Quite often, one of the issues that we see is a business that is set up around works that fall under the purview of the Copyright Act do not properly secure those copyrights. It is necessary to review the purpose of the work that the business needs.
Is the business just licensing the work for a small period of time or will the business need to own the copyright of the work? If the business needs to own that copyright, then either a Work for Hire agreement or an agreement to purchase the copyright is needed, especially if an independent contractor creates the copyrighted work.
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 (17 U.S.C. 101).
A Work For Hire agreement, therefore, must be regimented and have the following characteristics:
1. A description of the work;
2. The relationship between the person creating the work and the entity that is commissioning the work;
3. That the work is, specifically, a work made for hire;
4. That the author of the works waives moral rights (as defined by 17 U.S.C. 106A); and
5. That any work that is not a work made for hire automatically is the property of the party commissioning the work.
Companies should also register all copyrights. No lawsuit for copyright infringement can be made without a registration (17 U.S.C. §411). Also, no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for:
1. Any infringement of copyright in an unpublished work commenced before the effective date of its registration; or
2. Any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work (17 U.S.C. 412).