Best (and Free!) Resource on Copyright Law

Tricolor Heron on Stump

Register of Copyrights Maria A. Pallante released late last year the official version of the Compendium of U.S. Copyright Office Practices, Third Edition, available on the Office’s website at http://copyright.gov/comp3/.

The Compendium serves as a technical manual for the Office’s staff, as well as a guidebook for authors, copyright licensees, practitioners, scholars, the courts, and members of the general public. More than three times the size of the previous edition, the Third Edition represents a comprehensive overhaul and makes the Office’s practices and standards more accessible and transparent to the public.

As in the past, it addresses fundamental principles of copyright law, such as creation, publication, registration, and renewal. It addresses routine questions such as who may file an application and who may request copies of the Office’s records. It describes recent changes to the Office’s recordation practices, such as the new option for submitting titles and registration numbers in electronic form. It also contains a new Table of Authorities that lists the cases, statutory provisions, and other legal authorities cited in the Third Edition and the relevant section where each citation may be found.

Check some of these nuggets found in the Compendium:

  • Although registration may be made at any time before a copyright expires or any time before bringing an infringement action in federal court, the U.S. Copyright Office strongly encourages copyright owners to submit their works for registration in a timely manner. As discussed in Section 202, a registration is a prerequisite for seeking statutory damages and attorney’s fees in an infringement action. To pursue these remedies, an unpublished work must be registered before the infringement occurs, while a published work must be registered within three months after publication or before the infringement occurs. See 17 U.S.C. § 412.
  • The U.S. Copyright Office has established an administrative procedure that allows an applicant to register a number of unpublished works with one application, one filing fee, and one set of deposit copies. This is known as the “unpublished collection” option. A registration issued under this option covers each work that is submitted for registration. It may also cover the compilation authorship (if any) involved in selecting the works and assembling them into a collective whole, provided that the applicant expressly claims that authorship in the application. See 37 C.F.R. § 202.3(b)(4)(i)(B). When no selection, coordination, or arrangement is claimed, the Office considers each work to be individually registered for purposes of statutory damages.
  • Many websites are frequently updated and may change significantly over time. A website may add content every hour, day, week, month, or year. To register a claim with the U.S. Copyright Office it is important to identify the specific version of the work(s) that will be included in the claim. As a general rule, each version of a work may be registered as a separate work if the version contains a sufficient amount of new, copyrightable authorship. See 17 U.S.C. § 101 (stating that “where the work has been prepared in different versions, each version constitutes a separate work”). A registration for a specific version of a work covers the new material that the author contributed to that version, including any copyrightable changes, revisions, additions, or other modifications that the author contributed to that version. But as discussed in Section 1008.2, the registration does not cover any unclaimable material that appears in that version, including any material that has been previously published or previously registered with the Office. Therefore, if the version contains an appreciable amount of content that has been previously published and/or previously registered, the applicant should exclude that material from the claim.

Example: • Sam Bavard operates a duck hunting website called “Animal Quackers.” Every three months Sam revises the website by adding new text and photographs. When Sam submits an application to register the latest version of the site he limits the claim to the “new text and photographs” that he added to the site, and he excludes the photographs and text that were previously registered with the Copyright Office.

There is much more helpful information in the Compendium.  Check it out and refer to it often.

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Copyright Protection for Tom Kucy’s Derivative Work

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Petapixel reports that director of photography, Tom Kucy, added 3D motion to some of the photos from the 8,400 shots taken by Apollo astronauts during trips to the moon. Kucy’s 2-minute film shown above is titled “Ground Control.”

Kucy’s film is a “derivative work.” A derivative work is a work based on or derived from one or more already existing works. Common derivative works include translations, musical arrangements, motion picture versions of literary material or plays, art reproductions, and paintings from photos. To be copyrightable, a derivative work must incorporate some or all of a preexisting “work” and then add new original copyrightable authorship to that work. 17 USC 103(b) explains:

The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. 

The right to prepare derivative works based upon other copyrighted works is one of the “exclusive rights” of 17 USC 106. To create his derivative work, Kucy used the Apollo photos. So Kucy would have needed permission from the copyright owners of the photos to create his film. But the photos are in the public domain: 17 USC 105 states: “copyright protection under [Title 17] is not available for any work of the United States Government.” A “work of the United States government” is a work prepared by an officer or employee of the United States Government as part of that person’s official duties (see the definitions of 17 USC 101). When astronauts, who are employees of the U.S. government, take photos as part of their duty, their photos immediately are in the public domain, not protected by copyright.

Copyright in a derivative work covers only the additions, changes, or other new material appearing for the first time in the work. Copyright protection does not extend to the preexisting material. As the Copyright Office’s Circular 14 explains:

A work that has fallen into the public domain, that is, a work that is no longer protected by copyright, is also an underlying “work” from which derivative authorship may be added, but the copyright in the derivative work will not extend to the public domain material, and the use of the public domain material in a derivative work will not prevent anyone else from using the same public domain work for another derivative work.

So you may continue to copy, display, distribute, and create derivative works of the Apollo photos. As for Kucy’s derivative work, he gets copyright protection of his new material.

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