Saturday, January 31, 2009

Work for Hire

One issue that people often overlook when drafting agreements involving creative works is the copyright concept of “work for hire.” Failing to come to a clear understanding of the parties intention can cause unnecessary conflict that neither party really benefits from.

What is Work for Hire
Simply put, work for hire addresses issues of copyright ownership when the work has been created for the benefit of someone other than the creator. Typically, the owner of a copyrighted work is the person who creates it, however, if a work is deemed to be a Work for Hire then ownership belongs to the hiring party. Work for hire situations occur in two basic ways; 1. works created by employees and 2. works created by independent contractors.

Federal law states that Works 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. (17 U.S.C. sec 101)
Employee Presumption
Works created by employees in the scope of their employment are presumed to be works for hire and are owned by the employer. The main question in these situations is whether the work was created in “the scope” of the employee’s employment. For example, the janitor of a publishing company is not not responsible for writing manuscripts, however, he might be responsible for maintaining training materials related to his job - the manuscript would be outside the scope of his employment, while the training materials would belong to the company as a Work Made for Hire.

However, many works are created in situations other than employee/employer relationships. In the case of professionals like graphic artists, photographers, or web page designers a work may be created under the terms of a contract. In these cases, if the work falls within certain categories of works (it may also be a work for hire. These guidelines require that the work be of a certain type, specifically created for the hiring party, and that the parties must explicitly state in writing that they intend for the work to be a work for hire.

For the creative professional, the distinction of what is and is not a work for hire is important. Clarification of the issues from the start is a great method of avoiding misunderstandings down the road.

Friday, January 30, 2009

Forum Selection in Creative Commons Licenses

Users of Creative Common's licenses beware!

Chang v. Virgin Mobile USA, LLC
2009 WL 111570 (N.D.Tex. January 16, 2009)

Texas plaintiffs posted a photo to a popular picture sharing website using a Creative Commons licenses. The photo was then down loaded by an Australian company who used the photo inconsistent with the Creative Commons 2.o license and Plaintiff's wishes. Plaintiff sued Defendant in a Texas court and Defendant moved to dismiss for lack of jurisdiction. While many factors were considered, of particular note is how to court pointed out that the license did not require the license to take place in Texas.

In fact, the Creative Commons license used specifically does not contain either a forum selection clause or a choice of law clause that would outline where cases should be heard and under what state law a dispute will be analyzed. T he Creative Commons FAQ specifically notes that the selection of jurisdiction in the license

These clauses are commonly used in most transactions to provide some guidance to the parties to know where and under whose laws a dispute will be heard - to avoid problems such as the one in the Chang case.

While I understand the passion for Creative Commons licensing, it is this type of outcome that highlights for me why licensing parties should take a step back and make sure they really understand what they are doing when using these licenses. It also raise the question in my mind of whether licensors should consider making some additions to these terms such as adding in something stating the residency of the licensor, that the license is entered into under the laws of licensor and that all disputes will be heard in the licensor's state/forum.

Monday, January 26, 2009

Baseball Uniforms as Trade Dress: MLB v. Donruss

An interesting case was recently filed involving baseball card manufacturer Don Ross and Major League baseball. Among several counts involving, minor league players, retired players and current players is a claim that that Donruss inappropriately used the trade dress of the former Major League players. Interestingly, the complaint seems to indicate that there isn't a claim of trademark infringement related to the cards with the former players. While it is not spelled out in the complaint, it appears that the claim is that even though the logos have been removed from the pictures of these players (thereby avoiding the trademark claim) that because the colors and other parts of the uniform are visible, the trade dress has been infringed.

It is standard practice to remove the logos on licensed memorabilia of sports figure, but if this case plays out in favor of MLB, it would appear players will have to be completely stripped of any identifying indicia to avoid the claims by MLB. Trade dress must be distinctive and non-functional ~ while I will admit to not being a major sports fan, but it seems to me that proving these elements is going to be a difficult task for MLB. If in fact MLB is claiming a trade dress in the uniforms and is successful, it raises all sorts of issues for merchandisers, former players, and sporting good manufacturers.

