Re: Work for Hire and Copyright Assignment

On Fri, 22 Jan 1999, Stephen Fishman <sfish55[_at_]yahoo.com> wrote:
>
> On Sun, 17 Jan 1999, Barbara Gall <bgall[_at_]sah.com> wrote:
> >
> > I seem to recall some case (Second Circuit, maybe?) which held that a
> > copyright assignment contained in a work-for-hire agreement executed
> > before the work was created was invalid. Help?
>
> I think the case you mean is Schiller & Schmidt, Inc.v. Nordisco
> Corp., 969 F2d 410 (7th Cir. 1992).

Hmm. Read that one 3 times, and I don't think it stands for the proposition that "a copyright assignment contained in a work-for-hire agreement executed before the work was created [is] invalid" In that case the assignment agreement (purporting to assign rights in certain photographs for products in a catalog) was made long *after* the works were created, and was not signed by the assignee. It was only signed by the assignor. The court held that the late signed 'assignment' was not a 'work made for hire agreement' because both parties did not sign it.

The court also said "The creator of the property is the owner, unless he is an employee creating the property within the scope of his employment or the parties have agreed in a writing signed by both that the person who commissioned the creation of the property is the owner. The writing must precede the creation of the property in order to serve its purpose of identifying the (noncreator) owner unequivocally. It did not precede it here."

Finally, the assignor had, some 3 years *before* the assignment, transferred his entire business and the negatives to the pictures to a third party. The court held that this transfer, though not mentioning the copyright embodied in the pictures, effectively transferred the copyright, and therefore, the assignor was not the owner of the copyright when it was 'assigned' to the plaintiff in the case.

I responded because, of course, the proposition in the original post concerns me since in nearly every development deal I am involved in, the creative work is not in existence when the agreement is signed, and it has been my practice always to insist on both work for hire language and assignment language (including agency coupled with an interest to execute the assignment of record). I have snooped around a little (not alot), but not located precedent that says that "a copyright assignment contained in a work-for-hire agreement executed before the work was created [is] invalid." Is there such a case, and in particular, under what fact circumstances would such a rule apply?

/mike oliver
Bowie & Jensen, LLC
<mikeoliver[_at_]home.com> Received on Sat Jan 23 1999 - 17:17:36 GMT