Forum Moderators: LifeinAsia
§ 201. Ownership of copyright
"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."
[copyright.gov...]
Am I reading it right?
[edited by: glengara at 11:03 pm (utc) on Aug. 15, 2007]
If it's an employee, no doubt at all - if it's a freelance, it pays to read the small print; the designer may have slipped in a clause that allows them copyright. If you agreed to that you are stuffed.
But the 'default' is that he who pays the piper owns the tune.
Sounds like there's no legal basis for that and even if agreed to may not be legally enforceable if the client subsequently baulks.
The FAQ:
[copyright.gov...]
If the person who designs your web site is not an employee but an independent contractor, that person by default owns the copyright -- not you.
The first category is where the work is prepared by an employee. In most situations, a web designer will not be considered your employee, but rather an independent contractor. So the work will need to fit into the second category, meaning:
1- The work has to be specially ordered or commissioned - i.e., you are paying the designer to create something new vs. ordering a preexisting template. (You're usually ok on this one)
2 – Prior to starting the work, both parties must agree in a signed document that the work’s considered a work made for hire. (You may or may not be ok, depending on the contract you signed).
3- The work has to fall within at least one of the nine categories of works listed in the Act (copied below) (You're usually ok on this one as well - you can probably argue web design falls into the category of a "supplementary work" since you are combining it with your own content for the site).
All three conditions have to be met.
Point 2 is where issues usually arise, since you may have been drowning in the fine print when you signed the contract. If the work’s completed, you can always try to get the web designer to assign the copyright to you (i.e., transfer ownership), but he might not be motivated to do so without some compensation. (The designer’s motivation to retain the copyright is to use the basic design as a template or reproduce the design on his own web site as a client promo. So you could try to work with the designer to see what his concerns are and meet him halfway – for example, agree to give him a limited free license to do certain things with the design). Bottom line though – best to retain the copyright initially.
This is the section of the Copyright Act that’s relevant (Title 17, Ch 1, § 101)
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 text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.
Disclaimer: this posting isn't legal advice and different contract language and different circumstances can change the picture.
But anyway, if the contract the client signed referred to TOS that said "The design studio retain copyright over the design and issue a licence for the client to use it as made.", then that would stand.
So the client may use it - without further development by self or others - and may see it used by others; and later clients will likely get the benefit of further development, if the designer learns from earlier mistakes.
A contract is a contract - and a designer who includes that in their TOS clearly knows exactly what they are doing.
Personally, I'd never employ a designer on that basis - but I'd expect to pay more to own the finished work (and therefore have the right to develop it myself, or get a new designer).
They are restrictive terms for the client - but not unreasonable; I see no reason for a court to overturn them.
