Commissions and Work for Hire
by
Cindy Hill, Esq. for Fine Art Registry™
My Irish pub band has been doing pretty well, and as the unofficial booking agent/promoter/p.r. chick of the group, I’ve decided that we need a real logo to improve our ‘branding’. I know just exactly what I want it to look like, but the problem is that although I dabble with watercolors and used to do calligraphy for restaurant menus and wedding invitations, I simply don’t have the skills required to create a clean-lined professional-looking graphic image. This means I’m off to a professional graphic artist’s studio. The graphic artist will take my rough ideas (and my check) and will create and email to me a genuine O’hAnleigh logo in a couple of file formats suitable for sending to manufacturers of bumper stickers, t-shirts, and coffee mugs.
But who owns the copyright in the logo image?
My apologies for a dodgy, lawyerly answer, but the fact is: it depends.
Let’s pick our way through the situation and see if we can find out. Some people might guess that the fact that I came up with the idea for the logo, described it to someone, and paid them to draw it for me, means that I own the copyright. Those people would be wrong. You can not copyright ideas, you can only copyright an idea which has been fixed in a tangible medium – drawn, turned into a digital file of a visual image, etc. If I hire an artist to create a mural, mobile, or logo for me, the artist is the ‘author’ of the work under the copyright statutes, because he or she is the person who fixed the idea into a tangible medium – brought it to life. If the artist I hire breaks her wrist, and winds up hiring her cousin to do the actual painting, then the cousin is the ‘author’ of the work and holds the copyright to it, even if the original artist I hired stands there telling her cousin exactly what shade of paint and size brush to use, and how many birds to put up in the corner. So, the fact that I came up with an idea and hired someone to draw it doesn’t mean I own the copyright to ‘my’ logo.
A chorus of naysayers are smirking right now, ready to tell me I’m wrong, because they’ve heard about a copyright exception called work-for-hire. Section 201(b) of the Copyright Act, the work-for-hire provision, says “In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.”
It is popularly perceived that this provision means that if a work of art is ‘commissioned’ that the copyright belongs to the purchaser. But don’t be so hasty – we don’t know yet whether this provision applies to my case, or to any particular case where someone hired an artist to create a work. We have to look to the definition section of the statute first.
Under Section 101 of the U.S. Copyright Act, a “work made for hire” is defined as:
“(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 collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, 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, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.”
In the case of my band logo, I am hiring a freelance graphic artist. Therefore, the artist is not an employee, and the first section here does not apply. If you look through the second paragraph closely, you will also find that none of the nine listed categories of work-for-hire apply to my logo. My logo was not commissioned for use in a collective work (such as a magazine or encyclopedia); it isn’t part of the movie (but wait, why isn’t it?); it’s not a translation (in the sense of language, not in the sense of translating my cockamamie idea into a good looking image); it’s not a supplementary work, compilation, instructional text, test or answer to a test (and no, asserting that “Quick – what’s the O’hAnleigh band logo?” is a test doesn’t fly); and it’s not likely to be in any atlas. Moreover, even these nine work-for-hire copyright exceptions ONLY apply IF the parties explicitly agree in writing that the production is a work-for-hire.
Having gone straight through the checklist, the answer is pretty clear – the copyright in the logo belongs to the artist, not to me. Although I am commissioning and paying for the logo, it is not a ‘work-for-hire’ for purposes of the Copyright Act exception. This is a very important lesson to remember whenever you are dealing with a legal statute – terms used in written laws have the specific meanings listed in the law. ‘Work for hire’ for purposes of copyright law does not mean simply that you were hired to do the work – it has a specific legal definition, and it is ONLY that definition which tells you whether or not the law applies to your particular situation.
So, what if I brought in not just my ideas, but actual sketches of what I’d like the logo to look like, in my own unique squiggly-line fashion? This creates legal ground as fuzzy as my pencil sketches. In this case, I’m the person who first fixed the idea into a tangible medium. Did I then effectively ‘license’ the artist to make a ‘derivative work’ of my logo sketches? Is the artist’s rendition going to be so dramatically different from my mushed up lines that no one in their right mind would conclude that it’s a derivative of my own work? If it came down to a fight in court, it’s very hard to say how it might turn out – but since I’m likely to crumple my rough sketches into the trash and never be able to prove that I ever drew them anyway, I may well be out of luck.
The more practical question is – what good does a logo do me if I don’t own the copyright to it? Will I have to get a license from the graphic artist every time I want to print a run of t-shirts or make up more pint glasses or stickers?
Although the copyright in the logo does not originate with me, and I can not claim to be it’s ‘author’ under the work-for-hire copyright exception, I and the graphic artist can quite logically sign a contract with one another, by which the copyright which originates with the artist is then transferred to me upon receipt of the logo. We can, if we choose, agree to allow the artist to continue to post to logo in their portfolio or website as an example of their work, or to allow any other limited use of it we choose (for example, we could agree that the graphic artist was free to use the Celtic knotwork border of my logo in other works without getting my permission first).
However, once the copyright is passed to me, that means that I, rather than the artist, have to engage in any copyright enforcement that may be necessary in the future. The artist will not be able to stop other people from copying the image. The artist will also be unable to enforce her moral rights – rights of attribution and the rights against the image being distorted – once she transfers the copyright. In the case of my logo, I am likely to use the logo as my ‘trademark’, I probably have a vested interest in protecting it and bringing enforcement against anyone else using it without my permission. But to retain greater control over the work and retain their moral rights, some graphic artists may wish to state in their contracts that they are keeping their copyright but granting the purchaser the sole rights to use the image in commerce, or something to that effect.
It will depend on the nature of the work involved in each case whether or not it is important to the artist to maintain her copyright in the image created. It may well be quite important to a portrait or mural artist to maintain his or her copyrights and moral rights in an original work. An artist would be wise to register such a creative original image with the U.S. Copyright Office, as well as with Fine Art Registry so that the public can be on notice of the artist’s rights. This also benefits the client who commissioned the artwork, by helping to establish provenance and answer any questions which might arise at a future date (say, upon settlement of an estate containing a family portrait) as to who created the artwork.
But a graphic artist creating letterhead or t-shirt type corporate logos may well have a difficult time finding clients if she doesn’t let the client walk away with the copyright, or at the least significant authorization to duplicate and utilize the image. After all, a logo client is likely to want to put their work of graphic arts to all kinds of unsavory uses, like, for instance, printing on pint beer glasses.
Now, all I need is a graphic artist...
— Cindy Ellen Hill, Esq.
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