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The 35-year copyright itchElizabeth Russell
That's easy: Your business does. Copyrightable material created by an employee in the course of employment is considered "work made for hire," and the employer, rather than the employee, is considered the "author" and therefore the copyright owner of such material. What if you retained an independent contractor to create that valuable material? In such case your business does not automatically own the copyright. That's right: Just because you pay someone to create material does not mean you own the copyright to that material. The independent contractor does. Unless there is a true employer-employee relationship, the person who creates the material is the "author" and, by law, the initial copyright owner. There are only two ways to obtain the copyright to material that a non-employee has created for you. I call the first way the "nine categories" method. If the material in question falls within one of nine statutory categories of work, and you and the contractor have a written agreement that the material shall be considered work made for hire, it can indeed be work made for hire and your business will be considered the author and copyright owner. But here's an important heads-up: In business, the vast majority of work you commission from a contractor will not fall into any of the nine categories. They are contributions to a collective work, contributions to a motion picture, translations, supplementary works, compilations, instructional texts, tests, answer material for tests, and -- my personal favorite -- atlases. Material that does not fall into any of the nine categories cannot be work made for hire. Period. It doesn't matter what you choose to call it. If the material doesn't qualify under the "nine categories" meth-od, the only other way you can obtain the copyright to contractor-created material is to negotiate and obtain from the contractor a written "assignment" of the contractor's copyright rights. In other words, the contractor must affirmatively transfer his interest in the copyright to you. Most businesspeople who knew this already think that once they've obtained that written assignment, they own the copyright forever. But here's another heads up: That's not true. Assignments and other transfers of copyright executed on or after January 1, 1978, can be terminated by the author (in your case, that's the contractor) at any time during the five-year period beginning at the end of 35 years from the date of execution of the transfer. Authors must serve a notice of termination not less than two nor more than 10 years before their selected termination date and, as you can imagine, there are a lot of other rules controlling this process. The important thing to remember, though, is that if a contractor/author properly exercises his right of termination, all rights to the material revert to that author or his estate. This leaves your business in the precarious position of having to choose between losing all rights to the material or negotiating a new agreement with the contractor. Can you defeat the 35-year rule contractually? No. The statute specifically states, "(t)ermination of the grant may be effected notwithstanding any agreement to the contrary." So don't go asking your contractors to waive their rights. This one is unwaivable. Bottom line: If the perpetual ownership of copyrightable material is important to your business, either assign the task of creating such material to employees, or be prepared to re-negotiate with contractors and their estates 35 years down the road. Elizabeth Russell is a Madison lawyer. She wrote the curriculum and teaches copyright management at Madison Media Institute. madison.com ©2009 Capital Newspapers. All rights reserved. |
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