Preserving Copyright in Your Samples, Specs, Promos and Mockups A Gagnier Margossian LLP White Paper

1.
Preserving Copyright in Your Samples,
Specs, Promos and Mockups
A GAMA White Paper
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2. Preserving Copyright in Your Samples, Specs, Promos and Mockups
INTRODUCTION: A BRIEF OVERVIEW OF COPYRIGHT LAW
So what does copyright law protect?
U.S. copyright law protects a work from the moment it is created, or
“fixed,” in a tangible medium of expression. This means as soon as you
create a work that is original, has at least some small degree of
creativity, and takes the form of something visible, tactile or physical,
federal law protects your work. Copyright protection ensures only you
have the right to reproduce, transmit, distribute, perform and make
derivative copies of your work.
As the original author of the work, copyright protection affixes
automatically, as soon as you create your work. You do not need to
register your work, publish your work or provide any ©’s or other forms
of copyright notice on your work (though doing all of these is highly
recommended).
If you are a corporate author, all of your exclusive rights under copyright
last for 120 years from the date it is created, or 90 years from the date it
is published. If you are an individual author, your copyright will last for
your entire life, plus an additional 70 years. So eat healthy—the longer
you live, the longer your copyright lasts!
If copyright belongs solely to the creator of the work, why
should I worry about losing copyright in my samples, specs,
promos or mockups?
Good question. Like any federal law, there are numerous exceptions to
an otherwise simple rule. For example, if your work is a “work made for
hire,” it might actually be your client, not you, who gets copyright in the
work. And even if you did have copyright, it’s possible you may have
licensed or transferred some or all of your rights, either intentionally or
by accident.
The following white paper is intended to outline each of these scenarios
and provide practical solutions for protecting your intellectual property.
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3. Preserving Copyright in Your Samples, Specs, Promos and Mockups
I. WORKING FOR HIRE
Even though you may be the artist, designer, author or creator of a
work, if you work for someone else, they may be treated as the original
owner of the copyright. These are called “works made for hire.” In these
cases, you never get copyright in your work.
There are two ways a work can be a work made for hire: (1) you are an
employee and you create the work for an employer, or (2) you enter into
a written work for hire agreement to create a work for someone else.
Both of these scenarios are discussed below.
A. Are You In an Employee-Employer Relationship?
As an employee, the copyright in any work you create belongs solely to
your employer – not to you. As an independent contractor or other
non-employee, the copyright in the work you create will usually belong
to you.
So which one am I?
This may seem like an easy question to answer—but both federal
copyright law and courts have complicated the inquiry of when someone
does work as an employee. Even if you have not signed a formal
employment agreement, you still might be considered an employee.
Conversely, even if you have signed a formal employment agreement,
you might be considered an independent contractor.
The law generally ignores what the hiring party or the hired party
call each other.
Instead, the law looks at whether the hiring party controlled the
“manner and means by which the product was accomplished.” In other
words, the more control a hiring party has over the work, the more likely
it is the hired party will be considered an employee. On the other hand,
if the hired party made most of the choices regarding how to complete
the project, it is more likely the hired party will be considered an
independent contractor.
Okay, but seriously, which one am I?
In some cases, the answer is easy.
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4. Preserving Copyright in Your Samples, Specs, Promos and Mockups
For example: a corporation hires you, pays you an annual salary, tells
you what to do and when to do it, makes you work bad hours with little
paid leave and forces you to report to a smug, over-caffeinated middle
manager. The very definition of employment.
Then there is the other end of the spectrum: a single client asks you to
build his website, makes general suggestions as to design but leaves the
artistic details in your capable hands, sets one deadline for the project
but does not care whether you build the site during business hours or at
3 a.m. while watching M.A.S.H. reruns, and pays you one lump sum for
the work. Ah, the life of the independent contractor.
Few cases are so clear-cut. In circumstances where the relationship
between the hiring party and the hired party is more ambiguous, a court
will weigh a number of factors—the so-called “agency factors”—to help
determine the nature of the relationship.
The table below summarizes these factors, and explains how these might
indicate either an employee-employer relationship or an independent
contractor relationship.
Suggests Suggests
FACTORS Employment Independent Contractor
Relationship Relationship
What skill is
Creating the work required Creating the work required
required to
little skill great skill
complete the work?
Who provided the
The hiring party provided
tools or materials The hiring party provided little
most or all of the tools and
used to complete the or no tools or materials
materials
work?
Most or all of the work was Most or all of the work was
Where was the work
performed on or at the hiring performed somewhere other
completed?
party’s premises than the hiring party’s premises
What is/was the
It was a long-term It was a short-term relationship
duration of the
relationship involving more involving one or only a few
relationship
than one project. projects.
between the parties?
Could the hiring The hiring party had The hired party had no
party assign complete discretion to assign obligation to accept any
additional projects? additional projects. additional projects.
The hiring party had total
Who set the work The hired party performed the
discretion to set strict work
hours? work whenever they wanted.
hours.
