Re: Re: derivative work - rights to publisher and rights reserved

As defined by the Act, 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 ... supplementary work... if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a "supplementary work" is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes....

According to the original post:

> They have recently developed an interactive DVD and website with a
> publisher/software developer, which is based on the material they have
> authored over the years.

Since C-Corp, which apparently owns the copyright on the original, and the three officers who created the original work, are plainly not employees of the publisher, the proposed agreement must be rooted in the second definition. It sounds like the publisher may have "specially ordered or commissioned" the creation of a new derivative work "based on the material they have authored over the years" which is intended "for use as a contribution to a ... supplementary work" -- the DVD and website.

The plain language of the Act -- "expressly agree in a written instrument signed by them that the work shall be considered a work made for hire" -- doesn't seem to require either an oral agreement or signed written agreement that it's a work-made-for-hire before the work is created. It only requires a written agreement (whenever) that the work "shall be considered a work made for hire." The Second Circuit is closer to the mark because the work for hire (in this case a derivative) has to be "specially ordered or commissioned," but I think the Act leaves room for a work that is "specially ordered or commissioned," that the parties might later agree "shall be considered a work made for hire."

In other words, I don't see anything in the language of the Act that says I can't revise a law review article I wrote about P2P file-sharing if it is "specially ordered" by you for possible inclusion in a multi-media presentation targeted to high school students instead of lawyers; and decide later whether it "shall [or not] be considered a work made for hire," based on a) whether or not you want to publish it when you see it; b)whether or not I think I can get more for it by licensing it to someone else when I'm done with it; c) whether I want the money as I work (typical but not necessary for a work-made-for-hire), when I deliver the work (typical for a transfer or assignment), or in royalties (typical for a license); and d) how much I want for my termination rights (which is all the author necessarily gives up with a work made for hire, and which is typically worthless unless you wrote Gone With the Wind).

John Noble

At 4:00 PM -0400 4/27/05, Mike Bradley wrote:
>The work cannot be work for hire because it has already been created,
>and WFH cannot apply retroactively. Playboy v. Dumas, 53 F.3rd 549
>(2d. Cir. 1995), held that both parties must agree beforehand that a
>work will be WFH, but it allowed the agreement to be signed
>afterwards. However, Schiller & Schmidt, Inc. v. Nordisco Corp., 969
>F.2d 410 (7th Cir. 1992), had already held that not only must the
>parties agree beforehand; they must execute the signed agreement
>beforehand, as well.
>
>In addition, it's simple common sense that WFH can't be retroactive.
>If a work is created originally as a non-WFH piece, the copyright
>comes into existence belonging to the actual author. Since the
>copyright exists, it can't come into existence again with the employer
>as the putative author. Instead, the rights must be transferred to the
>employer.
>
>= Mike Bradley
> www.techpubs.com
>
>
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Received on Thu Apr 28 2005 - 22:35:00 GMT