1. Copyright Law: Spring 2003 Professor Susanna Fischer CLASS 11 February 12, 2003

2. GOALS FOR CLASS A few words on databases AUTHORSHIP – wrap up to cement understanding of authorship in general and joint works in particular AUTHORSHIP: WORKS MADE FOR HIRE To learn about when a work will be treated as a “work made for hire”

3. DATABASES Databases containing factual material can only receive copyright protection, under Feist, for original selection and arrangement. Database compilers have pressed for sui generis legislation to give more legal protection for databases but none has yet been enacted. Debate over constitutionality of such protection. The European Union has such protection under Directive 96/9/EC (against extraction/reutilization of whole or substantial part of contents of database). 15 year term of protection.

4. WRAP UP POINTS: AUTHORSHIP The Constitution and Copyright Act does not define the term “author”; the law appears to treat as authors those who intellectually conceived original works (see Lindsay) as well as, where the work made for hire doctrine applies, those who financed the work.

5. WRAP UP POINTS: JOINT WORKS 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.” Each joint author must make an independently copyrightable contribution. Intention to be joint authors may be manifested by a written agreement, or by a court determining whether the parties had the intent to be joiint authors (e.g. Thomson v. Larson) Joint authors are co-owners of copyright in a work. Can license (non-exclusively) w/o consent

6. WORKS MADE FOR HIRE WHAT’S A WORK MADE FOR HIRE?

7. DEFINITION OF WORKS MADE FOR HIRE - 2 TYPES A “work made for hire” is defined in section 101 works prepared by employees AND within the scope of employment (and also 201(b) requirement that work be prepared FOR employer) specially ordered or commissioned works - must be within certain categories and there must be a written work made for hire agreement.

8. CONSTITUTIONALITY OF WORK MADE FOR HIRE DOCTRINE ? To think about: is the work made for hire doctrine constitutional? Can providing money to create a work amount to “authorship”? Note that not all countries in the world have such a doctrine

9. CCNV v. Reid What are the relevant facts of this dispute, and what issue did the U.S. Supreme Court have to rule on?

10. CCNV v. Reid: Who is an “employee”? According to the U.S. Supreme Court, is the sculpture a work for hire under either part of the definition in section 101 of the 1976 Copyright Act? What is the Court’s reasoning? What is the correct test for determining when a work was prepared by an employee?

11. CCNV v. Reid Court canvasses 4 possible tests for when a work is prepared by employee in scope of employment 1. RIGHT TO CONTROL test 2. ACTUAL CONTROL test 3. AGENCY LAW test 4. FORMAL SALARIED EMPLOYEE test Supreme Court uses statutory interpretation, legislative history, and policy argument based on need for certainty to conclude that (3) applies.

12. AGENCY TEST Must consider “the hiring party’s right to control the manner and means by which the product is accomplished” look at nonexhaustive list of factors to determine this (see CB p. 140) Applies these factors to find that Reid not an employee. Remands to determine whether a joint work.

13. REID IS AN INDEPENDENT CONTRACTOR True, some control by CCNV in providing specifications for sculpture But weighing against that: skilled occupation, provision of own tools, work in own premises, no daily supervision of work by CCNV, absolute freedom to decide when and how long to work, payment for specific job, total discretion in hiring and paying assistants, CCNV not in the sculpture business, CCNV did not pay payroll or social security taxes or pay other employee benefits

14. WHO IS THE COPYRIGHT OWNER OF THE SCULPTURE? If it is not a work for hire, doesn’t Reid own copyright in the sculpture?

15. WHO IS THE COPYRIGHT OWNER OF THE SCULPTURE? If it is not a work for hire, does Reid solely own copyright in the sculpture? Supreme Court says CCNV may be a joint author. Remands for determination of this issue. Submitted to mediation.

16. LATER CONSENT JUDGMENT in CCNV (Jan. 7, 1991) Consent judgment: CCNV sole owner of original physical sculpture while Reid is sole author of the work. Reid has exclusive right to make 3-D reproductions of sculpture (without base/inscription), while both Reid and CCNV can make 2-D reproductions (if CCNV gives credit to Reid). Further dispute about Reid’s access to original sculpture when he sought to make a master mold. Parties came to some agreement in unpublished order.

17. AYMES v. BONELLI (2d Cir. 1992) CB p. 274 Were Aymes computer programs works made for hire according to the 2d Circuit? Why or why not? No. Some CCNV factors are more significant than others, and these caused balance to weigh in Aymes’ favor Which CCNV factors were the most significant? Right to control means & manner of creation, skill required, provision of employee benefits, tax treatment of hiring party, whether hiring party has right to assign additional projects to hired party

18. WORK MADE FOR HIRE: TO THINK ABOUT Does the CCNV test for a work made for hire, as elaborated in Aymes v. Bonelli, enhance the stated policy goal in CCNV of enhancing certainty and predictability?

19. SCOPE OF EMPLOYMENT CCNV dealt with whether an author is an employee. How do the courts determine “scope of employment”?

20. SCOPE OF EMPLOYMENT CCNV dealt with when an author is an employee. How do the courts determine “scope of employment”? See Avtec (CB p. 144) –development of computer programs at employee’s home outside of normal business hours Courts rely on test in Restatement (Second) of Agency. Employer must show: 1. Work of type employee hired to perform 2. Creation of work occurred “substantially within the authorized time and space limits” of the job 3. Work “actuated, at least in part, by a purpose to serve” interests of employer

21. THE TEACHER EXCEPTION If the teacher exception exists, it is an exception to the work made for hire doctrine for academic writings Did the 1976 Act abolish it? Many college and university IP policies adopt the view that teacher exception exists See draft CUA IP Policy at: http://counsel.cua.edu/mai npage/

22. SPECIALLY ORDERED/COMMISSIONED WORKS Statutory categories in s. 101 – work must fall into one of these 9 categories “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.”

23. SOUND RECORDINGS AND WORKS MADE FOR HIRE In 1999 Congress added sound recordings to section 101 list of works that could be commissioned works for hire See p. 9 of Supp - additional language included in 2000 to basically invalidate this change Professor Jane Ginsburg attributes change to anti-record industry public at time of peer-to- peer controversies (like Napster)

24. WORK FOR HIRE AGREEMENTS At what point do parties have to execute work made for hire agreements under 101(2)? At time of commissioning? When commissioning party pays creator? When work is being created? Compare Schiller (7th Cir.) and Playboy v. Dumas (2d Cir.)

25. WORK FOR HIRE AGREEMENTS Schiller (7th Cir.): work for hire agreement not signed by both parties; and also too late - writing needs to be signed before creation Playboy v. Dumas (2d Cir.) - just agreement must precede creation, not writing. Endorsed checks by artist bearing legend that works were made for hire were acceptable as work for hire agreements. This case also holds that writing must use the words “work made for hire” – but other courts have not required this (see Armento v. Laser Image (W.D.N.C. 1996)

26. WORK FOR HIRE AGREEMENTS Armento v. Lasar Image, Inc. (W.D.N.C. 1996) indicates that agreement doesn’t have to use “work for hire agreement” language, but ruling is open to question since it treats assignments (which can be terminated: we’ll discuss later in course) with work for hire agreements (which cannot be)- it is safer to expressly use “work for hire” language in agreement