DO YOU “OWN” “YOUR” VIDEO? YOU MIGHT BE SURPRISED.

Young Golfer

Don’t assume you know who owns a photograph or video. You could be making an expensive mistake. Read this little article from our intellectual property counselor, W. Thad Adams at the Shumaker law firm in Charlotte, NC to learn some things you may not know. And don’t worry, this is a “NO Legaleze” zone. So, please enjoy Thad’s easy,“Q&A” format. And remember, this material is for general informational purposes only, it is NOT legal advice. For that, please contact W. Thad Adams at tadams@slk-law.com.

 Copyright is a form of intellectual property protection granted by law to an individual or other entity as a reward for creating a tangible work that expresses an idea.  Copyright does not protect ideas themselves, but only the way an author chooses to express those ideas.  This is called “authorship”, and is an important feature of copyright.

In some respects copyright is a very simple form of protection, because by law it comes into existence automatically as the work is created without the need for any formalities.  Copyright ownership can be owned by a single individual, several contributors to a work in a joint ownership, or by a company for which an individual works.  If an individual creates a work within the scope of his or her duties as an employee of a company, the company is the author and owner without the need for any transfer.

The owner of a copyright has the right to create, distribute and publically display copies, create “derivative” works, and transfer ownership of the copyrighted work.  It is vitally important to understand and follow the rules that govern ownership and transfer of copyrights, and the following examples explain some of the important principles that must be understood.

Example 1– Photographer John Doe is hired as an independent contractor by Ajax Bank to take photos of a child for use on a brochure to be placed at teller windows in the bank branches for the agreed fee of $500.00.  There is no written agreement, just a handshake, followed by delivery of the photos and payment to Mr. Doe.

Question–Who owns the copyright?

Answer–Mr. Doe, the photographer.  Why?  Because Mr. Doe, as an independent contractor is the author.

Question–What rights does the bank have?

Answer–The bank has a “license” to use the photograph on teller window brochures, as that was the agreed understanding on which the fee was based.

The brochure was so popular that the bank decided to use the photograph on billboards and signs in hotel lobbies, which it did without informing Mr. Doe.

Question–Did the bank have the right to do this?

Answer–No.  The “license” granted by Mr. Doe for $500 was only for use on brochures.

Question–What right does Mr. Doe have?

Answer–The right to sue the bank for copyright infringement for copying and displaying the photograph beyond the granted license.

The bank, when sued, claims that Mr. Doe actually told the bank that he wanted the bank to own the copyright and have the right to use it for all purposes.

Question–Can the bank avoid infringement based on its ownership of the copyright?

Answer–No.  Transfers of copyright ownership must be in writing signed by the transferring party and sufficiently specific to establish that a transfer of ownership and not merely a license was intended.  This normally requires “transfer” language in the written agreement, such as “assignment”, “transfer of ownership”, “all right, title and interest in the copyright”, or some equally clear language.

Alternatively, assume that the bank selected the child to be photographed, specified exactly how the child would be posed, exactly what props would be used and how the photograph would be set up, so that the only function Mr. Doe performed was operating the camera, downloading the image onto a thumb drive and delivering it to the bank.

Question–Who owns the photograph?

Answer–Most courts would conclude that the bank owned the photograph as the author because it is the entity that exercised the creativity that made the photograph a success, not the photographer.

Example 2–Ajax Bank hires a photographer, Bill Roe, as a regular employee of the bank, and as part of his employment duties, Mr. Roe spends his time creating photographic artwork for the bank.  The bank asks Mr. Roe to take photos of a child for use on a brochure to be placed at teller  windows in the bank branches.  There is no written agreement, just a handshake, followed by delivery of the photos by Mr. Roe to the head of the bank’s advertising department.

            Question–Who owns the copyright?

Answer–Ajax bank, because Mr. Roe was an employee of the bank, and taking photos was within the scope of his duties as the bank’s employee.

One day Mr. Roe is away on assignment, so the bank asks one of the credit managers to take several photographs of the front of the bank for use in the annual shareholder’s report, using the credit manager’s smart phone.

Question–Who owns the photo?

Answer–The credit manager, since photography was not within the scope of her regular duties as a bank employee.

Question–What rights, if any, does Ajax Bank have?

Answer–A license to use the photographs in the shareholder’s report, since the employee consented to take the photographs knowing how they would be used.

The photos were so popular that the bank decided to use the photographs on billboards and signs in hotel lobbies, which it did without informing the credit manager.  The credit manager finds out and sues the bank for copyright infringement.

Question–Who owns the photograph?

Answer–The credit manager, who has a claim for infringement because the use on billboards and in hotel lobbies was beyond any actual or implied consent to use the photographs.

The above examples only hint at the various circumstances that can arise when copyright ownership is an issue.  Of course they apply not only to photographs but to all forms of expression that are subject to copyright protection, such as text, music, artwork and the like.

There are a couple of practices that can almost always avoid ownership disputes.

First, always specify in writing exactly what the project is, who will do it, and whether the created work is to be licensed or whether ownership is being transferred.  This should be done before the project begins, not after the fact.  Both parties to the agreement should sign and date it.

Second, if the author retains ownership of the copyright, the written agreement should specify under what circumstances further uses can be made and at what cost.

Third, never assume in the absence of a written agreement that rights to use the work extend beyond the original usage made of the work.

Of course, the above material is for general informational purposes only, is not legal advice, represents the opinions of the author and does not establish any form of attorney/client relationship.  Competent legal advice should always be sought before acting on any assumptions regarding copyright ownership or any other legal issue that may arise.