The hiring party paid the The hiring party paid the hired
What was the
hired party a salary, hourly party a single check or lump
method of payment?
wages, or some other sum, or a few installments, on a
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5. Preserving Copyright in Your Samples, Specs, Promos and Mockups
recurring payment. per project basis.
Only the hiring party was
The hired party was able to
Who may hire and able to recruit, hire and pay
recruit, hire and pay assistants
pay assistants? assistants to help out with
to help out with the work
the work.
The hiring party creates The hiring party never creates
Was the work part similar work all the time. similar work. They came to the
of the hiring party’s They were only outsourcing hired party specifically because
regular business? or using the hired party for this type of work is beyond their
additional help. area of expertise.
The hiring party is a fully The hiring party is just some
Is the hiring party a
formed partnership or dude who needed help on a
business at all?
corporation. project.
The hiring party provided
Did the hiring party medical or dental insurance,
offer an employee life insurance, a 401(k) or The hiring party offered nothing
benefits to the hired other pension or retirement except cash.
party? package, or any other non-
salary benefits.
The hired party filled out a
W-4 form. Portions of
payment were withheld from The hired party did not fill out a
What sort of tax
the hired party’s checks for W-4 form. Nothing was
treatment did the
tax purposes, including state withheld from the hired party’s
hired party receive?
and federal withholdings checks.
and Social Security
withholdings.
So which one are you? Do more of the factors lean toward independent
contractor or toward employee? Sometimes business relationships are so
ambiguous different courts will come to different results.
None of these factors on its own will determine the nature of the
relationship with any certainty, but all of the factors are relevant. Some
courts have also indicated that the last two factors (employee benefits
and tax treatment) might be the most important.
The Bottom Line: When you enter into a business relationship keep
these factors in mind, especially if you are intent on retaining copyright
in your work. Even if you are only creating a spec or mockup, if you can
be classified as your client’s employee your client will own copyright in
all the work you do for them. If you have not yet entered into a business
relationship (for example, if a client has expressed interest but has not
hired you to do any work) you cannot be considered an employee. Any
work you do before you are actually hired is almost always considered
your own work, and copyright will generally rest safely with you.
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6. Preserving Copyright in Your Samples, Specs, Promos and Mockups
B. Did You Enter Into an Agreement to Create a Specially
Commissioned Work?
Even if you can’t be classified as an employee, if you signed a “work for
hire” agreement, your client might own the initial copyright in your
“specially commissioned work.” They might even own copyright in the
sample work you made for them under the agreement.
A work for hire agreement is only valid if it meets two criteria:
First, the agreement must be in writing and must be signed by you and
the hiring party. Second, the work you make must fall into one of the
following nine poorly named categories:
1. Contributions to a “collective work”
2. Parts of a motion picture or other “audiovisual work.”
3. Translations
4. Supplementary works
5. Compilations
6. Instructional texts
7. Tests
8. Answer materials for a test
9. Atlases
A supplementary work? A collective work? English please…
Here are a few examples of some of the more confusing categories:
Contributions to a collective work include things like encyclopedia,
magazine or newspaper articles. Compilations are collections of already
preexisting works arranged in new ways. Supplementary works
analyze, summarize or provide some kind of insight about other works –
these might include forwards, introductions, conclusions, charts or
graphs. Atlases are, of course, collections of maps, bound in book form.
Yes, atlases made the list.
While most works do not fall into these categories, applying these
categories is a fact-specific inquiry. If you are unsure whether your
work falls under one of these categories, a GAMA attorney can help you
figure this out.
The Bottom Line: If you did not sign a work for hire agreement, your
work is not a specially commissioned work for hire. If your work does
not fall into any of the nine categories, your work is not a specially
commissioned work for hire. Even if you are unsure whether your work
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7. Preserving Copyright in Your Samples, Specs, Promos and Mockups
might fall into one of these categories, you can always be sure you are
not creating a specially commissioned work by refusing to sign any work
for hire agreement.
II. WHEN A CLIENT IS TREATED AS AN AUTHOR FOR
EXERCISING OVERWHELMING ARTISTIC CONTROL
Even though you might perform the act of creating your sample, spec,
promo or mockup, if your client had sole or very nearly sole control over
the artistic details of the work, the law might treat them as the author.
Here’s an example:
An award-winning filmmaker develops a storyboard for a documentary
detailing the discovery and salvage efforts of the Titanic. He details
cinematography, the type and amount of lighting to be used, specific
camera angles, and other detail-intensive artistic elements of the film.
To bring his vision to the screen, he accompanies the salvage crew to the
wreck site so he may collect shots using underwater cameras and
lighting rigs. But the filmmaker himself does not operate the cameras,
the lights, or any of the underwater vessels necessary to shoot the film.
So who holds copyright? The cameramen actually made the work. But
if the final product looks exactly like what the filmmaker had in mind,
isn’t he the author?
In this scenario, even though different cameramen, lighting technicians
and grips recorded the film, the court determined the filmmaker was the
sole author of the work. This was because the final product “duplicat[ed]
his conceptions and visions of what the film should look like.”
