Work Made for Hire, Copyright Ownership and Assignment

April 26, 2011

The copyright of a work produced by an employee in the course of her employment is owned by her employer. The copyright of a work produced by an independent contractor is either owned by her or, if it is a work made for hire, it is owned by the contracting party. For a work to be a "work made for hire," it must fall into one of the narrow categories enumerated in the Copyright Act, namely

a work specially ordered or commissioned for use as a contribution to a collective work, as a 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.

In addition, the parties must "expressly agree in a written instrument signed by them that the work shall be considered a work made for hire."

Since poetry, memoirs and novels as well as works of criticism and scholarship are not on this short list they can never be works made for hire. Rights to exploit such works can be licensed and the copyrights can be sold, but at their inception they are owned by the creators. Typically, if there is any question whether a work is made for hire – let's say the work is ghostwritten – the contracting party will require the writer to execute a work made for hire agreement and an assignment of copyright. Once a copyright is assigned the writer has no further ownership interest. More importantly, if the contracting party defaults on its obligations under the contract the writer has a contract claim but cannot reclaim the copyright.

These general principles of work made for hire come to life in a recent federal district court case in the Southern District of Florida, Hermosilla v. The Coca-Cola Company, 10-civ-21418 (February 23, 2011). Coca-Cola hired the plaintiff to adapt a song to include a verse of Spanish language lyrics for a marketing campaign. Providing lyrics is not a work made for hire, but in an exchange of telephone calls and email messages Mr. Hermosilla agreed to a proposal from the Vice President of Marketing that he receive credit for the work in exchange for an assignment. He stated in his email: "For the adaptation, you may consider it a work for hire with no economic compensation to that respect." As a matter of law, receiving credit for a work is deemed adequate consideration to support a copyright assignment. The court cited an Indiana state court decision for this proposition.

Mr. Hermosilla attempted to withdraw the assignment because the Coca-Cola contract did not provide for him to receive credit, but it was too late. He had already accepted Coca-Cola's offer; and Coca-Cola had accepted his counter offer for "credit." Section 204 of the Copyright Act provides that "(a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent." Courts have found that emails constitute signed writings. In a 9th Circuit case, the court held that "Section 204's writing requirement is not unduly burdensome.... The rule is really quite simple.... It doesn't have to be the Magna Charta; a one-line pro forma statement will do."

Mr. Hermosilla, however, is not without a remedy, but it cannot be in federal court. The court stated in a footnote that the plaintiff's "remedy for any such violation would be a claim for breach of contract, and no such claim is properly before this court."