WORKING WITH FREELANCERS:
WHAT EVERY PUBLISHER SHOULD KNOW ABOUT THE "WORK FOR HIRE"
By Attorney Lloyd J. Jassin
should be greatly concerned about who owns the work you specially commission.
For example, unless there is a special kind of agreement in place before
any work begins, someone who contributes material to your new book or
web site can, in theory, sell that same material elsewhere without your
permission. Worse still, if there is no written agreement, and you want
to adapt that material, or publish it elsewhere, you will probably need
that person's permission. Similarly, if you hire someone to illustrate
one of your short stories, unless there is a written agreement that
says otherwise, you may be surprised to learn that the illustrator has
become your coauthor. These seemingly odd results follow from the fact
that under copyright law, authors are presumed to own the copyright
in the works they create. The best way to avoid these problems is by
having a written agreement in place before any work begins.
Do I Own the Work I've Paid For?
Not necessarily. If a specially commissioned
work doesn't qualify as a "work for hire," you may not own
the work -- or even have the exclusive right to use it. While you may
have implied license to use it, the scope of your rights will be unclear
at best. One way to avoid this situation is to use an appropriate work
for hire agreement.
What is a Work for Hire?
One way to acquire rights is by license.
With a license, you do not obtain total ownership of the final work,
but rather certain limited rights to use it. These limited rights can
either be exclusive or nonexclusive. A license can further be defined
-- or limited -- by territory, duration, or even media. As a rule, hiring
parties prefer to obtain rights on "work for hire" basis (shorthand
for "work made for hire"). With a work for hire, the hiring
party steps into the shoes of the creator and becomes the author of
the work for copyright purposes. With a work for hire, all of the attributes
of copyright ownership -- including credit and control -- vest in the
hiring party, not the creator.
Important! There are only two situations in which a work for
hire can exist. They are: (1) a work created by an "independent
contractor," and a (2) "work prepared by an employee"
within the scope of her employment.
A. Works Created by Independent Contractors
For a work created by an independent contractor
(or freelancer) to qualify as a work for hire, three specific conditions
found in the Copyright Act must be meet:
1. the work must be "specially ordered" or "commissioned." What this
means is the independent contractor is paid to create something new
(as opposed to being paid for an already existing piece of work); and
2. prior to commencement of work, both parties must expressly
agree in a signed document that the work shall be considered a work
made for hire; and
3. the work must fall within at least one of the following nine narrow
statutory categories of commissioned works list in the Copyright Act:
(1) a translation, (2) a contribution to a motion picture or other audiovisual
work, (3) a contribution to a collective work (such as a magazine),
(4) as an atlas, (5) as a compilation, (6) as an instructional text,
(7) as a test, (8) as answer material for a test, (9) or a supplementary
work (i.e., "a secondary adjunct to a work by another author" such as
a foreword, afterword, chart, illustration, editorial note, bibliography,
appendix and index).
|TIP! As this is being written, the law is unsettled over
the issue of whether a work for hire agreement signed after the
work has begun is valid. However, you are strongly advised that
all work for hire agreements be signed before any work commences.
Without an agreement signed by both parties before work begins,
the status of the parties' relationship (and copyright) may be in
Since a work does not become "for hire"
unless the work falls within one of these nine narrow categories, a
written work for hire agreement does not always result in a work becoming
"for hire." For example, a novel, can never be a work for hire, because
it doesn't fall into one of the nine categories of works eligible for
work for hire status by non-employees.
|TIP! Obtain a "Back-Up" Copyright Assignments.
