How does the work-for-hire doctrine apply to your organization?
Q: What is the work-for-hire doctrine, and how does it apply to associations?
A: The work-for-hire doctrine is a statutory provision under the Federal Copyright Act that acts to transfer copyright ownership in certain cases. However, the doctrine is often misunderstood.
The law applicable to copyrights comes from the federal statute adopted by Congress in the Copyright Act. The law provides that rights to copyrighted works automatically arise when created by the author, musician, sculptor, or filmmaker. There is no need for registration with the U.S. Copyright Office or notice to own rights, although both are recommended and enhance copyright protection. The rights to an article, white paper, or other association document arise when created, whether by an employee, contractor, or volunteer. These rights can only be transferred (i.e., assigned) as provided by the Copyright Act, and this is where the work-for-hire doctrine comes in.
Employees. Under the work-for-hire doctrine, the right to any copyrighted work created by an employee within the scope of his employment is automatically transferred to his employer by operation of law. Nothing must be signed by the employee, and it is not necessary to cover copyright in an employment manual. Associations don't have to worry about owning rights to copyrighted text, content, artwork, or even software if created or developed by an employee in the course of employment.
It's still advisable to include the copyright notice (i.e., copyright, owner, date of publication) with the association's name on the published work and also recommended to register the work in the association's name as a work for hire. To recover statutory damages and attorneys' fees in the event of infringement, a registration must be filed with the Copyright Office prior to infringement or within three months of first publication.
Contractors or volunteers. Many say that if the association pays an independent contractor to create a work—whether an article, book, photograph, or software—the association owns the work that it paid for. Wrong. The association may have a license, which may be implied or in writing, to use the work for the purposes contracted for, but there is no transfer of ownership unless certain conditions are met.
Either the assignment or transfer of the work can be stated clearly in writing signed by the contractor, or in some situations, the work-for-hire doctrine may be available. Further, since association volunteers (such as officers, directors, committee members, or other unpaid volunteers) are not employees, the situation would be the same for any works created by volunteers; there is no transfer unless agreed in writing by the volunteer or the work-for-hire doctrine applies. However, these situations where the doctrine applies are limited, so beware.
Work-for-hire doctrine. Section 101 of the Copyright Act defines a work for hire, which is a work specially ordered or commissioned for use in only nine specific ways:
- a contribution to a collective work
- a part of a motion picture or other audiovisual work
- a translation
- a supplementary work
- a compilation
- an instructional text
- a test
- answer material for a test
- an atlas
If the work does not fall within these categories, it cannot be a work for hire. Even if a work falls within one of these categories, ownership in the work is still not effectively transferred or assigned unless the parties sign an agreement that the work is a work for hire. Therefore, the work for hire is not effective outside of an employment context unless the creator of the work signs a written agreement transferring rights to the association.
Some attorneys will use "belt and suspenders" to ensure copyright ownership by the association and include a provision stating that work for hire applies, but if not the author assigns her rights to the association. Alternatively, all that is necessary is a written assignment of rights, such as in a contract, signed by the author.
It is not always necessary for the association to own the rights to articles or other copyrighted material. A license to publish is fine if broad enough to cover intended uses. But if the association wants to own the work produced by a nonemployee, then the technical requirements of the work-for-hire doctrine should be met or a formal written assignment of rights from the author is needed.
Jeff Glassie is a partner at Whiteford, Taylor & Preston in Washington, DC. Email: [email protected]