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Work for Hire: The Copyright Office's Online Registration Problem

By Elizabeth Russell

When it comes to copyright’s “work made for hire” doctrine, misunderstandings abound. And as it turns out, the Copyright Office itself may be contributing to the confusion.

Bottom line: it’s impossible using the Copyright Office online registration system (eCO) to register work that one company has engaged another to create, without incorrectly identifying the work as work made for hire.

With apologies to those for whom this is rudimentary, let’s start at the very beginning.

• General rule: The person who creates copyrightable material is the “author.”
• Ownership of copyright vests initially in the “author” of the work (17 USC §201[a]).
• As its owner, the author can keep the copyright; license all or parts of it to others; or assign ownership of the entire copyright to another party.

The “work made for hire” (WMFH) doctrine creates exceptions to these general rules. If WMFH applies, the creator of the work is not considered the author, and never owns the copyright -- even for a moment.

If we suspect that WMFH might apply, the threshold question is whether the work itself qualifies as WMFH. There are only two ways work can qualify as WMFH:

1. If the work is prepared by an employee within the scope of his or her employment; or
2. If the work is specially ordered or commissioned for use as:
a. A contribution to a collective work;
b. Part of a motion picture or other audiovisual work;
c. A translation;
d. A supplementary work;
e. A compilation;
f. An instructional text;
g. A test;
h. Answer material for a test; or
i. An atlas

Many people think if they paid someone else to create copyrightable work, it’s automatically WMFH. They also think that if in a contract they call the work WMFH, it is. Neither is true. If the person who created the work is an actual employee and created the work in the scope of his or her employment – OK. It’s WMFH. Otherwise, no matter who paid and no matter what a contract might say, the work is not WMFH unless a.) the work itself falls into one of those nine categories listed above; and b.) a written agreement is in place specifying that the work is WMFH.

Given these requirements, a lot of work that people assume to be WMFH – really isn’t. And as a result, many people who think they own the copyright to such work, really do not.

Assuming the work actually is WMFH, the employer or other person for whom the work was prepared is considered the “author” and thus owns the copyright from the very beginning.

Our problem, however, involves registering work that was created by an organization (as opposed to an individual) and is not WMFH.

Here’s the situation.

Client A engages Company X to develop a computer software application (or any other type of copyrightable material). Is the work WMFH? No. Company X is not an employee of Client A, and the software application does not fall into any of the nine categories of work that could, possibly, be WMFH. Knowing this, Client A obtained from Company X a written assignment of copyright to the software application. Had Client A not done this, Client A would not own the copyright. But Client A was well advised, and now (because of the assignment) does own the copyright.

Great. Now Client A goes to eCO to register its copyright in the software application.
Q: Who is the author?
A: Company X (because Company X created the work.)
Q: Who is the claimant?
A: Client A (because of the assignment.)

But here’s the problem: eCO’s online form doesn’t allow us to enter an organization as the author. It would allow us to enter an individual as the author and then indicate that copyright was acquired by written assignment. But if we enter an organization (Company X) as the author and then (correctly) indicate that the work is not WMFH, the following error message pops up: “If an organization is named as author, the ‘work made for hire’ question must be answered ‘Yes.’”

I pointed this out to the Copyright Office and our exchange went something like this:

Me: An organization was engaged to create the work, but it’s not WMFH and copyright was transferred by written assignment.
CO: You have to indicate that it was WMFH.
Me: But it isn’t.
CO: You have to indicate that it was WMFH.
Me: But it isn’t.
CO: Say it anyway.

See the problem?

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This page contains a single entry from the blog posted on December 1, 2010 10:55 PM.

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