Unreal Estate: Limits of Work for Hire

originally posted March–May 2008

This essay has not been checked for link consistency.

1. Organizing the Statutory Definition
2. Parsing Subparagraph 2
3. Excluded Works
1. Competing IP Rights

Notes

I. Organizing the Statutory Definition

And now, the beginning of a short assignment. So to speak. I'm going to start with some grammar, and it's going to extend over the next couple of weeks at irregular intervals... and it's going to look very, very unfavorable indeed to the entertainment industry (in particular, to the publishing and music industries) by the end of it.

Since it's the weekend, I'll start just by quoting the relevant section of the statute. Two caveats first:

• I do not defend the crappy writing I'm about to quote. One of the problems with not being dictator is that I have to put up with the way the law is, not the way I believe that it should be.
• I will freely admit to having agendas of my own here. However, that necessarily means wrestling with everything to find the "most correct" meaning and then comparing it to what I'd like. The converse — which is more than vaguely intellectually and actually dishonest — usually results in "judicial activism." (At least, it does if you can get a judge to buy it. Otherwise, it's called "lobbying.")

So, then, without further ado, I quote from 17 U.S.C. § 101:

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 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.

For the moment, just read that over. I'll get into the heavy lifting over the next few days. And I warn you — it is indeed heavy.

Subparagraph (1) is actually pretty easy and straightforward... grammatically, at least. Putting it into a definitional mode, checking for transitivity problems, and doing all of those other tasks required of a formal grammar construct, we end up with:

A work prepared by an employee within the scope of his or her employment is one of the two types of work made for hire.

That seems to make sense, right? I'll return to what "employee" and "within the scope of his or her employment" mean later on; the key point here is that the restatement above does not change either the meaning or priority of meaning of any element of that definition.

Subparagraph (2) is more of a problem. Had this been given to me as a student exercise, the student might have hoped for a D if I was feeling particularly generous. Not only is the first sentence badly mispunctuated, but it relegates critical definitions to later sentences. Perhaps whoever wrote this monster had tried to draft a patent at some time in the past — it sure looks like a dependent patent claim, which is nothing to aspire to. In any event, I'm going to radically reorganize subparagraph (2).

A work specially ordered or commissioned for use as any of the following is also a work made for hire, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire:
(a) a contribution to a collective work;
(b) a part of a motion picture or other audiovisual work;
(c) a translation;
(d) a supplementary work, that 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;
(e) a compilation;
(f) an instructional text, that is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities;
(g) a test;
(h) answer material for a test; or
(i) an atlas.

All I have done here is rearrange the language in the statute so that the parts that need to be next to each other are. This, by itself, eliminates two sources of confusion:

• In the statutory definition, the "written instrument" clause is appended after the invocation of an atlas, without any distinguishing punctuation different from the rest of the list. Note that the revised list separates each subtype with a semicolon, not a comma as in the statute. One might, therefore, argue that "written instrument" applies only to an atlas. That would not only make no sense whatsoever — there is no reason to assume that a documentation requirement would apply only to atlases, particularly in light of the later-qualifying sentence that expands on "supplementary work" and "instructional text," but it would be inconsistent with both substantial then-existing law and practice (and would necessarily impair many related contracts) and the legislative history of this mangled provision.
• The definitions applicable to one subtype only desperately need to be connected to, and subordinate to, that subtype only, by more than a precatory clause.

Let's turn back to subparagraph 1 and try to define a few critical terms that mean both more (and less) than the entertainment industry would have them mean.