The complaint has been loaded online at

Monday, January 12, 2009

Business and the Law Seminar

This evening I had the pleasure of giving a presentation at Women Venture to several women working to develop and start new businesses. I gave a presentation entitled Business and the Law which covered a variety of issues related to protecting the business owner's rights and managing their liability risks.

While it is easy to focus on the doom and gloom of the big picture economy, hearing the plans of these business women highlights the importance of not allowing the stories in the news to prevent businesses from moving forward. Opportunities do exist -people simply need to keep an eye out for the right situations. People wiling to take the risk at this point will be well situated when better economic times come along.

For more information on Women Venture and their programs, go to

Friday, January 9, 2009

An Oldy But Goody: Copyright & Fireworks

The following is from a response I made to a listserv (remember those?) over ten years ago. I got to thinking about the subject again yesterday after The Colbert Report made a reference to a fireworks display I worked on a long time ago.

    Date: Tue, 06 Oct 1998 22:59:52 -0500

    I regret that I have not been looking at the list for a few days, as this is a topic I may be able to shed some light on.

    For background, prior to entering law school I was employed by a firework display firm with my primary responsibility being in the area of... you guessed it... choreography and design of large scale displays set to music (referred to as pyromusicals).

    It was standard for all of our work to be submitted to the copyright office for registration and to my knowledge they were always accepted. There is a great deal of work that goes into choreographed displays, timing colors, patterns, rhythm, intensity, placement, sound and so on are all factors that are put into artistic displays. In other words, a great deal of expression is put into the work. This information can then be put into a variety of script forms (for computer or electric push buttons) for the display to be fired by technicians in the field in a manner that is choreographed to the pre-selected music. As a result designers develop reputations and styles. Some companies develop unique combinations of songs to specific types of fireworks. Indeed, there are competitions for displays all over the world.

    As for some of the comments made so far.

    Can a display be fixed? Yes... a script is written containing information regarding when and what is fired. This can be analogized to both the computer script and the ballet.

    Is a display repeatable? Absolutely! the show you see in NY may be also used in FL. Or it may be repeated every night of a state fair. The best example is Disney (the nations largest consumer of fireworks) which has developed elaborate firing systems to place the shells (a.k.a. bombs) EXACTLY in the same place each night.

    Will the copyright office take a registration for this? Yup.

    Now does this mean that every display on the 4th is copyrightable? I doubt it. In reality the bulk of displays are done in an impromptu manner by hand shooters with only basic planning going into pacing, which is usually dictated by a safety factor of how fast can they be fired without causing injury, while dragging it out long enough that the customer feels they got a good show. However, a great deal of planning can go into a choreographed display. An example of the difference is: shooting 100 salutes (the loud ones) at the end of God Bless America is pretty standard fair, but firing 20 shells custom made to fit into a two minute song fired from multiple locations and scheduled to explode at precise moments during assorted crescendos while keeping in mind how it will look from a 3 mile radius from street level to the tops of buildings probably is.

    As for the notice that started this thread... I've never heard of a company trying to enforce their rights like this, however, it seems to me that if a photographer takes a photo that exploits the designs of a "designed" display (e.g. shell placement, color, etc) the designer should have a right to compensation. Additionally, if a designer has an original way of expressing something (e.g. a new way to choreograph a song) it seems to me that other companies shouldn't be able to come along and copy it. There is no reason why a display should be treated any different that a song, ballet, or painting. While choreography is the easiest thing analogize this to, in fact the art of display design is similar to musical creation, sculptural works (you must design a display in 3 dimensions to be seen from all angles), a painting (often the colors hanging in the sky in patterns or combination is the intent of the design), or a dance (rhythm, placement, and pacing).

    As a side note I should mention that some shell builders have also attempted to copyright the designs of their shells. This is particularly true of pattern shells (i.e. shells that explode and display a pattern such as a heart, star, fish, or a letter of the alphabet).

As time has passed since then, and I am no longer involved with these displays, I note that I have changed my position on this a bit. While I maintain that the display is clearly subject to copyright, it is highly likely that most photographs of a display would incorporate a fair use appropriation of the display and would not infringe.

Kinda fun looking through old posts though.