by Richard Liebowitz, Esq.
Registering your works with the U.S. Copyright Office can be daunting without guidance. Our firm regularly encounters clients who have incorrectly registered their own works. These mistakes may be simple and easy to fix or grave and detrimental to our ability to get the maximum amount in damages for our clients. The mistakes span the gamut from work-for-hire questions to whether publication has occurred, to the proper format in which an image is deposited. I address a few of the most common registration issues below.
To register a work with the U.S. Copyright Office, one has to assert ownership of the copyright in that particular work. The general presumption is that if you are the author of the work, you have copyright interest in that work. In fact, from the moment of creation or the moment a work is fixed in some tangible medium, the work is protected by federal law. While registration is not required to engender federal protections, it is required for the filing of a lawsuit. Crucially, in order to be eligible for statutory damages and attorneys’ fees, the registration must be timely (filed within 3 months of the work’s publication) or before the infringement occurs. Therefore, it is critical to register copyrights in a timely manner.
The most common source of confusion in registering copyrights is the meaning of “publication.” This term has a special definition within the context of the Copyright Act (1976) that runs counter to how most laypeople understand and use it. “Publication” within the terms of the Act is defined as “the distribution of copies of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. Offering to distribute copies to people or businesses for purposes of further distribution, public performance, or public display constitutes publication.” This statutory language is not very helpful to an average photographer. Clients often mistake publication to mean published in a quotidian sense. The resulting mistakes are costly and deleterious to the enforcement of one’s copyright.
The determination of whether something is published is dependent on a multitude of factors. Many clients find this fact-specific inquiry confusing and mischaracterize their works. While it is true that mere public display does not amount to publication, the Copyright Office does not have clear rules about the transmission of images online. Having erred previously or wanting to register correctly from the start, our clients turn to us for guidance and analysis. I consider the following factors in determining whether a work is published :
a. Whether the work appears on a website with intent to further distribute;
b. Whether the website featuring the work is viewable by the public;
c. Whether the website featuring the work is viewable by a group of people or businesses; and
d. Whether the purpose of the posting of the work online is commercial in nature.
These are only some of the considerations in our fact-specific inquiry. The outcome of the answers to these questions. substantially impacts how the registration process proceeds. For example, published and unpublished works must always be registered separately.
Another pitfall for clients is the threshold question of whether the work-for-hire doctrine applies. The statutory language seems fairly clear. Pursuant to Section 101 of the Copyright Act, a work-for-hire is:
a) a work prepared by an employee within the scope of his or her employment; or
b) a work specially ordered or commissioned for use
- as 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,
if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. (17 U.S.C.§101).
However, confusion typically arises in analyzing whether one is an employee or an independent contractor. The definition of “employee” is borrowed from Agency Law and includes three factors: 1) control by the employer over the work; 2) control by the employer over the employee; and 3) the status and conduct of the employer. For example, who provides the equipment, lends the space or controls the elements of the shoot matter in determining an employer-employee relationship. Determining whether one is an employee creating a work in the scope of one’s employment can be challenging for a layperson. More difficult still is determining if an independent contractor’s work fits into one of the nine enumerated categories listed above. Presumptively, an independent contractor or freelance photographer owns copyright in the work he or she creates. However, Agency Law and the Copyright Act have created so many exceptions to this presumption that any legal analysis would not be complete without professional guidance. Our firm has been educating clients regarding contractual language to look out for in employment agreements and commissioned project documents that would eliminate any uncertainty of who owns the copyrights to the created works.
Much remains to be done to educate the photographer community about its rights under the Copyright Act. Our firm is committed to informing our clients and the photographer community at large of how the nuances in their daily negotiations and practices affect their respective rights in the works they create.
Richard P. Liebowitz, Esq., is a New York attorney who focuses on intellectual property law related to copyrights at Liebowitz Law Firm, PLLC. He is a 17-year member of the New York Press Photographers Association (NYPPA) and has produced award-winning photojournalism. A graduate of the University of Pennsylvania and Hofstra Law School, Richard now helps his fellow artists around the globe resolve their copyright infringements and protect their work on a contingency basis. As a fellow photographer, he understands the challenges faced in today’s hi-tech environment and is passionate about helping the creative community. Please visit his firm’s website at www.liebowitzlawfirm.com or call 516-233-1660 for a free legal consultation.