• an employee seems pretty straightforward, right? If I work for Company X, I'm an employee of Company X, right? Well, not exactly. Unfortunately, "employee" has a whole bunch of potential meanings, and the Copyright Act does almost nothing to distinguish among them... or justify any such distinction. Even in the world of federal law, "employee" has a number of different, partially overlapping meanings. About all that we can say for certain is that an individual employee is not truly an employee if he or she fails virtually all of the multifactor test used by the IRS to determine whether one is an "employee" or an "independent contractor." However — and this is not just a caveat, but critical — several of those factors simply do not apply to creative activities. Time and place of production really doesn't matter; only time and place of presentation do. And so on.
• within the scope of his or her employment is an even bigger mess, particularly if there is no formal employment contract... or, worse yet, a one-sided take-it-or-leave-it "employee handbook." Then, too, there's the question of when a hobby activity that has a common bond of some kind with something that does pass the employment test is also within the scope of employment; consider an assistant professor of physics who specializes in optics who writes science fiction stories concerning astronomical observation and consequences of spotting intelligent life, or a local prosecutor who writes political thrillers involving wiretapping and cover-ups. (Obviously, neither of these is entirely hypothetical.)
• work made for hire is only indirectly defined here; what we're really interested in is the consequences of a work falling into that category, not the definition per se. I'm going to reserve this for later.

But the fun is just starting, folks. Just wait till we get through subparagraph 2...

II. Parsing Subparagraph 2

It's time to start working through subparagraph (2) of the definition. This oddly-structured monstrosity has a number of landmines waiting in it for both creators and their patrons.

Patrons?

This marks one of the not-so-subtle attempts to disguise what the WFH aspect of US copyright law is really doing. The critical language that makes this clear is not in the definition of a work made for hire (or work for hire, or WFH), but buried in the middles of the statute.

§ 201(b) 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.

This is itself far from clear without some knowledge of Renaissance-era concepts of the ownership of created material — that is, prior to the Statute of Anne (1710).¹ Although we now identify works with their actual creators, that was certainly not the Renaissance practice; instead, works were owned by the creators' patrons, unless the creators were themselves independently wealthy and creating without prior commission. The Berne Convention, and the US Constitution, reject this formulation; however, it was statutorily reinserted by Congress in the early 20th century. We'll leave aside for the moment whether this was proper or not.² So, in any event, it has landmines for both creators and their patrons.

Some of the types of works covered in subparagraph (2) of the definition of WFH are fairly obvious, and fairly easy to dispose of. Some, however, are not. As is all too common in the Copyright Act, this subparagraph makes a great deal more sense if one cuts away the simple instances from back to front. Any properly trained programmer will emphasize that one should put the simplest options in a branching tree at the top of the tree, not at the end, so that others can maintain the code later. It's pretty apparent that no properly trained programmers were involved in creating this monstrosity!³

In any event, it's pretty clear what an atlas (i) is; similarly, a test (g) and answer material for a test (h) are pretty clear. Although the definition of instructional text (f) is both overlong and underinclusive, it is at least clear (although one must question whose purpose matters — the patron's or the creator's?). Skipping a bit, the definition of a supplementary work (d) is simultaneously overlong, underinclusive, and reasonably clear. That leaves us with four remaining possible types of WFH:

(a) a contribution to a collective work;

(b) a part of a motion picture or other audiovisual work;

(c) a translation;

(e) a compilation;

So, we've successfully cleared away more than half of the possibilities. The remaining four, however, will not prove so simple. Nor will the universe of works excluded from WFH for nonemployees.

At the moment, we're trying to figure out what the following acceptable categories of WFH really mean:

(a) a contribution to a collective work;

(b) a part of a motion picture or other audiovisual work;

(c) a translation;

(e) a compilation;

Unfortunately, my usual method of interpreting the Copyright Act — start at the end and work toward the beginning — does not really help here; the first and last of these four categories are by far the most difficult (and related), so I'll start there.

