Copyright Ownership in the Workplace: Work Made for Hire

small business word cloudAs a small business owner, you have probably hired a contractor or employee to design your website, write articles, copy, and incorporate pictures. You may also have had additional help in promoting and branding your company. If you received assistance in these tasks, you might not be the owner of the copyrightable work product created by the contractor or employee. In the United States, copyright ownership generally vests in the creator of the work. If you contracted with a web designing firm to design and populate your website, you are not the creator of the site content. In order to claim ownership of the copyright work, you must include a work made for hire clause in your independent contractor and employment agreements. Retaining original copyright ownership is more advantageous than licenses and assignments. You can avoid contractual complications and restrictions that accompany licenses. Work made for hire copyright expires 95 year after first publication or 120 years after creation; this expiration is considerably longer than the 35 years statutory termination for certain licenses and assignments.

Independent Contractors

An independent contractor owns the copyrights to his or her work, unless a written agreement states otherwise. You may commission an independent contractor to do the following work while retaining ownership:

  • Contribution to a collective work
  • Part of a motion picture or other audiovisual work
  • Translation
  • Supplementary work
  • Compilation
  • Instructional text
  • Test and the answer material
  • Atlas

Notice that the commissions do not encompass all copyrightable works. You cannot claim original ownership of some copyrightable works (such as computer software) created entirely by an independent contractor. Instead, you should consider hiring an employee to prepare such work.

Employees

A copyrightable work prepared by an employee is usually considered the employer’s copyright. However, the employer only owns the copyright if the work was prepared within the scope of employment. An employee may be able to contest the employer’s ownership of the copyright by claiming that the work does not fall within his or her scope of work. In these cases, the court usually asks three questions to interpret the employee’s scope of work:

  • Was the employee hired for the purpose of preparing copyrightable works?
  • Was the work created during the employer authorized time and space limits?
  • Was the work created (at least in part) to serve the employer?

As an extra precaution, you may add a work made for hire clause and an assignment clause to employment agreements to secure the company’s rights in works produced by its employees.

Prioritizing proper copyright ownership in the beginning can save numerous headaches in the future. If you wish to pursue an enforcement action against infringement or sell your company, you will likely need to make representations regarding copyright ownership. Managing copyright issues years down the road can be expensive and time-consuming in time-sensitive situations.

Beyond your Legal Rights: Trademark Bullying

Trademark BullyTrademark bullying is when a trademark owner zealously enforces their trademark rights outside the scope of the trademark law. Trademark bullying does not necessarily result in negative legal reactions, but the public backlash from trademark bullying can be costly. Consult your trademark counsel when determining the right course of action to infringement. Sometimes your marketing staff and your lawyer need to work together in order to produce the best outcome for the company.

“Bullies”                                                                                                                                           

Continual monitoring and enforcement is essential to protecting your trademark rights from infringement and dilution. However, if you believe that another party inadvertently infringed upon your trademark right, you might consider calling or sending a polite close and desist letter instead of threatening lawsuits. A polite initial response can reduce potential negative publicity and public backlash and perhaps even drum up some positive publicity. Consider the following options when you identify an infringer that may cause you bad publicity.

Have you Tried Calling?: A written cease and desist letter may be used against you in negative ad campaigns. Instead, you may wish to call the infringer and explain the situation. You can assert your trademark rights while minimizing misunderstandings by simply calling the other party.

The Polite Cease and Desist: A cease and desist letter can effectively assert your right while giving the other party an opportunity to fix the infringement issue. This method is more likely to elicit positive response from the accidental infringer and resolve the issue faster.

The Permission Letter: Unique situations require tailored responses. Here is a creative method of drumming up positive PR while responding to a legal outside trademark use.

