The Work For Hire Doctrine - A Primer For Freelancers

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It strikes me that in the eight months I've been curating this blog, I've never actually explained the Work For Hire doctrine in any meaningful way.  I've only tiptoed around it, and that's just ridiculous when you consider the fact that artists generally aren't independently wealthy and need to work for a living.  Since most artists make their living by creating their work on someone else's dime, that means they're relying on the Work For Hire doctrine even when they don't realize it.

I bring this up because last Thursday I hosted an alumni-only webinar for my alma mater on important legal topics for artists and artrepreneuers and I made the Work For Hire doctrine a prominent part of that presentation. You can check out the slides from that presentation here if you're interested.  Based on some questions I got during the lecture, I decided that now was the time to discuss Work For Hire and clear up some important misconceptions about it (especially as it pertains to freelancers) that seem to throw people for a loop.  So without further ado, here's my brief primer on Work For Hire.  Buckle up, it's about to get informative!

What Is Work For Hire?

The Work For Hire doctrine is a very specific legal principle that arises under U.S. Copyright Law.  The basic premise is that in certain situations, an employer will automatically own the copyright to work you do for them as a matter of right.  But the manner in which an employer can assert that right depends heavily on whether you're hired as an employee or an independent contractor (or freelancer, to use the non-legalese equivalent).

The Employee Work For Hire

If you're hired as an employee, the work you create for your employer doesn't belong to you, it automatically belongs to the employer.  No ifs ands or butts. See, in employment situations, the ownership over a copyright to a piece of art is no longer determined by the artist's handiwork; it's determined by the motive and desire of the employer.  How will you know if you're in an employment situation?  Look for the traditional trappings of employment, like salary, benefits, co-workers, office, boss, limited control over your work, etc.  If you find yourself in this situation, then unfortunately, the only way you can retain a copyright to work you've created for the employer is if the employer gives it to you in writing.

Here's an example of how that plays out: if a company hires you to design a logo and website for them, but you're paid a salary, you work out of their office, and your employment is indefinite (as opposed to job-specific), that probably means you're an employee.  You won't have any rights of ownership over the work except the right to display that work in a portfolio.

...But you and I both know that most artists don't work as employees; more often than not they work as freelancers.  And when you're hired as a freelancer, the rules change dramatically.

The Independent Contractor/ Freelancer Work For Hire

If you're hired as an independent contractor or freelancer (you should look for factors like greater control over the work, using your own equipment, working on your own time, short employment periods, etc.), the employer will own the copyright to your work as a matter of right ONLY if all of these requirements are met:

  1. The work is custom-made/ commissioned
  2. Both parties agree in writing that it's a Work For Hire
  3. The work falls into one of these nine categories: (A) a contribution to a collective work, (B) a 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. [I haven't the faintest idea why these nine types of works are singled out, especially the last four; I suppose we can just chalk it up to a senator or congressman with an overzealous textbook lobbying group in his state.]

So if you're a freelancer, this means that you will own the copyright if any one of these three requirements isn't met!!  Let me repeat that because it's super important... your work must meet all of these requirements to be a Work For Hire; if just one of these requirements isn't met, it isn't a Work For Hire and the employer doesn't get the copyright.  One of the biggest misconceptions I see with freelancers is that they usually assume once they complete the work, they no longer have any ownership rights over that work and they walk away, not realizing that they still own the copyright.

Let's return to the website example to see how that plays out in the real world.  You're hired to design a logo and website for a company, but you do the work on your own computer, on your own time, and you send the company invoices for your work.  The work is obviously custom-made and let's even say that you and the employer both agree in writing that it's a Work For Hire.  Well, it isn't, because web and logo design aren't any of the previously mentioned nine categories.  That means it's not a Work For Hire and you retain the copyright to your work.

On the other hand, if you were hired as a cinematographer on a film, then as long as you and the employer agreed in writing that it's a Work For Hire, then the copyright WOULD be taken by the employer, since films are one of the nine categories considered under copyright law. If you're a film producer and you're hiring above and below the line talent, it's a good practice to put in writing that the work these independent contractors do are Works For Hire because you don't want to get sued for copyright infringement.  Remember a few months ago that anti-Islam film that caused all those riots in the Middle East, "The Innocence of Muslims"?  Well one of the actresses, Cindy Lee Garcia, sued the film's producer Nakoula Basseley Nakoula for copyright infringement.  As it turns out, even though their employer/independent contractor relationship met most of the requirements (custom work, motion picture), there was never a written agreement between the two that it was a Work For Hire.  Unfortunately for Nakoula, he has bigger problems than a copyright infringement lawsuit (for example, the jihad against him by radical Muslims for his film's denigration of the Prophet).

Of course, even if your employer has no right to the copyright, you can always convey the copyright (through sale or gift) to the employer if you choose to; the employer only has a right to it in the circumstances I mentioned above.

A Bundle of Sticks

Let's say you're a freelancer and you retain the copyright to the work you did for someone, that doesn't mean you can do whatever you want with it.  After all, someone paid you for that work and they have an expectation that no one will try to profit off of it... even the artist.  It's a reasonable assumption.  When you do work for someone, you can't just treat it like it's yours, even if it is.  That's because ownership isn't the only right that accompanies a copyright.  There are several other rights (such as the right to display, the right to make copies, the right to make derivative works, among others) that go with a copyright as well.  We copyright attorneys refer to this as the "bundle of sticks" and ownership is only one.  When you're paid to do a work of art at someone's request, you end up giving up a lot of those rights, even if you retain ownership.  If you were to exploit the work as if you had complete dominion over it, you could actually end up facing a variety of copyright or trademark infringement issues over exploiting your own work, and that's a pickle you don't want to be in.

So now you may ask "Greg, what's the point of owning a copyright to the work if I can't exploit it?"  Well, chiefly it's because you may want to limit how the employer uses and profits off your work.  Since you both possess some of the rights to the work and neither of you possess all of the rights, both parties are limited in their abilities to exploit that work.

How To Move Forward

So you own the work you did for someone else but now you can't really do much with it, so what do you do?  Maybe it's better to set up some sort of licensing agreement with the employer that's renegotiable at specified intervals.  Maybe it's better to convey the copyright outright and then walk away from the work.  It really depends on the situation, the client, and the potential for profitability of the work you do (for example, if you design a logo for a company and the company becomes famous, the potential for financial exploitation is probably much greater than if you do a mural for a client's building).  As far as I'm concerned, one thing is absolutely clear: if you're a freelancer, you need to discuss what to do with that copyright in every contract you sign with a client/employer.  After all, there's no reason you both can't continue to profit off the work you were hired to do.

And if you're an employee... well just take solace in the fact that you have a job.

Greg Kanaan

The [Legal] Artist, Boston, MA, USA