On first impression, it seems that (a) and (b) are really the two types of works (of these four) that are most closely related. However, that depends upon ordinary-English meanings of "collective," and not the copyright term-of-art "collective work." In copyright terms, a "collective work" is a single work that does not have separable copyrightable components, but results from the work of more than one Author (in the Constitutional sense). That is why it is more closely related to a "compilation" than to either of the other two categories. The distinction between a "collective work" and a "compilation" is in that separability, and in particular in nonallusive separability.⁴

Allusive separability leads us into choice (b). Consider the bombast that passes for "musical scores" in most motion pictures coming out of Hollywood, certainly since the 1950s. In an artistic and copyright sense, the accelerando treatment of the cellos underneath the star's entrance in Jaws⁵ could be a "separable" work. It could even be put into a medley with other works from the same (overrated) composer. However, even separated, the music is allusive: One simply doesn't listen to any of the leitmotifs from Star Wars without thinking Star Wars (or, perhaps, Wagner and Triumph of the Will, but that's sort of beside the point). This illustrates one of the differences between the collective work/compilation on the one hand, and the motion picture or other audiovisual work on the other: The individual components may well have an independent copyright existence, but have very little independent artistic existence in the latter instance.

And that leaves us with "translation." This is a particularly unfortunate choice of term, and the legislative history is maddeningly (and simultaneously!) circular and self-contradictory. It includes the most obvious example: From, say, Latin to English (and the converse). Once one gets beyond this obvious example, though — or moves beyond textual works to others — things get much, much more complicated and unclear. For example, would a "translation" of a work also include encoding for the visually impaired? How about for those with aural-visual synesthesia? Would recasting verse into prose — especially from slightly archaic verse — constitute a "translation"? Does use of motion-picture technology wandering over a still photograph (a la Ken Burns) constitute a "translation" (leaving aside that it is also a "motion picture or other audiovisual work")? If Congress meant strictly linguistic translation, it should have said so; it certainly managed to be oververbose elsewhere in the WFH definitions!

So, then, that's what does fall inside the eligible works. Next time, I'll point out some types of works commonly assumed to be WFH that do not fall inside the statutory definition.

III. Excluded Works

Now that I've explained what types of works can legitimately fall into the WFH classification, it's time to look at what cannot.

• A work by an employee that is not within the scope of his/her duties does not meet the requirements of subparagraph 1. For example, a janitor who writes novels on his/her lunch hour is not producing WFH.

  The trickier question is whether works produced separately by the employee — for some value of "separately" — but are nonetheless comparable to his/her duties and employment fall inside the definition. In some fields, it is extremely common for the employer to make this kind of claim, although this is more often a patent than a copyright issue. In others, it is not; consider the graphic designer for a company that produces human resources materials for its clients who, in her spare time, designs books and paints covers. Consider the lawyer who writes legal thrillers as a part-time partner in a major law firm. (Obviously, neither of these is hypothetical.) More disturbingly, consider the employee of a film studio who writes a spec screenplay...

• A work that exists before the "special[] order or commission[]" — that is, the "written agreement signed by [the parties]" — itself exists does not meet the requirements of subparagraph 2. I freely admit that this is a much harsher interpretation than many in the IP industries would accept, particularly regarding textbooks and supplemental materials. However, despite the substandard writing in the definition, the only way to read the "special order or commission" and "written agreement" language in subparagraph 2 that does not make them even more ridiculous than they already are is to apply them to each of the nine types of works, as I did in my "reorganized" version."

  This has farther-reaching implications than one might suspect. Periodicals are fond of claiming the copyright in contributions, particularly in the more journalistically oriented end of the industry. However, under this reading of the statute, if the work existed before submission to the publisher, it cannot be treated as a WFH, because it will fail the "specially ordered or commissioned" element of the definition. For a non-employee work to be WFH, it must meet all three of the conditions:

  • Specially ordered or commissioned, and
  • Written agreement signed by the parties for WFH, and
  • Falls inside one of the nine categories of works.

  If it fails any one of those conditions, it's not properly WFH. This is precisely why the various Superman lawsuits have come out the way they have: One cannot retroactively designate a work as WFH. (Having the time and resources to win the lawsuit to validate this, though, is another issue entirely.)

