Involved?
contractor is hired to complete a work,
that contractor may automatically retain
ownership therein and to the copyright
in the work. Take the example above.
Although you hired a third-party software
developer specifically to create software
for your machinery, you may not be the
legal owner of that software absent a
specific agreement to that effect. When
determining whether a contributing party
is an independent contractor, the follow-
ing factors, although not dispositive of
the issue, are important considerations:
lar business of the employed; and/or
tools and place of work?
True to most issues involving copyright
law, courts are not consistent in their
application of the factors, though the
inconsistencies provide endless fodder
for law review articles. Consequently,
any application of these factors to a
particular set of facts is problematic and
unpredictable. Much of this uncertainty
can be avoided by addressing the owner-
ship of the copyright on the front end of a
development project. Implementation of
a simple and straightforward agreement
(or the addition of well-planned copy-
right clauses in the underlying contract)
can avoid such eventual headaches,
heartaches and litigation expenses
required to determine copyright owner-
ship in the courts.
As a precautionary measure, you
should always execute a written and
signed work-for-hire agreement with all
third-party contributors. Such an agree-
in and to the commissioned work, and
prepared on your behalf, will be exclu-
sively owned by you. As a "catch-all" ap-
proach, it is also a good idea to include
an overarching copyright assignment
clause in the agreement itself rather than
relying on the creator executing an as-
signment after the project is completed.
If the relationship between you and the
creator of the work you commissioned is
such that it does not meet the require-
ments for a work-for-hire relationship,
such a copyright assignment will transfer
title to you up front and, most impor-
tantly, without additional payment or
negotiations.
rights in a Preexisting work?
is often a "derivative work" that is based
upon one or more preexisting works.
Derivative works are extremely common
in these industries and the existence
of preexisting works should always be
considered when you hire a software
developer to create computer or software
programming. For example, because the
rights in and to a derivative work extend
only to the "new material" created and
not to the preexisting work, the scope
of the copyright in the derivative work
may be limited. Additionally, the rights
to the preexisting work are retained by
the original author thereby potentially
subjecting you to liability for using or
misappropriating the preexisting works.
This alleged exploitation of the deriva-
tive work may, therefore, subject you
to liability for copyright infringement,
an award of monetary damages, and the
prohibition of future use.
Has Anyone offered to Publish
the work?
artist, writer or musician) it is critical
that you truly understand the nature of
the "deal." Entire industries are devoted
to the purchase of copyright interests
in and to literary and musical works
in exchange for marketing and "deal
promoters) kick back a portion of any
deal they procure to the artist, writer or
musician in the form of royalties. While
promoter-based deals are good for some
creative types, particularly those who are
not interested in "the business of it all,"
they may not be a good fit for everyone. It
is important for you to be counseled and
advised of the limitations of your remain-
ing rights and the possibility of never
receiving a royalty payment even if the
promoter inks a deal.
A great and shining example of an
artist who maintained control of the
copyright in and to her work is J.K.
Rowling, author of the acclaimed
you cannot find Harry Potter on iTunes
for download. You must go to an e-
commerce site set up by Rowling herself
(http://www.pottermore.com/), one in
which she retains a large proportion of
the purchase price, in order to download
and listen to audio versions of her books.
While an author may want to enter into a
deal with a promoter for the written book,
the copyright in and to the audible ver-
sion or the movie rights may be retained
by the author. These examples are just
a taste of the many ways in which a
copyright can be divided and subdivided
for licensing or marketing purposes. This
is a strategy brilliantly used by Rowling
which has allowed her to maintain for
herself many of the rights and opportuni-
ties routinely given away by authors.
deal is done," it is critical to ask your-
self, "With whom am I working?" In law,
just as in medicine, the same principle
applies "prevention is the best medi-
cine" and, with collaborative endeavors
as with medicine, the precautions you
take at the outset may make all the dif-
ference in the outcome or recuperation
(legal battle) that ensues.