Archive for August, 2020

Work Made for Hire Case

Friday, August 14th, 2020

To summarize two previous posts, copyright ownership and works made for hire, copyright is owned by the author upon the author’s fixation of the creative idea.  An author hired to create for another is still the owner of the copyright absent meeting the criteria for a work that made “for hire.”  The controlling case on this point is discussed herein.

The Supreme Court in Community for Non-Violence v. Reid, 490 U.S. 730 (1989) set forth the criteria for a work made for hire. The nonprofit association, the Community for Creative Non-Violence (CCNV) brought action against sculptor James Reid to establish copyright ownership of the sculpture “Third World of America.” CCNV hired Reid to create a statue for an event with the intent of affixing the resulting statue to a base created by CCNV. Reid agreed to create the work and this rendered the two pieces into an indivisible and interdependent whole. After the event CCNV wanted the statue to travel to different states to be part of different exhibits and Reid would not allow it. (One of the six exclusive rights of a copyright owner is the right to display.)  Reid objected to CCNV’s proposed means of display of the statue and asserted his alleged copyright ownership of the sculpture.  CCNV also alleged copyright ownership based on the position that Reid was an employee who created the sculpture within his scope of employment.  The U.S. Supreme Court held that the sculptor was an independent contractor and not an employee of the nonprofit, therefore the statue was not a work for hire. Ultimately, although Reid was found to be an independent contractor, and the work was not made for hire, upon remand, the 6thdistrict court held that CCNV and Reid might be joint authors of the statue since the statue and the base were attached and an indivisible whole and thus co-owners of the copyright. The U.S. Supreme Court affirmed that decision.

In coming to this decision and determining whether the statue was a work for hire, the Court first looked at whether or not Reid was an employee under agency law. He was deemed to be an independent contractor for the following reasons: (1) Reid worked in his studio in a different city than that of CCNV (2) His involvement with the company lasted for less than two months (3) He had absolute freedom as to when and how long to work (4) He was paid a sum that was dependent upon completion of the sculpture (5) He had the discretion to hire and pay for assistance in the completion of the project, and (6) He was not on CCNV’s payroll, nor was he provided with any employee benefits.

An independent contractor owns the copyright to their work unless the work is deemed a work made for hire.  The Court then analyzed whether the work was made for hire. In order for a work to be made for hire in this situation, it must meet four criteria. First, the work must fall within one of the nine statutorily enumerated categories of work that are eligible to be specially ordered or commissioned as works made for hire. (See Works Made for Hire post)  In this case, the work in question was a sculpture and did not fall within the nine categories of eligible works. Moreover, a work made for hire agreement must be in signed writing evidencing an express agreement that a work is “made for hire.”  In this case, the two parties entered into an oral agreement, and there was no written contract. Accordingly, Reid’s statue was not considered a work made for hire.

In the years since the Supreme Court’s decision, district courts of appeal have addressed the question of independent contractor versus employee in many contexts.  Some factors will be significant in virtually every situation:  (1) the hiring party‘s right to control the manner and means of creation; (2) the skill required; (3) the provision of employee benefits; (4) the tax treatment of the hired party; and (5) whether the hiring party has the right to assign additional projects to the hired party.  Factors three and four receive great weight in every analysis.

In conclusion, the copyright in a work created by an independent contractor, absent a signed “work for hire” agreement relating to one of nine specific categories of works (or an absent assignment) is not the property of the hiring party.  Rather, the work is considered by the law to have been authored by the independent contractor.

Minimum Level of Creativity Case

Friday, August 14th, 2020

In order to be subject to copyright, a work must contain a minimum level of creativity.   A related post covers what is not protected by copyright.

In  Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340 (1991), the Supreme Court held that the benchmark of copyright protection is creative originality versus the amount of labor invested into a work.  In that case, the plaintiff, Rural Telephone Service Company, Inc. “Rural,”  provided phone service to several small Kansas communities and by state regulation, was responsible for issuing an annual telephone directory. Plaintiff’s directory was copyrighted as a whole and comprised of both yellow and white pages. The yellow pages held revenue-generating advertisements, while the white pages contained its subscribers’ names, addresses and phone numbers. The defendant, Feist Publications, Inc. “Feist,” was a publishing company that created a directory far larger and more widespread than the plaintiff’s community directory. Feist distributed its directory free of charge and generated revenue through its ads in the yellow pages. Unlike the other telephone service providers in the vicinity who provided directories pursuant to regulation, Rural would not grant a license to Feist for white pages’ information in its directory.  Feist then reproduced Rural’s white pages without consent. Rural sued Feist for copyright infringement. Using the standard of the amount of labor invested into a work, the 10th district court found that Feist was guilty of copyright infringement. The Supreme Court reversed the decision and held that copied information did not meet the minimum standard of creativity required for a work to be granted copyright protection. Feist was allowed to reproduce the white pages without consent.  Rural held no copyright in the pages because they lacked the minimum level of creativity.

In coming to its decision, the Supreme Court considered that the copied information was factual.  Facts cannot be copyrighted because they have no original authorship. Although facts cannot be copyrighted, the compilation of a set of facts may be eligible for copyright protection, if it meets a minimum level of creativity. In the sense of a directory, it might meet a minimum level as the author ultimately chooses where the facts are placed, how they are displayed and in what order they are arranged. If there is some creativity, copyright protection exists for the formatting of the facts, not the facts themselves,  and the facts cannot be protected by association with the original compilation. However, in the Feist case, Rural did nothing creative with the formatting of the information.  It merely listed the information in alphabetical order by name, which does not meet a minimum level of creativity. Since Rural’s white pages lacked the requisite originality, Feist’s use of the listings did not constitute infringement.

For a case where a compilation was entitled to copyright protection by Lee Anne LeBlanc on appeal, see Sethscot Collection v. Drbul, 669 So. 2d 1076 (Fla. 3rd DCA, 1996).  In that case, the arrangement of facts met the level of minimum creativity required for copyright.

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