Copyright for Labor Lawyers: The Work for Hire Doctrine (Ch 7)

Does an employee, independent contractor, or corporate officer own original copyrightable materials authored by that person in conjunction with the relationship to the employer? We look to 17 U.S.C. Section 101 (the Copyright Act's definitional section) as a starting point:

A “work made for hire” is—
(1) a work prepared by an employee within the scope of his or her employment; or
(2) 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, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities. * * *

So, the employer owns the work if it is made by an employee "within the scope of employment" or if there is a written agreement (for certain works). To determine whether an individual was an employee, we look to the federal common law of agency, which was spelled out in a copyright case involving a sculpture called Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989). The factors (the "Reid factors") considered include:
- the hiring party's right to control the manner and means by which the product is accomplished;
- the skill required;
-the source of the instrumentalities and tools;
- the location of the work;
- the duration of the relationship between the parties;
- whether the hiring party has the right to assign additional projects to the hired party;
- the extent of the hired party's discussion over when and how long to work;
- the method of payment;
- the hired party's role in hiring and paying assistants;
- whether the work is part of the regular business of the hiring party;
- the provision of employee benefits;
- tax treatment of the hired party

The Second Circuit in Eisenberg v. Advance Relocation & Storage, Inc., 237 F.3d 111 (2000) applied the Reid factors (the federal common law of agency) to determine whether a hired person is an employee or independent contractor for purposes of applying the Civil Rights Act of 1964, 42 U.S.C. Section 200e ("Title VII"). In Eisenberg, the court noted that the parties could agree whether or not an employee would have intellectual rights to copyrightable work product, but that Title VII antidiscrimination protections could not be bargained away.

The work-for-hire provisions of the Copyright Act have been applied in a wide variety of employment contexts:

- rejecting a claim that the author of a screenplay was an employee of a purported co-author/co-producer, Price v. Fox Entertainment Group, Inc., 2007 WL 241390 (S.D.N.Y)(SAS)

- rejecting a claim that a woman who walked into a recording studio and sang a countermelody for Jay-Z created a "work-for-hire" (applying the 5 "strongest" of the 13 Reid factors) Ulloa v. Universal Music & Video Dist. Corp., 303 F. Supp.2d 409 (S.D.N.Y. 2004)

- rejecting a teacher's claim that his Fourth Amendment rights to be free from illegal seizures was violated by confiscation of teaching materials created while he was a teacher and finding no copyright interest, Shaul v. Cherry Valley-Springfield Central School Dist., 363 F.3d 177 (2d Cir. 2004

- in a case involving the executor of her will, analyzing choreographer Martha Graham's relationship to her eponymous foundation at varying points in her career and making different findings as to whether works were "works-for-hire" depending on how she worked and was paid during her lifetime, Martha Graham School and Dance Foundation, Inc. v. Martha Graham Center of Contemporary Dance, Inc., 380 F.3d 624 (2d Cir. 2004)

- permitting copyright infringement claims against former employee who took, modified and sold on behalf of competitor a copy of software, Jamison Business Systems, Inc. v. Unique Software Support Corp., 2005 WL 1262095 (E.D.N.Y.)

- denying summary judgment motion made against police union employee who wrote songs such as "Rudy the Fox" and "Badillo Beat" for childhood abduction awareness programs. Brower v. Martin, 446, F. Supp.2d 232 (S.D.N.Y. 2006)

As former employers increasingly seek to use the Copyright Act's damages and attorneys fees for theft of corporate materials, labor and employment lawyers will be confronted with these issues.