The Legal Lens: Work For Hire

The Legal Lens

with Samuel Lewis

Q. Last time we discussed contracts generally.  Let’s get into some specifics.  One of the things I’ve noticed is that clients want to use what they’ll call a standard work for hire agreement.  What is a standard work for hire agreement and are they really standard?

A. Standard is a somewhat relative term, and I’ll address that in a moment.  First, let me address the concept of work for hire.

Ordinarily, the person who creates a copyrightable work—e.g., a photograph—owns the copyright.  The precise language under the current Copyright Act may be found in Section 201, and it provides that “Copyright in a work protected [under the Copyright Act] vests initially in the author or authors of the work.”  However, for a “work made for hire,” the employer or “other person for whom the work was prepared is considered the author….”

Under the Copyright Act, there are two ways a work can be considered a “work made for hire.”  One way is for the work to be “prepared by an employee within the scope of his or her employment.”  The other way for the work to be “specially ordered or commission 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.”

Let’s put this into context.  In your case Al, you are a full-time employee at The Miami Herald.  Since creating images for publication by the paper is within the scope of your employment, the images are considered works made for hire, and the Herald—not you—is the author, and therefore the initial owner, of the images.  While the issue is a relatively simple one when dealing with full-time employees, it becomes somewhat more complicated for independent contractors or independent artists who are commissioned for a specific assignment.

In 1989, the concept of work made for hire changed dramatically.  At that time, the U.S. Supreme Court handed down its decision in a case called Community for Creative Non-Violence v. Reid (the decision can be read at https://supreme.justia.com/cases/federal/us/490/730/case.html).  In that case, CCNV entered into an oral agreement with sculptor James Earl Reid to create a statue dramatizing the plight of the homeless.  After Reid was paid for creating the statue, the CCNV filed a copyright registration for the statue.  The dispute over ownership of the copyright in the statue would up in court, and the court, reasoning that the statue was a work made for hire, ruled in favor of CCNV.  Reid appealed, and the appellate court determined that Reid, as an independent contractor, did not qualify as an “employee” under the definition of “work made for hire.”  The U.S. Supreme Court upheld the decision that Reid was not an “employee.”

While the Reid decision includes a lengthy discussion of the history of the work for hire issue, the most relevant discussion for most photographers appears in Section B of the decision.  There, the Supreme Court presents a series of factors to be considered when determining whether a person is an “employee” for purposes of the Copyright Act.  The factors to be considered include “the hiring party’s right to control the manner and means by which the product is accomplished, … the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; the extent of the hired party’s discretion over when and how long to work; the method of payment; the hired party’s role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party.”  The Supreme Court also indicated that none of these factors is determinative.

As a result of the Supreme Court’s decision in Reid, the approach to contracting with independent contractors changed somewhat.  The approach has changed, but the effect is the same—the intention behind many “work for hire” agreements is to make the hiring party—not the photographer—the “author” and initial owner of the work, and to generally treat the images as works made for hire.  For a further discussion about this, see my article 5 Tips for Avoiding The Rights Grab (http://www.digitalphotopro.com/business/5-tips-for-avoiding-the-rights-grab.html).

Q. Are work for hire agreements really standard?

A. They are used frequently, but to call them standard is something of an overstatement.  Personally, whenever someone tells me that there is one approach to law that is “standard,” I tend to look more critically at what they claim is “standard.”  Outside of an employment context, there really is no “standard” approach, and it is really up to the contracting parties to decide what terms will govern the relationship.  Some photographers refuse to give up their copyrights, while others may be willing to do so under certain limited circumstances.  It is not surprising to find companies trying to use work for hire agreements, because it simplifies matters:  if they own the images, they can do what they want with them without having to worry about exceeding the terms of a license agreement or being sued by the photographer.  But there are alternatives that still give companies the rights that they believe they need without giving away ownership.

Samuel Lewis is a Board Certified Intellectual Property law specialist and partner at Feldman Gale, P.A. in Miami, Florida, and a professional photographer who has covered sporting events for more than twenty-five years.  He can be reached at SLewis@FeldmanGale.com or SLewis@ImageReflex.com.

Note:  The information appearing in this blog entry is not, nor is it intended to be, legal advice, and should not be construed as such.  Rather, the information is provided solely for educational purposes by providing general information about the law.  This blog is not a substitute for legal advice from an attorney licensed to practice in the state where your business is based or where you live.