Since merely stating that a work is a work for hire may not be enough
(e.g., the work doesn't fall clearly into one of the nine categories),
a well-drafted work for hire agreement should also contain an assignment
of the entire copyright. Of course, many freelance writers and artists
will resist signing away their rights because they profit from recycling
Keep in mind that characterizing a work
as a "work for hire," could impose upon an "employer"
certain obligations relating to state worker's compensation coverage,
unemployment compensation, and other benefits for workers. So consult
with your tax advisor before commissioning a work or hire -- both copyright
and employee benefit issues may be involved.
|Case & Comment: The United States Supreme Court interpreted
the Copyright Act's "work for hire" provisions in 1989 in Community
for Creative Non-Violence ("CCNV") v. Reid, a dispute over ownership
of a sculpture commissioned by a nonprofit organization. The court
held that the artist was an independent contractor, not an employee,
since sculptural works were not one of the nine specific categories
of "commissioned" works listed in the Copyright Act, and no
written agreement between the parties existed. However, the court
sent the case back to the district court to determine whether a
jointly copyrighted work was created. Comment: CCNV was a
major legal victory for independent contractors. It stands for the
proposition that creators who produce work at the instance and expense
of a third party do not necessarily give up their copyrights in
the process. For hiring parties, it stands for the proposition that
just because you paid for it, doesn't mean you own the copyright.
|TIP! Make Certain Your Freelancer Obtains Permission
for Third Party Material. Special care must be taken when working
with freelancers -- especially if they use outside copyrighted material
in their own work. It is imperative that they secure the necessary
rights you need to exploit their contribution, and that those rights
are transferable. For example, if you hire a firm to design a web
site, make certain the responsibility for clearing rights is spelled
out. Make final payment contingent upon timely delivery of satisfactory
permission letters, and decide in advance, who will be responsible
for permission costs. You can make collaborators and contributors
mindful of what you need by asking them to "represent" in writing
that their work is original and not in the public domain. Have them
"warrant" that their work does not infringe any copyright
or other proprietary rights, including the right of privacy or publicity,
and that it does not contain material that is either scandalous,
obscene, libelous or otherwise contrary to the law. To further limit
your risk, ask them to indemnify and reimburse you for any damages
and costs you incur as a result of any breach of their "representations
B. Works Created by Traditional Employees
A work created by an "employee" within
the scope of his or her employment is automatically considered a work
for hire. These works do not have to fall into one of the nine narrow
statutory categories of works for hire and no written agreement is required.
Typically, "work for hire" situations involve independent
contracts, not employee-employer situations
C. Independent Contractor of Employee?
The term "employee" is a legal term of
art without precise definition. However, a worker is most likely to
be classified as an employee if the person who employs her has the legal
right to control the "method and result" of her work; provides
her with tools; pays her on a daily, weekly or monthly basis; and can
fire her. The IRS use a 20-part test, applicable for copyright purposes,
to distinguish between employees and independent contractors.
Unlike specially commissioned works, for
works where a traditional employee-employer relationship exists, no
work for hire agreement is needed. However to avoid any ambiguity, it's
a good idea to include a well-drafted statement in the employment agreement
acknowledging that any work created in the scope of employment will
be considered a work for hire. The employment agreement can also include
non-competition and non-disclosure provisions to protect your business's
An important issue that arises in the
context of employer-employee relationships is the ownership of works
prepared after-hours, or outside the scope of employment. Under the
Copyright Act, work product prepared outside the scope of one's job
is not generally considered a work for hire. Therefore, employers may
have to negotiate for such materials separately.
NOTICE: This article represents copyrighted material and may
only be reproduced in whole for personal or classroom use. It may not
be edited, altered, or otherwise modified, except with the express permission
of the author. This article discusses general legal issues of interest
and is not designed to give any specific legal advice pertaining to
any specific circumstances. It is important that professional legal
advice be obtained before acting upon any of the information contained
in this article.
LLOYD J. JASSIN is a New York-based publishing and entertainment
attorney in private practice. He is co-author of the bestselling Copyright
Permission and Libel Handbook: A Step- by-Step Guide for Writers, Editors
and Publishers (John Wiley & Sons, Inc.), available at bookstores
or at www.copylaw.com. Mr. Jassin has written extensively on negotiating
contracts in the publishing and entertainment industries, and lectures
frequently on contract and copyright issues affecting creators. He is
counsel to the Publishers Marketing Association and Vice Chair of the
Small Press Center. He may reached at Jassin@copylaw.com or at (212)
354-4442. His offices are located at 1560 Broadway, Suite 400, New York,
Adapted from the Copyright Permission & Libel Handbook (John
Wiley & Sons), by Lloyd J. Jassin and Steven C. Schechter.