Re: 2 - Re: derivative work - rights to publisher and rights reserved

At 4:55 PM -0400 4/29/05, Andrew SkinnerLopata wrote:
>Thanks for the thoughts on WmFH John and Mike, but I'm more concerned
>with how to structure an agreement that will: 1) acknowledge the
>pre-existing original work - and the author's sole copyright in it, and
>that the new work is a derivative of the the pre-existing work (this is
>not a drafting problem, just a necessary part of the agreement, that may
>constrain the structure of the rest of the agreement(?)),
>2) allow the publisher to fully market and distribute and license the
>new product, while also maintaining the author's abilities to do live
>trainings and presentations using both the pre-existing work and the new
>product. My main concern here is whether to characterize the publishers
>rights as "exclusive" or not. The authors do not need the ability to
>license the new work to others (3rd parties). They just want to be able
>to continue to do trainings and presentations themselves. Will
>reserving this right make the grant to the publisher non-exclusive? If
>so, can the publisher merely license that right back to the authors for
>the term of the agreement?

You can either grant the publisher an exclusive license "subject only to the licensor's reserved right...." Or give the publisher an exclusive license and right to sublicense, and take back a contemporaneous sublicense.

>An agreement most papable to both parties would also:
>3) have the authors retain copyright (and credit) for the content they
>provided - which is all of the text in the new product (in the printed
>material, on the web site, and on the DVD),

If the authors want a copyright on their contribution to the DVD and website, then it can't be a work for hire or a transfer. But if they just want credit, you can provide for that in the agreement, whether it's a license, transfer or work-for-hire, in 36-point type if that's what they want.

>4) have the production company receive copyright (and credit) for the
>original content they provided, which includes the artistic design and
>layout of all the materials, including the computer code for the web
>site and DVD, and the creation of cartoon characters in the DVD.
>
>Is it possible to manage the division of copyright in a single work this
>way? When registering a work I believe that it must be registered as a
>complete work, with joint authors in the whole work, not certain
>aurthors for certain portions of the work - correct? If the new work is
>registered like this (and/or otherwise agreed to as such in writing), as
>having joint ownership (authorship) of the copyright, then the parties
>could have an agreement dividing their rights in the copyright however
>they want - correct?

You can allocate all the benefits of copyright ownership any way you want by contract without calling it joint authorship. In fact, calling it joint authorship is almost certain to leave unforeseen and unresolved issues that are not addressed by the contract, that are inherent in the ambiguity of "joint authorship," and that will cause problems down the road. I would avoid it unless you're looking to keep yourself busy dealing with unforeseen issues.

>Thanks again for any input.
>
>-Andy
>
>******************************************
>Andrew SkinnerLopata, Associate
>Kaufman & Stewart, Attorneys at Law
>270 Oakway Center
>Eugene, OR 97401-5663
>541.342.5587
>asl[_at_]callatg.com
>
>
>
>John wrote:
>
>> 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 Sat Apr 30 2005 - 02:25:30 GMT