Copyright 1991 by S. Kitterman Jr. and the Las Vegas PC Users Group, 316 Bridger Avenue, Suite 240; Las Vegas, NV 89101. All rights reserved. This file was originally printed in the December 1991 issue of The Bytes of Las Vegas, a publication of the Las Vegas PC Users Group, and may be reprinted only by nonprofit organizations. Please give proper credit to the author and The Bytes of Las Vegas. ------------------------------------------------------------------------------- Copyrights and Computer Software: Part III by Sam Kitterman, Jr., LVPCUG [The purpose of these articles is to give general information regarding copyrights and how they pertain to protection of software. It is not intended to constitute legal advice nor should it be relief upon to address a particular situation since the tone of these articles is general in nature.] As discussed in last month's article, the Copyright Act requires a protectible work to have been "original" to its author. Yet, once a work has been created and a copyright registration is being sought for that work, who owns the copyright? That is the subject of this month's article. The Copyright Act distinguishes between three types of ownership of a copyrighted work, i.e., (a) Where the author is the sole creator of the work and the work was NOT a work "made for hire", then the author is also the owner of the work; (b) Where there were joint authors of the work and they had agreed that the work would be jointly- owned, then the joint authors are the joint owners of the work; and, (c) Where the author(s) were creating the work as a work "made for hire", then the author's employer will become the owner of the work. Perhaps the easiest of these situations to understand is (a), i.e., single author is also the owner of the copyright in the work if he or she created the work for themselves, not for another party. 201(a) of the Copyright Act states this as follows: Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are coowners of copyright in the work. The second of these situations to understand is that of joint authorship - joint ownership. Although the above subsection seems to be clear, the Copyright Act requires more than parties to have been joint authors in order for joint ownership of the copyright to be found. 101 of the Copyright Act (Definitions) states that a joint work is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. As noted in the House Report on the 1976 Copyright Act, the "touchstone" of a joint work is the intention, at the time the writing was done, that the parts be absorbed or combined into an integrated unit, although the parts themselves may be either 'inseparable' (as [in] the case of a novel or painting or 'interdependent' (as in the case of a motion picture, opera, or the words and music of a song. The test of joint authorship under the 1976 Act...[is] 'to constitute joint authorship, there must be a common design.' In summary, a "joint work" will be found where there are multiple authors, they had agreed that the "Work" of their labors would be one Work, and that they had further agreed that they should be treated as joint authors/owners of that Work. The third of these situations of ownership is that of a "work made for hire". Once again, the Copyright Act itself gives us a general framework for such works. As defined by the Act, 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 test" is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities. 17 U.S.C. 101. Simplified, a "work made for hire" will be found either where the work was done as a result of, and related to, your employment or under those specific categories set forth above in "2" WHERE the parties had specifically agreed in writing that such work would constitute a "work made for hire". Yet, what is employment? For example, what if you are an independent contractor and there is no agreement between you and the party who hired you concerning ownership of the copyright? Who owns the copyright in the Work? This issue was addressed by the United States Supreme Court in the case of Community for Creative Non-Violence v. Reid, 490 U.S.___, 109 S.Ct. 2166 (1989). In that case a non-profit organization hired a sculpter to do a sculpture concerning the plight of the homeless. There was no language in the contract concerning who would own the copyright in the Work. After the work had been completed, the parties began arguing about control of the piece and subsequently sued each other. Although the local court ruled the organization owned the copyright because it was a "work made for hire", the Supreme Court upheld the reversal of that decision, a decision holding that the independent contractor owned the copyright in the work. In so ruling, the Supreme Court focused on three issues: (1) The nature of the employment relationship between the organization and the sculpter, i.e., what is called "master-servant" in the law; (2) Whether the organization meaninfully exercised any control over the sculpter's work; and, (3) Whether the organization treated the sculpter as an employee for purposes of benefits and taxes. Although much of that decision is beyond the scope of this article, what must be remembered when you are doing work for someone else is the following: (a) Are you an employee? (b) Is the work you are doing something that falls within the scope of your normal duties for your employer? (c) Does your employer supervise the work? If the answers to all three of the above questions are yes, then the work is most likely a work made for hire and your employer, not you, owns rights in that work. (a) Are you an independent contractor? (b) Do you have a written agreement wherein ownership of the "Work" is given to your employer? If the answers to the above two questions are yes, then your employer will be the owner of the work. (a) Are you an independent contractor and there is no written agreement concerning copyright ownership of the Work? (b) How much control does your employer exercise over your work? (c) How are you treated by your employer concerning benefits and taxes? Again, if you are an independent contractor, acting mostly on your own with some input from your employer, and you receive no benefits/tax considerations from the employer, then you will most likely be the owner of the copyright in the work, not your employer. On the other hand, if your employer takes a very active role in supervising your work, exercises active control over your operations, and treats you as an inside employee for purposes of benefits and taxes, then your employer, not you, will most likely own the copyright in the work. This may seem to be complicated. It is! Yet, the impact of determining who owns the copyright in a work can be great. For example, if you own a graphics arts studio and are hired to create a coin design, the question of ownership of the copyright in that coin design must be considered. Indeed, it can be a means of ensuring that you, as an independent contractor, are paid for the work you do for others. So remember, if you're going to create a work, make sure you know who is going to own the copyright in it! ---------------------------------- Copyright 1991--S. Kitterman Jr. [Sam Kitterman, a member of the Las Vegas PC Users Group is an attorney with the firm of Quirk, Tratos & Rothel; he specializes in issues related to computer software. This is the third of a series of articles Sam is writing for The Bytes of Las Vegas. It was originally published in the December 1991 issue of The Bytes of Las Vegas, the official newsletter of the Las Vegas PC Users Group.] Downloaded From P-80 International Information Systems 304-744-2253