Businesses constantly create materials such as brochures, drawings, or other documents that may be protected by copyright laws. Such materials may be created by employees or others paid to create them. As long as the materials consist of “original works of authorship fixed in any tangible medium of expression,” copyright protection may be available.
Unlike patent or trademark protection, copyright protection attaches to the materials upon creation. Publication is no longer required to invoke copyright protection, nor is state or federal registration; however, registration is often desirable because it may establish a public record of ownership, is a condition to bring an infringement action, and may entitle the owner to statutory damages and recovery of legal fees and costs incurred in any infringement case.
Copyright protection inures to the author of the materials. The person or persons who created the materials generally are considered the author, unless the materials are considered “works for hire.” A “work for hire” is “(a) a work prepared by an employee within the scope of his or her employment; or (b) a work specially ordered or commissioned for use as a contribution to a collective work, as 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.” The party that ordered or commissioned a work for hire is considered the author for copyright purposes.
Materials created by an employee belong to his employer if created within the scope of employment. The existence and scope of the employer-employee relationship may be established by reference to a variety of factors including, but not limited to, the employer’s control over the means and methods of creating the materials, use of the employer’s tools or equipment, creation of the materials within the customary working hours and on the employer’s premises, inclusion in payroll and benefits plans and coverages, and hiring and firing authority. If an employer-employee relationship exists and the materials are created within the scope of employment, no written agreement is required and the employer will be considered the owner, even if the materials are outside the nine categories specified in the definition of a work for hire.
Materials created by an independent contractor belong to the principal only if there is a written agreement and they are within the specified categories. The agreement should be executed before the work begins. An agreement may relate to materials beyond the nine categories, in which case the independent contractor will be considered the author, but the principal will be the owner of the copyright. Care must be exercised in the preparation of any agreement to ensure the parties clearly determine ownership rights, which will affect who may claim copyright protection and the control over use of the materials and any derivative work or application. License agreements providing specified royalty or royalty-free use rights are often used to provide each party certain benefits relating to the materials created.
If you have a question about works for hire, please telephone a member of the firm.