• A work that otherwise meets the requirements of subparagraph 2, but is not in one of the nine categories acceptable as WFH, does not meet the requirements of subparagraph 2, either. The publishing industry in particular has gotten away with improperly imposing WFH agreements for non-WFH for decades.⁶ Here are a few examples, again in no particular order:
  • A book-length work of fiction based on media properties, such as an authorized Star Trek novel
  • A book-length work of fiction for series not based on media properties
  • A freelancer's cover design or painting for a book or magazine
  • A graphic novel both drawn and written by the same person
  • A screenplay that is never produced, or discrete portions of a screenplay that is never produced⁷
  • Computer source code written by a freelancer... even if "compiled" instead of "interpreted"

  This is far from an exhaustive list.

   A. Competing IP Rights

A closer look at two of these groupings of excluded works will also prove helpful when later considering "contracting around" the issue. However, rather than organizing this discussion around the groupings themselves, it makes more sense to organize it around the particular problems raised... which, not entirely coincidentally, also organizes the discussion around the various interests/roles that are in play.

The first set of problems comes from conflicts with other, preexisting interests. The employment interest — and the corollary common-law duty of loyalty to an employer — is an obvious example of this. Less obvious (and, therefore, more insidious) is the potential conflict with different types of intellectual property rights, particularly trademark and unfair competition rights related to a media property. An example might make this clearer; it's one I've quoted before in this blawg:

Text copyright 2007 by J.K. Rowling Illustrations by Mary GrandPre copyright 2007 by Warner Bros. HARRY POTTER & all related characters and elements are TM of and copyright WBEI Harry Potter Publishing Rights copyright J.K. Rowling All rights reserved.

Harry Potter and the Deathly Hallows ii (unnum.) (2007) (emphasis added). Similarly, consider

Copyright © 2006 CBS Studios Inc. All Rights Reserved. STAR TREK and related marks are trademarks of CBS Studios Inc.

David R. George, III, Crucible: McCoy: Provenance of Shadows ii (unnum.) (2006) (emphasis added).

These two books point out some of the simpler potential conflicts. (Yes, they can — and do — get much more complex, both legally and factually.) In each instance, the copyright notice alleges, or tries (incorrectly) to deny, a division in ownership of expressive and allusive materials. The expressive materials comprise the text in question; as noted above, these are not properly WFH, whether or not the contracts say they are. The allusive materials include, but are not limited to, the various marks. This becomes clearer in the Star Trek example with a few not-so-outlandish hypotheticals.

• A fan-written novel that takes substantial dialog one existing episode/film/novel, and copies a substantial part of the plotline, would constitute both copyright and trademark infringement. There is no question that it would not be legally proper to publish such a work without an explicit license from all of the interest-holders. The copyright infringement arises from both the direct copying and the preparation of a derivative work.⁸ The trademark infringement arises from the allusions to marks without license to do so, and in a nonexemplary fashion. It's one thing to have a character exclaim, "Your libido rivals Captain Kirk's!" It's another thing entirely to copy one of Captain Kirk's romantic conquests, even slightly reworded.
• A fan-written novel that takes no dialog (except, perhaps, dialog constituting scenes á faire or that represents one of the restricted ways of expressing a fact — even a "fact" internal to a work of fiction) or plotline from any single existing work, but instead draws from the entire environment to tell a new story. Under some copyright theories, this would constitute a copyright infringement (e.g., the Tarzan/Sam Spade line of cases); under others, it might not, particularly if arguably parodic (e.g., The Wind Done Gone/Gone With the Wind controversy). That, however, does not get the author off the hook, as the allusive uses of marks — particularly if done persistently — constitutes some form of trademark infringement. This points out a problem in using traditional trademark analysis: If an alluding work is "high quality," it is both harder and easier to win the claim.
• A fan-written novel that parodies the existing environment, particularly through use of anachronism. One good example is this "winning" entry from the Bulwer-Lytton contest a few years back:

  Kirk's mind raced as he quickly assessed his situation: the shields were down, the warp drive and impulse engines were dead, life support was failing fast, and the Enterprise was plummeting out of control toward the surface of Epsilon VI and, as Scotty and Spock searched frantically through the manuals trying to find a way to save them all, Kirk vowed, as he stared at the solid blue image filling the main view screen, that never again would he allow a Microsoft operating system to control his ship.

