Copyright Ownership in Works Created For You by Others

May 3, 2013, 5:32 PM

An unfortunate scenario we see repeated too often is the one in which someone pays someone else to create copyrightable material for them, and later learns that they did not end up owning everything they thought they paid for. This problem can manifest itself in the context of advertising materials, logo designs, website text and graphics, software programming and anything else that is subject to copyright protection.

The problem is that the copyright in any creative work is owned by the person who does the creating, unless their copyright is effectively transferred to the party who paid them to do it. Even though the agreed price for the work is paid to the creator, unless the copyright in the work is effectively transferred to the buyer, the right to reproduce the work for later use and benefit will remain with the creator. With employees this is not a problem, because copyright law provides for ownership by their employers of the copyrights in works created by them in the course of employment. But the problem exists for all works created by freelancers and other independent contractors.

While there may be some cases in which the party who paid to have something created for them by someone else can prove from surrounding circumstances that they own the copyright because the thing created was a work made for hire, the only truly safe course of action is to obtain a written agreement that the work is a work made for hire, and/or an explicit assignment of the creators copyright in the work. Because not all creative materials fit within the finite definition of things that can be works made for hire under the Copyright Act, it is prudent in every case to include appropriate transfer language in the agreement covering the engagement to create the work. A very short agreement can be used to tend to this concern, and it is one of those cases where an ounce of prevention is truly worth a pound of cure. --Robert E. Smartschan