“Targets”

The first step is to determine if the other party’s action (usually a cease and desist letter) extends beyond their legal trademark rights. Such analysis can be quite costly but necessary in order to determine your next course of action. If the financial value attached to your brand is still minimal you might consider changing your brand within a reasonable period of time and demanding compensation for the cost of rebranding. If the cost associated with your brand (in terms of branded products, loss of market shares, cost of rebranding, and loss of customer good will) is too great, ask your lawyer about the following options:

Coexistence Agreement: A trademark agreement will allow both parties to use similar marks and coordinate efforts so that neither mark is weakened.

Consent Agreement: The registered party agrees to allow the other to use the mark under certain terms for some incentive.

If it is difficult or impossible to negotiate with the other party, you may consider more costly actions such as…

Litigation: You can attain a judgment from the court that you are not violating your opponent’s trademark rights.

 

Copyright Ownership in the Workplace: Work Made for Hire

Copyright 2 Copyright StampsAs a small business owner, you have probably hired a contractor or employee to design your website, write articles, copy, and incorporate pictures. You may also have had additional help in promoting and branding your company. If you received assistance in these tasks, you might not be the owner of the copyrightable work product created by the contractor or employee. In the United States, copyright ownership generally vests in the creator of the work. If you contracted with a web designing firm to design and populate your website, you are not the creator of the site content. In order to claim ownership of the copyright work, you must include a work made for hire clause in your independent contractor and employment agreements. Retaining original copyright ownership is more advantageous than licenses and assignments. You can avoid contractual complications and restrictions that accompany licenses. Work made for hire copyright expires 95 year after first publication or 120 years after creation; this expiration is considerably longer than the 35 years statutory termination for certain licenses and assignments.
Independent Contractors
An independent contractor owns the copyrights to his or her work, unless a written agreement states otherwise. You may commission an independent contractor to do the following work while retaining ownership:
• Contribution to a collective work
• Part of a motion picture or other audiovisual work
• Translation
• Supplementary work
• Compilation
• Instructional text
• Test and the answer material
• Atlas
Notice that the commissions do not encompass all copyrightable works. You cannot claim original ownership of some copyrightable works (such as computer software) created entirely by an independent contractor. Instead, you should consider hiring an employee to prepare such work.
Employees
A copyrightable work prepared by an employee is usually considered the employer’s copyright. However, the employer only owns the copyright if the work was prepared within the scope of employment. An employee may be able to contest the employer’s ownership of the copyright by claiming that the work does not fall within his or her scope of work. In these cases, the court usually asks three questions to interpret the employee’s scope of work:
• Was the employee hired for the purpose of preparing copyrightable works?
• Was the work created during the employer authorized time and space limits?
• Was the work created (at least in part) to serve the employer?
As an extra precaution, you may add a work made for hire clause and an assignment clause to employment agreements to secure the company’s rights in works produced by its employees.
Prioritizing proper copyright ownership in the beginning can save numerous headaches in the future. If you wish to pursue an enforcement action against infringement or sell your company, you will likely need to make representations regarding copyright ownership. Managing copyright issues years down the road can be expensive and time-consuming in time-sensitive situations.

Copyright 101: Use and Compliance in Your Workplace

stamp copyright with red text on whiteWhether you are aware of it, your business probably deals with copyright issues in one manner or another. Copyright is pervasive in business activities, but is your business properly protected? Proper protection entails securing your own copyrights and avoiding infringement upon others’ copyrights. Consider the following best practice suggestions:

Use                                                                                                                                                     

  • Create a copyright use policy that explains how employees, independent contractors, and other related parties should use and protect your copyright.
  • Train your employees and independent contractors to recognize your protected copyrights and proper procedures to protect your copyrights.
  • Have all members sign the policy acknowledging your ownership of the copyright and their understanding of their responsibilities.
  • Create and implement a non-disclosure policy regarding all intellectual property, including copyrights.