  (Note, though, that this parody probably fails the legal definition of "parody," because arguably its "target" is not Star Trek, but Microsoft. This merely points out that lawyers shouldn't write about literature without understanding literary theory first...) In this instance, the trademark use probably is examplary, so it would not constitute trademark infringement. Whether it might be some other form of unfair competition, though, is not clear.

[in progress]

1. Irrelevant aside: At the time it was passed, it was 1709... because the year began on 25 March. When the UK adopted the newer calendars in the mid-18th century, that same date moved from 1709 to 1710 when the year was started on 01 January (at the same time as the notorious loss of 11 days to correct for the excess number of leap years in the Gregorian calendar).
2. The argument that it is not a constitutional exercise of Congress's powers is somewhat better than one might suspect. The Constitution empowers Congress to give to "authors" the rights in question, not to "authors and their patrons" — a term with which the Founders were all too familiar, and with which Benjamin Franklin in particular had struggled over his years in and around the nascent publishing industry in the US. One might argue that the Commerce Clause and the Necessary and Proper Clause, collectively, give Congress the authority to do more than does the IP Clause itself. The problem is that the WFH definition does less than that by redefining "white" to mean "white and certain shades of grey and chartreuse." In other contexts, there is very strong and explicit precedent that Congress does not have the authority to change or refine definitions found in the Constitution; in particular, there's a strong line of cases in administrative, environmental, and maritime law that reserves that right to the courts.

   This argument must wait for another time; I'm merely pointing out that it is not nearly so clear as most scholars, practitioners, and activists assume that it is, and probably points in opposition to that assumption.

3. It's also bad writing, particularly for a list with multiple compound elements. As the Seventh Circuit has noted, "This is not fine prose nor, by itself, terribly clear. It would appear to have been drafted by lawyers." Bourke v. Dun & Bradstreet, Inc., 159 F.3d 1032, 1037 (7th Cir. 1998).
4. Some might argue that a compilation copyright necessarily belongs to a non-contributor to the collection; for example, the compilation copyright for a magazine filled with freelance works. However, this depends both on commercial assumptions and on construing the accidents of typographical order — often based on ad sales and the layout accidents due to prior pieces — as original in the copyright sense.

   Further, there is some argument — an increasingly less-tenable argument in the face of Feist and the Dorothy Parker litigation — that the selection and arrangement of materials for a "compilation" is of greater weight than for a mere "collective work." Whether that is true or not, it is very much tangential to what I'm doing with this essay.

5. Of course the shark is the star. After all, ultimately he wins... if only because he (or at least his progeny) returns for the sequels.
6. The music industry also tried, in the course of the accession to the WIPO treaty, to have phonorecordings treated as WFH. The provision even made its way into the statute, but was quickly excised as part of a "technical correction." The last actual paragraph of the definition of WFH in § 101 (which I did not quote) is the statutory language that makes that "technical correction" and invalidates any contract signed during the year-long "validity" of that treatment.
7. The immediate, and obvious, objection is that this is also subject to the relevant collective bargaining agreements. I will discuss the "contracting around" problem a couple of entries down the road.
8. For the moment, I am neglecting any potential fair use defense. That is another subject entirely, although the very concept of fair use has some interesting implications for the very concept of the WFH. Unfortunately, those implications belong — for the present — in law journal articles that are harder to take out of context (although not completely impossible). Just assume that anything in these examples is beyond the bound of fair use, both under the traditional four factors and under the fifth, nonstatutory, factor (administrative convenience).

Law and reality in publishing (seldom the same thing!) from the author's side of the slush pile, with occasional forays into military affairs, censorship and the First Amendment, legal theory, and anything else that strikes me as interesting.
 

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