By Scott A. Andresen, ESQ
It seems intuitive that when an organization hires a vendor to provide services, it naturally owns the results of those services. While this is true a vast majority of the time, it is not necessarily true when it comes to one of the most important areas to any organization- intellectual property. Unless certain conditions are present, your organization may not even own the headshots, game photos and other photography that it is paying for.[1]
As a Chicagoan, it has been ingrained into my thought process since the mid-1980’s that there is only one place to turn when one is looking to identify and resolve a problem: Oprah. The case of Natkin v. Winfrey, 111 F. Supp. 2d 1003 (N.D. Ill.) provides an excellent discussion of the conditions under which an organization owns (or doesn’t own) photography created at its behest.
Background
For almost a decade, The Oprah Winfrey Show hired two “live event” photographers to take pictures at tapings of the show. The photographers used their own camera equipment and processed all films themselves. When photographing the show, the photographers had no control over the position or appearance of their subjects (i.e., Winfrey, her guests, the audience, etc.), and were restricted to certain locations. Neither photographer worked pursuant to a written agreement, and both men billed a flat fee and expenses for each show they photographed. Finally, neither photographer had taxes or other deductions removed from their checks, nor did they receive any other benefits traditionally given to employees (insurance, vacation time, etc.).
Starting to sound familiar?
Upon publishing 11 of the photographers’ pictures in her book, Make the Connection, without permission, the photographers filed a copyright infringement action against Oprah Winfrey and a number of related entities.
Analysis of the Parties’ Rights
To establish copyright infringement, the photographers needed to demonstrate that they owned the copyrights to the photographs. Under the Copyright Act, ownership of a copyright “vests initially in the author or authors of the work.”[2] Usually, the author of a work is the person who translates an idea into a fixed, tangible expression entitled to copyright protection.[3] Accordingly, a photographer is usually deemed the author of his or her photographs. However, as is often the case in matters of the law, exceptions exist. Two specific exceptions relevant to this case were the “work made for hire” and “joint work” exceptions.
Work Made For Hire
Works made for hire are “authored” by the hiring party, meaning that the initial owner of the work for copyright purposes is not the creator of the work, but the employer or the party that ordered the work.[4] 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 … if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire” [emphasis added].[5]
While Oprah, et al necessarily conceded that they did not have a written “work made for hire” agreement with either photographer covering the photographs in question, they argued that the photographers were employees (as opposed to independent contractors) when they took the photos.
The United States Supreme Court set forth a non-exhaustive, thirteen-factor test for determining whether the originator of a work is an employee within the meaning of the Copyright Act’s work made for hire provision. The Reid factors are
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 discretion over when and how long to work; the method of payments; the hired party’s role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party.[6]
Applying the Reid factors to the circumstances present, the Court determined that the photographers were independent contractors and not employees.
Joint Work
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.[7] Co-authors of a joint work generally hold undivided interests in a work, despite any differences in each author’s contribution. But, the Oprah court cautioned that “[a] contributor is not considered an `author,’ and does not gain a co-owner copyright interest unless [its] contribution, standing alone, is copyrightable.”
Oprah, et al claimed that they owned the copyrights of the photographs jointly with the photographers because they were co-authors of the photographs by virtue of Ms. Winfrey’s ‘authorship’ of her facial expressions, attire, the look and mood of the show, the choice of guests, the staging of the show, and so on.
The Court soundly and completely rejected this argument based on the fact that only the photographers contributed any copyrightable elements to the photos.
License
The last contention of the Oprah defendants was that they had an implied license to use the photographs based on the conduct of the parties. While the court agreed, it stated that the duration and scope of a license was a matter of fact to be determined at trial. What is more interesting to note on this issue is that the applicable case law indicated that an implied license of indeterminate duration was terminable at will—meaning that the photographers could terminate the defendants’ license to use the photographs at any time.
What Has Oprah Taught Us?
Oprah has taught us that it is better to err on the side of caution and have a work for hire agreement in place with any photographers utilized by your organization (including interns/volunteers). However, while standard work for hire agreements simply make a declaration that the work ordered or commissioned is, in fact, a ‘work for hire’ pursuant to applicable law, it is important to remember that only works “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” are actually capable of being a ‘work made for hire’ under the Copyright Act.[8] To that end, it is also wise to include an assignment of rights of provision[9] in your work for hire agreement under the “belt and suspenders” approach to avoiding risk, liability or embarrassment.
Scott A. Andresen is the founder of Andresen & Associates P.C., a Chicago-based law firm that focuses its offerings in the areas of sports law, entertainment and the arts, intellectual property and a wide array of legal and non-legal services and consultation to business and corporate clients. Scott is also an instructor in Northwestern University’s graduate sports management program. For further information, contact him at scott@andresenlawfirm.com
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[1] While this article will focus on the issues of photography, its lessons also apply to graphic artists, logo designers, website builders and other similar “creative vendors” that are often hired by sports organizations.
[2] 17 U.S.C. 201(a)
[3] see Community for Creative Non-Violence v. Reid, 490 U.S. 730, 737, 109 S.Ct. 2166, 104 L.Ed.2§d 811 (1989).
[4] see 17 U.S.C. § 201(b), which states “In 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.”
[5] 17 U.S.C. § 101
[6] See Reid, 490 U.S. at 751, 109 S.Ct. 2166.
[7] 17 U.S.C. § 101
[8] Id.
[9] e.g., “To the extent any of the Works are not the property of Company pursuant to applicable law, Contractor hereby irrevocably and exclusively transfers and assigns to Company, all right, title and interest in and to said Works.”
