You specially commission John, a renowned freelance photographer, to take
photographs for high-end mass mailings you’ll be sending to customers
nationwide. The subjects of the photographs are your own idea — landscapes
and street scenes that will fit perfectly into the mailings. You enter into
a contract with John, designating the list of photographic subjects, stating
that you’ll use them in your mass mailings, and providing for payment of his
substantial fees. The contract says nothing more.
His photographs are spectacular. You use some of
them, but not all, in your first mailing with great success. You intend to
use the remainder in future high-end mass mailings. However, you then
discover that John is offering all of the photographs for sale over the
Internet, at eye-popping prices.
Can John do
this lawfully? After all, the photographs were your idea, not John’s; and
you paid him handsomely for them. Unfortunately, the answer is, yes he can.
On these facts, he owns the copyright in the photographs. The fact that they
were your idea doesn’t matter. The copyright laws do not protect ideas per
se; rather, they protect the expression of ideas. Nor does it matter that
you paid John; what you bought were simply the actual tangible photographs
and the right to use them in your mailings. What does matter is that the
contract did not require John to transfer all of his copyright
interests in the photographs to you. He thus had, and has, every right to
offer them for sale.
This short
illustration brings to the fore certain fundamental principles of copyright
law. First, as already mentioned, copyright law does not protect ideas per
se — just the expression of ideas. Here, John gave photographic expression
to your ideas. Second, subject to an exception discussed below, the author
of a work (such as John, the author of the photographs) owns the copyright
in it. Third, transfer of ownership of a material object (e.g., a
photograph, a book, etc.) does not, in and of itself, convey related copyright
interests. Fourth, an author may transfer some or all of his copyright
interests in a work to another person (the very thing you incorrectly
assumed John was doing with you). Fifth, if instead of being a freelance
photographer, John had been your employee and if his photography had been
within the scope of his employment, then you, as the employer, would have been
deemed the owner of the photographs.
The last
point warrants brief amplification. The copyright laws include something
called “work made for hire.” This refers to: (a) a work prepared by an
employee within the scope of his employment; or (b) a work specially
commissioned in one of 9 categories specified by statute,
but only if the parties expressly agree in writing that the work is to be
considered a “work made for hire.” A “work made for hire” is owned not by
the individual author, but by his employer, or by the person who specially
commissioned the work.
Copyright
law is fraught with traps for the unwary. If you’re about to embark on
something that just might have copyright issues lurking within it, consider
consulting with counsel. In the long run, it may save you money and grief.
“[1] [A]s
a contribution to a collective work, [2] as a part of a motion picture
or other audiovisual work, [3] as a translation, [4] as a supplementary
work, [5] as a compilation, [6] as an instructional text, [7] as a test,
[8] as answer material for a test, or [9] as an atlas.” 17 U.S. C.
§101.
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