Authors own their copyrights. It is their intellectual property to do with as they will. But, in some instances either by statutory fiat when the work is a “work made for hire” or by written contract whereby author transfers his rights to another party it isn’t their property.
A “work made for hire” is either “a work prepared by an employee within the scope of his or her employment”; or if it is “specially ordered or commissioned” it can be a “work made for hire” if it falls within one of the narrow categories enumerated in the Copyright Act, namely, “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.” In addition for the “specially ordered or commissioned work, the parties must “expressly agree in a written instrument signed by them that the work shall be considered a work made for hire” [Copyright Act, §101 (Definitions)].
Section 201(b) of the Copyright Act provides that “[i]n the case of a work made for hire the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.”
It should not be considered unusual for an employer to reinforce its statutory rights by requiring “employee” to acknowledge that “all the results and proceeds [of her service for the Company] during [her] assignment … including but not limited to, all written, graphic, dramatic, literary or pictorial works or materials … shall be works-made-for-hire, as that term is defined in the Copyright Act of 1976. Independent contractors whose product is not a “work-made-for-hire” typically acknowledge that nothing in their agreement “will create the relationship of agency or partnership or employer and employee” between them and the commissioning party. In uncertain situations, the agreement will contain a provision that the commissioning party “shall be the proprietor of the work and of all rights therein throughout the world including, without limitation, the copyright and all rights under the copyright as provided in the Copyright Act of 1976.” The statutory rules for transferring “rights comprised in the copyright” are set forth in §204 of the Copyright Act. The requirement for an effective assignment is not “unduly burdensome.” In the words of the court in Effects Associates, Inc. V. Cohen, 908 F.2d 555, 557 (9th Cir. 1990):
it necessitates neither protracted negotiations nor substantial expense. The rule is really quite simple: If the copyright holder agrees to transfer ownership to another party, that party must get the copyright holder to sign a piece of paper saying so. It doesn’t have to be the Magna Charta; a one-line pro forma statement will do.
These general principles of work-made-for-hire and work that falls outside of it come to life in litigated disputes. It is illustrated in a recent federal district court case in the Southern District of Florida, Hermosilla v. The Coca-Cola Company, 717 F.Supp.2d 1297 (2010), aff’d 11-11317 (11th Cir. 11-3-2011).
The defendant’s assignor in Hermosillahired plaintiff (a Mexican national) to adapt a song to include a verse of Spanish language lyrics for a marketing campaign. Providing lyrics is not a work made for hire, but in email messages to Universal – that it could “consider [the adaptation] a Work for Hire with no economic compensation” other than “one dollar” – plaintiff agreed to a proposal that in exchange for an assignment he would receive credit for the work. The district court temporarily enjoined Coca-Cola from advertising, selling, distributing, or disseminating the Spanish Celebration Mix unless it attributed credit to Vergara as the adapter of the song, but subsequently upon a fuller record the district court granted a summary judgment in favor of Coca-Cola. It ruled that since Hermosilla agreed to transfer his copyright interest in his adaptation to Universal, which assigned its rights to Coca-Cola, he no longer had any copyright in it.