28 Apr Work for Hire Doctrine, Pt. 2
Last time, I talked about the basics of the work for hire doctrine. For creative professionals, freelancers, and businesses providing creative services, understanding the boundaries of Work for Hire is critical so as not to throw away important rights or claim rights that don’t exist. Today, I will talk about the contract considerations that should be included in any services agreement between creative professionals and their clients.
1. Be clear on the Client’s end product. The nature of the Client’s end product is critical to determining if you are operating on a Work for Hire contract. Unless the work is within the nine statutory categories, you will need to have a different section on the copyrights and assignment of copyrights. Simply because a client hires a creative professional to prepare a product does not make it a Work for Hire. For example, an independent graphic designer creating a new logo for a company likely does not fit into the nine statutory categories.
2. Make certain your services contract includes a Work for Hire provision. The Copyright Act clearly states that in order for the project to be considered a work for hire under the specially commissioned provision, the agreement must state the product is a work for hire. While forgetting this step may benefit the creative professional hired, vindicating that right could be expensive (read litigation).
3. Make sure you are “hired” and “paid.” Inherent in the work for hire doctrine is the concept that the creator is being compensated for her work. If the creator is not paid, can she be considered to have been hired? Probably not, but it may not be that simple, and again could be costly to vindicate the rights (more litigation). A better solution, make sure to state in the written agreement that copyrights do not transfer until full payment is received.
4. Retention of some rights. While the party commissioning the work is entitled to the copyrights for the final product, carefully consider whether interim or draft products are included in the transferred rights. Also, the creative professional should retain a portfolio right which allows the creative to advertise her work to generate more business for the creative professional.
5. Rights clearance on content. If your client is providing you content, such as text, graphics, images, photos or anything else that will be used on the site, check to ensure the client has the rights to use the material. Copyright and trademark violations can be very expensive and you should take steps to include in your contract not only warranties that the client has rights, but also that your contract includes an indemnity provision to protect you from unwanted legal fees. Tell clients that “fair use doctrine” generally does not apply to commercial use of images, even stock photos.
This is not an exhaustive list of contract considerations to be reviewed in a work for hire situation. But when it comes to the copyrights of the work, the above are the most important to be considered. The parties should draft a clear contract, one understood by all.
If you want help preparing clear form contracts or if you have questions, please contact me.