Digital Law Online: Ownership

Not too surprisingly, since copyright automatically comes into being when an author fixes a work in a medium, the copyright is initially owned by that author. This is stated in Section 201:

(a) Initial Ownership.– Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are coowners of copyright in the work. {FN47: 17 U.S.C. §201}

II.F.1. Joint Works

Section 101 defines a “joint work” as “a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” {FN48: 17 U.S.C. §101} The drafters discussed this:

Two basic and well-established principles of copyright law are restated in section 201(a): that the source of copyright ownership is the author of the work, and that, in the case of a “joint work,” the coauthors of the work are likewise coowners of the copyright. Under the definition of section 101, a work is “joint” if the authors collaborated with each other, or if each of the authors prepared his or her contribution with the knowledge and intention that it would be merged with the contributions of other authors as “inseparable or interdependent parts of a unitary whole.” The touchstone here is the intention, at the time the writing is done, that the parts be absorbed or combined into an integrated unit, although the parts themselves may be either “inseparable” (as the case of a novel or painting) or “interdependent” (as in the case of a motion picture, opera, or the words and music of a song). The definition of “joint work” is to be contrasted with the definition of “collective work,” also in section 101, in which the elements of merger and unity are lacking; there the key elements are assemblage or gathering of “separate and independent works * * * into a collective whole.” {FN49: H.R. Rep. No. 94-1476 at 120}

Since each coauthor of a joint work is an owner of the copyright of that work, each can license, copy, distribute, or do anything else permitted of a copyright owner with sole rights to a work, without the permission of any other co-owner, including assigning the copyright to another. But each co-owner is responsible to the other co-owners for any royalties or other payments received for the co-owned work. It is best to have an agreement regarding the ownership of a joint work, or any other copyrighted work for which there may be more than one author, before starting on the work, perhaps making one author the owner of the copyright with an agreement to pay royalties to the other authors.

II.F.2. Works Made For Hire

When the work is made as part of the creator’s regular employment, or under contract in certain circumstances, the work is a “work made for hire”, and Section 201(b) states a special rule:

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. {FN50: 17 U.S.C. §201(b)}

Note that there is no need for a specific agreement or term in an employment contract for the employer to get the copyright to the work. Ownership of the copyright by the employer is the default, absent some other agreement, and that agreement must be in writing and must be signed by both the employer and the employee. A statement in an employment manual, saying that an employee owns the copyright on certain works that would otherwise be works made for hire is not enough.

So what is a work made for hire? Section 101 defines two different types of works made for hire – ones prepared by an employee, and ones specially ordered or commissioned:

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

(2) 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. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities. {FN51: 17 U.S.C. §101}

A number of factors must be considered in determining whether somebody is an employee, as that term is used in (1), or a contractor, in which case (2) applies. Those factors are similar to the ones used by the Internal Revenue Service in deciding whether an employer has to withhold tax and pay a portion of the Social Security tax. If you are receiving a regular paycheck, you are likely an employee.

The second factor in (1) is that the work must be prepared “within the scope of his or her employment.” That does not mean that the work needs to be specifically requested. It is likely that any computer software written by a person employed as a programmer is a work made for hire as long as there is some relationship to the programmer’s job assignment. If there is some question over whether something is within the scope of your employment, you should have that clarified before starting on the creation of the work, as some companies take a broad view of what is within the scope of employment.

It is important to note that in (2), only certain commissioned works are works made for hire. If somebody commissioning any other type of work wants to have the copyright to that work, the agreement that commissions the work must include a clause transferring the copyright to the person commissioning the work. Simply paying for it is not enough.

For a short period of time, Congress added sound recordings to the types of commissioned works that can be works made for hire. The change had been included in a bill having to do with a number of intellectual property topics, with little discussion. When singers and musicians objected after the change became law, Congress removed sound recordings from the list of commissioned works that may be works made for hire, and included a provision saying that nothing should be read into the insertion and subsequent removal of sound recordings from the list.

Why should the recording artists be concerned that something is a work made for hire, when they routinely sign contracts agreeing that the recording is a work made for hire, or at least assign their copyright to the record company? A signed contract is necessary either to transfer the copyright to the record company or to make it a work made for hire if it is a commissioned work. The difference can be found in Section 203 {FN52: 17 U.S.C. §203} ,which allows the author of a work to terminate any assignment or license after 35 years. This allows an author to renegotiate a license or assignment if the value of the work turns out to be much greater than expected. That right is not available if the work is a work made for hire.

II.F.3. Collective Works

Section 201 also has a special ownership rule for collective works:

Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series. {FN53: 17 U.S.C. §201(c)}

Section 202 states an important principle regarding the ownership of a copyright and the ownership of a copy of a work:

Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied. Transfer of ownership of any material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object. {FN54: 17 U.S.C. §202}

The drafters discussed this:

The principle restated in section 202 is a fundamental and important one: that copyright ownership and ownership of a material object in which the copyrighted work is embodied are entirely separate things. Thus, transfer of a material object does not of itself carry any rights under the copyright, and this includes transfer of the copy or phonorecord – the original manuscript, the photographic negative, the unique painting or statue, the master tape recording, etc. – in which the work was first fixed. Conversely, transfer of a copyright does not necessarily require the conveyance of any material object. {FN55: H.R. Rep. No. 94-1476 at 124}

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