April 30, 2014
Intellectual Property, Media Law Alerts

Don't Count On Owning The Copyright Unless Both Parties Sign A Work-For-Hire Agreement
by Alan J. Haus

Two recent cases left the hiring parties empty-handed on account of the lack of a mutually signed work-for-hire agreement.  They arose in one case concerning a company’s ownership of the website it had commissioned, and in another case a production company’s control of a motion picture.  The legal principle applies equally, however, to development of any kinds of work protected by copyright.

In one case, a web page design company was hired by a marketing company to provide what the court called a “website framework.”  The two companies had a written agreement.  The agreement stated that the work product would be owned by the marketing company on a “work for hire” basis.  One company signed the agreement within the thirty day time period specified for execution of the agreement.  The other company did not sign.  Both companies proceeded, however, under the terms of the agreement as written.

Copyright differs from most other areas of law in that both parties must sign an agreement before work commences in order for work-for-hire provisions to be legally effective.  Since that didn’t happen in this case, when a dispute about work and payment arose, the design company had the winning hand.  It registered itself as the copyright owner of the marketing company’s website.  When litigation ensued, the court found that the work-for-hire provision was ineffective because the agreement had not been signed by both parties within the specified time.  Thus, the design company owned the copyright, and the marketing company committed copyright infringement by using the website it had commissioned but allegedly had not fully paid for.

The second case saw an individual actress defeat Google in a case of multinational geopolitical interest.  Actress Cindy Lee Garcia was paid approximately $500 for three and a half days of filming writer-producer Mark Basseley Youssef’s picture titled, “Desert Warrior,” an adventure film set in ancient Arabia to be released as a work of entertainment.  There was no written agreement.  If Garcia had signed such an agreement, however, then the author of her performance would have been the production company, which under most such agreements could have used that performance in any manner it wished.  While a performance can also be a work-for-hire without a written agreement in some cases, the necessary elements for that were not present in this case.

The writer-producer never made the “Desert Warrior” film.  Instead, he incorporated Garcia’s footage into the infamous, “Innocence of Muslims” picture.  That picture was uploaded to YouTube, and generated worldwide controversy.  Garcia’s performance was partially dubbed, so that she appeared to be asking, “is your Mohammed a child molester?”  The film’s release was associated with controversies involving the fatal storming of the American consulate in Benghazi, Libya.  An Egyptian cleric issued a fatwa, calling for the killing of everyone involved with the film.

Garcia sent Takedown notices to YouTube under the Digital Millennium Copyright Act.  Her position was that while she did not own the copyright in the picture as a whole, her performance within the film was an independently copyrightable work of authorship in which she retained exclusive ownership rights.  The absence of a written work-for-hire agreement was fundamental to her legal position. But doesn’t an actor's or actress’ performance in a film either grant to the production company an implied license to the performance, or constitute a contribution to a work of joint authorship?  If the film produced had been “Desert Warrior,” then the answer would have been “yes.”  Garcia neither impliedly licensed nor contributed on a joint work basis to the “Innocence of Muslims,” however.  The court accordingly ordered Google to take down all copies of “Innocence of Muslims” from YouTube and to take all reasonable steps to prevent further uploads.
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