In most creative- or content-develop scenarios, it is unlikely a court will
find that a client exercised such a high degree of artistic control over
your work that the final product actually “duplicated” the client’s
“conceptions and visions.”
The Bottom Line: As long as you, the designer, developer or content
creator, exercise at least some small degree of creative control over the
final product, you will usually be credited as the author.
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8. Preserving Copyright in Your Samples, Specs, Promos and Mockups
III. GIVING AWAY COPYRIGHT: THE EXPRESS TRANSFER
Okay, so you aren’t an employee, you didn’t create a specially
commissioned work, and you exercised some creative control over your
work – chances are you are the original copyright holder.
But did you give away any of your rights to someone else?
As a copyright holder, you are allowed to transfer some or all of your
rights to another person or organization. You can assign copyright –
that is, give all of your rights away; or you can license one or a few
exclusive rights – grant someone permission to use your work in certain
ways. Licenses can be exclusive, where you give only one person
permission to use your work – or they can be non-exclusive, where you
grant someone permission to use your work, but reserve the right to
grant that same permission to others.
All transfers, except non-exclusive licenses, must be made in writing and
signed by the copyright holder.
The Bottom Line: Be on the lookout for transfer agreements hidden in
contracts with your clients. If you sign a contract that assigns your
copyright to your client, you will lose all rights in your work. If you are
not sure whether a contract you signed granted an assignment or
license, or what the license covers, a GAMA attorney can help you figure
it out.
IV. GIVING AWAY COPYRIGHT: THE IMPLIED LICENSE
Here’s where things get tricky.
What happens if you do work for a client, the client pays, and both you
and the client have some understanding of how your work will be used
by the client, but neither of you sign any agreement regarding copyright.
Enter: The Implied Non-Exclusive License (alias: a legal nightmare).
In situations where it is apparent from the relationship between you and
your client how the work was to be used by the client, the court will
imply or assume a license exists, even though you and the client never
executed a written agreement. But what this license allows a client to
do with your work is an open question – one a court will have to
interpret based on the specific facts at issue and the standard behavior
for the industry.
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9. Preserving Copyright in Your Samples, Specs, Promos and Mockups
At the very least, this type of license is non-exclusive. You can grant
similar licenses to others, and you are still free to use your work in any
way you like.
The issue of implied non-exclusive licenses is especially pernicious in
situations where you are creating a sample, spec, promo or mockup for a
potential client. For example, if you design a promotional or sample
work to try and land a client, what expectations do you and the potential
client have with regards to the sample work?
You might reasonably expect to retain all rights in your work, while they
might reasonably expect to be able to use the work for their own future
commercial use. There’s a good chance a court will interpret this kind of
transaction to grant a license limiting the client’s use of the promo or
sample work to entirely non-commercial and private purposes. But then
again, there’s a chance a court will not.
The Bottom Line: Clarity in a written agreement at the outset of a
business relationship can avoid headaches down the road. In cases
where you provide your various samples, mockups and iterations to a
current client, a clear written license agreement can protect both parties
from misunderstanding and future legal costs. This also ensures you
don’t leave your copyright ownership in the hands of a fickle or
unpredictable judge.
Having even potential clients sign a short license agreement can protect
your promotional or sample works, too.
A Quick Note on Terminating An Express or Implied Transfer:
Even if you transfer your copyright, it might be possible to terminate
your transfer and recover all of your rights after a number of years. If
you think you may have transferred your copyright and are interested in
terminating the transfer, a GAMA attorney can help.
CONCLUSION: THE UPSHOT OF PRESERVING COPYRIGHT IN
YOUR SAMPLES, SPECS, PROMOS AND MOCKUPS
1. If you are an employee, you never have copyright in your work.
2. If you are not an employee, but the client has exercised
overwhelming artistic control, your client might be treated as the
copyright owner.
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10. Preserving Copyright in Your Samples, Specs, Promos and Mockups
3. If you sign a work for hire agreement with a client, and your work
falls into one of the nine categories mentioned above, your client
will be treated as the copyright owner.
4. Even if you are the original copyright holder in your work, you
can transfer your rights by executing a written agreement.
5. Even if you don’t sign a written agreement, you can grant an
implied non-exclusive license to your client. You can ensure this
doesn’t happen by requiring your client to sign a clearly worded
license.
6. Even if you transferred some or all of your rights, you might be
able to get them back after a period of time with the help of an
attorney.
Works Cited
Cases
Effects Associates v. Cohen, 908 F.2d 555 (9th Cir. 1990).
Feist v. Rural Telephone Co., 499 U.S. 340 (1991).
Lindsay v. R.M.S. Titanic, 52 U.S.P.Q.2d 1609 (S.D.N.Y. 1999).
Reid v. CCNV, 490 U.S. 730 (1989).
Statutes and Other Materials
U.S. Copyright Act of 1976, as amended, 17 U.S.C.A. § 101, et seq. (West).
Restatement (Second) of Agency, § 220 (1958).
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