Creation and Ownership of Copyrighted Works
A copyright represents a bundle of six exclusive rights that affect how the copyrighted work may be used:

1.  The right to reproduce;
2.  The right to distribute;
3.  The right to perform;
4.  The right to broadcast or display;
5.  The right to prepare derivative works based upon the copyrighted work; and
6.  In the case of sound recordings, the right to perform the works publicly by means of digital audio transmission.

These rights may be assigned, licensed, or otherwise transferred separately from any of the other remaining rights.  This means that each, all, or any portion of these six exclusive rights  may be sold, optioned, or leased separately or together, exclusively or non-exclusively for a limited or unlimited term, for limited or all purposes, in whole or in part during the copyright term.  A transfer of these exclusive rights may only be accomplished by a written instrument or by operation of law.  The specific copyright and the specific rights to be transferred should be clearly described in a written transfer document.  Oral transfers of any interest in a copyright are invalid and unenforceable.  Any transfer of ownership or an ownership interest in the works should be in writing and recorded with the United States Copyright Office.

Copyright Authorship      

Who creates a copyrightable work is a crucial question in determining who is the “author” of the work.  In contrast to trademark law where the identity of the logo designer has no effect on trademark ownership, in copyright law the identity of the creator or creators of the work is the key to accurately determining copyright ownership.  Determining the identity of the author will dictate who owns the copyright in the work and how and by whom the work may be used. The Copyright Act provides that copyright in a work of authorship vests initially in the “author” of the work.  “Author” is a legal term of art meaning the person who owns the work.

A.        Works Created by Individuals.  For works created by individuals, not acting within the scope of employment or as a specially commissioned author under 17 U.S.C. §101(2), the individual is the “author” of the work and the owner of the copyright.

B.        Joint Works.  The authors of a joint work are tenants in common and co-owners of the copyright in the joint work.  The Copyright Act defines a “joint work” as a “work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.”  This intention that each contribution be merged as interdependent parts of a unitary whole, does not mean that the co-authors must actively collaborate or work together to create a joint work.  For example, song lyricists and composers often create works independent of one another and then merge the works into a unitary whole at some later time. Each joint author has all the rights that a single copyright owner would have no matter how large or small a contribution they make to the joint work.  Each joint author can exercise his or her rights with regard to the jointly owned copyright independent of any other joint author. Any joint author may exploit the copyright in the joint work without permission of the other authors, but absent an agreement to the contrary, each author must account to the other authors for any profits derived from such exploitation of the work.  The right to exploit includes the right to license the work or any one of the six copyright interests in the work to others.  Any joint author may license the jointly owned work at will as long as the joint author is willing to account for profits from such enterprises to the other joint authors.

1.         Copyrightable Contributions to Joint Works.  A majority view has developed in the courts that in order to qualify as a joint author, one must contribute copyrightable authorship to the work, not merely ideas or other noncopyrightable contributions.  For example in Ashton-Tate Corp. v. Ross, two programmers, Richard Ross and Randy Wigginton, decided to collaborate on the development of a computer spreadsheet program for the Apple Macintosh computer.  Ross wrote the “engine,” or computational portion of the program, and Wigginton wrote the “user interface” portion of the program.  In the course of a “brainstorming” session between the two during development, Ross gave Wigginton a handwritten list of user commands on a sheet of paper, organized into groups of subcommands, that he thought the program should contain.  The court subsequently held that a list of words did not constitute an independently copyrightable contribution to a joint work.  The list of words represented ideas rather than copyrightable subject matter and the work was held not to be a joint work.

2.         Joint Works Developed in a Joint Venture.  The same is true of a copyrightable work created during the course of a joint venture, strategic alliance or teaming arrangement.  Unless the joint venture, strategic alliance or teaming agreement clearly states that one party or the other owns all intellectual property arising from the venture, then the parties to the venture will be joint authors of any copyrightable work generated by and during the venture and after the dissolution of the venture.

3.         Collective Works Are Not Joint Works.  A collective work presents a slight variation on the joint work rule. A collective work is a compilation of several works that individually are or could be copyrighted.  The contributors maintain copyright ownership in their original works and the new combined work, the compiled work, is afforded its own copyright. The owner of the new copyright in the compiled work is presumed to only have the right to reproduce and distribute the individual works as part of the compilation or any revision thereof.  An example of a collective work is a periodical, a newspaper, a magazine, a collection of short stories or an anthology.

C.        Works Made for Hire.  The “work made for hire” doctrine constitutes a major statutory exception to the fundamental principle that copyright ownership vests in the individual who creates the work.  In the case of a “work made for hire,” the employer or other person for whom the work was prepared is considered the “author,” and therefore the copyright owner of the work.  The Copyright Act, Section 101 contains a two-prong definition of a “work made for hire.”  Works made for hire are either:

1.         Employee-created works.  A work prepared by an employee acting within the scope of his or her employment is presumed to be a work made for hire; or

2.         Specially commissioned works which fall within one of the 9 categories under 17 U.S.C. § 101(2) and if the parties expressly agree in awritten instrument that the work shall be considered a “work made for hire. In such cases, the entity commissioning the work becomes the “author” of the work.  The statutory categories of specially commissioned works under 17 U.S.C. § 101(2) include works that are:

(a)       a contribution to a collective work
(b)       a part of a motion picture or other audiovisual work
(c)       a translation
(d)       a supplementary work
(e)       a compilation
(f)        an instructional text
(g)       a test
(h)       an answer material for a test or an atlas.

D.        Works Created by Independent Contractors. Without an agreement to the contrary, most creative collaborations with independent contractors will result in joint ownership by all who make copyrightable contributions to the final copyrighted work.  The result is different for works solely created by independent contractors.  In the event of a dispute over copyright ownership, without a written agreement the courts will try to determine whether the independent contractor is truly a third party vendor or an employee.  This analysis will determine who is the author of the work and the owner of the copyright.10

17 U.S.C. Id.. § 201.

2 Id.§ 101.

3 Richmond v. Weiner, 353 F.2d 41, 46 (9th Cir. 1965); and Shapiro, Berstien & Co., 221 F.2d 569, 571 (2d Cir. 1955), modified on rehearing, 223 F.2d 252 (2d Cir. 1955).

4. Ashton-Tate Corp. v. Ross, 916 F.2d 516 (9th Cir. 1990).  Several prominent copyright law commentators, most notably Professor Nimmer, have criticized the view that the contributions of each joint author to a joint work must be independently copyrightable, however, the great majority of courts continue to follow the logic of Ashton-Tate.

5. See Shapiro, Bernstien & Co., 221 F.2d 569, 571 (2nd Cir. 1955), modified on rehearing, 223 F.2d 252 (2nd Cir. 1955).
6. See  New York Times Co. v. Jonathan Tasini,533 U.S. 483, 488 (2001).
7. 17 U.S.C. § 201(c).
8. In most situations an employee-created work will be considered a work made for hire.  However, when employees work on projects only tangentially related to the business of the company, but outside of their assigned job duties, whether the work qualifies as a work made for hire may be an issue.  In such circumstances, the courts will analyze whether an employee created such work on company time, using company equipment, at the company’s direction, for a company purpose, using company-obtained information.  If such work was not produced under these conditions, such work may have been created outside the scope of employment and the company may not have clear title to the work.  In such cases, the company should ask the employee to  execute an agreement assigning ownership of all such works of authorship and all intellectual property rights to the company.
9. 17 U.S.C. § 101(2).
10 See Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989)