Compliance

You may well be held liable for any copyright infringement claims resulting from your employees’ actions. Such claims may cost you $250,000 and 5 years in prison. 18 USC 2319, 3571(b). You may be infringing upon another’s copyright if you play music at work or share online pictures or writings. Your ability to access these materials does not translate to your ability to use these works. Consider the following best practice suggestions:

  • Create and implement a copyright compliance policy that:
    • Explains the definition of a copyright and covered material.
    • Lists examples of common copyright infringement in the workplace.
    • States your policy of honoring copyright.
    • Details consequences of copyright infringement.
    • Details procedural steps to seek legal advice if your staff is uncertain about copyright compliance.
  • Train your staff members to understand their responsibility of avoiding copyright infringement.
  • Have all members sign the policy acknowledging their understanding of responsibilities.
  • Purchase a universal copyright license to prevent any accidental infringement.

Virtual World: Your Trademark and Social Media

global connectivityBenefits of Using Social Media
When you use a social media site, you are no longer the only brand builder. By engaging with consumers on social media sites, you will change the brand either positively and negatively. In general, brand recognition tends to be amplified on social media. Here are some benefits of building your brand through social media:
• Maximizes brand exposure: Trademarks that have secondary meaning associated with them have the strongest protection because consumers clearly perceive the brand as a source indicator. Social media can expedite secondary meaning acquisition.
• Lower marketing costs: The effectiveness of social media campaigns can render other forms of media moot, reducing your marketing costs.
• Search engine optimization: The more popular you are on social media sites, the more prominent your search results online. Notoriety in one online site may serve as a catalyst to increase your popularity in others.
• Humanizes the company: While your brand may present your professional image, your social media site can have an entire persona that humanizes you in the eyes of your consumers. Consistent interaction with your audience can build a loyal following.
• Consumer feedback: You can conduct market research on social media sites to modify your products to better fit consumer needs.
• Business networking: You also have the choice of interacting with other businesses to build your professional image.
Relationship with Social Media Platform
Social media platform agreements are non-negotiable, unilateral contracts that give the social media sites broad rights over your trademark. While social media sites do not necessarily benefit from repelling businesses from exercising its full contractual rights, understanding and adapting to agreement is important. Consider the following aspects of your relationship with the social media site:
• Use of your trademark: Social media sites often allow other users to interact with your posts. For example, Youtube allows users to use, reproduce, distribute, display and perform your uploads and Twitter allows users to use, reproduce, and create derivative works from your uploads. You no longer have exclusive rights to your work on that site, which limits quality control of your brand online.
• Licensing issues: Social media sites are international but you may have a territorial restriction on your use of the trademark through a license. Social media postings may conflict with third party trademark licensing agreements.
• Indemnification: You often have to promise social media sites an arm and a leg to compensate them for any injury you might cause. Know what you are promising before using these sites.
• Unlimited amendments with little or no notice: You promise to allow social media sites to change their policies and procedures at any point for any reason. This change may come with little or no notice to you, but you still have an obligation to abide by these new changes. While social media sites will probably not abuse this right or risk losing business interests, you still need to monitor these changes and respond accordingly.
Relationship with Users
• Inadvertent infringers: In some ways the inadvertent infringers are harder to manage than intentional infringers. There are many fans of your trademark who may not understand the legal ramifications of the improper use of your trademark. You want to maintain a positive relationship and continue to build rapport with your consumers while protecting your trademark rights. For example, two fans of Coca-Cola started a Facebook fan site without the company’s knowledge and accumulated millions of fans; it became one of the most popular sites on Facebook. As the company did not start the page, they had no control over the content or trademark use. Instead of sending a cease and desist, Coca-Cola contacted the fans that started the site and partnered with them to manage the page. It is important to educate your consumers and communicate with them to ensure the proper use of your trademark on social media sites.
• Cyber squatters: Even if you choose not to form a business page for your social media site, you must still monitor these sites for infringers. Imposters may use your business name for their own purposes online and social media sites do not necessarily filter out all imposters. Cyber squatters can do significant damage to your reputation and consumer good will in a relatively short amount of time. You should report such abuse to the social media site or send cease and desist letters to enforce your rights.
Social media can be a great tool for growing your business, but it can also harm it. Connect your trademark lawyer with your social media and marketing staff to ensure that your business is protected.