Monday, 7 July 2014

Copyright ownership for commissioned works around the world

“Who owns my copyright?”

It’s a question that IP practitioners hear ad nauseam frequently, and one that is more properly phrased as “who owns the copyright” since the first question already partially assumes an answer. Recently this Leo has become fascinated by the territorial nature of the answer to this question as it is applied to works-for-hire (or, commissioned works as they are also called).

The interest originated from this news item (which, admittedly, is 18 months old so hardly qualifies as news) about copyright law for photographic works-for-hire in Canada. A change in Canadian law made it explicit that the photographer (i.e., author) owns the copyright to a photographic work-for-hire. Previously, the commissioner of the photograph would be the owner absent an explicit assignment. Curiously, this regime applied only to photographs – other types of copyrighted works-for-hire have always been owned by the author.
Unless you are an independent contractor


The most interesting part of the article was the following quote from Andre Cornellier of the Canadian Association of Professional Image Creators: “In Canada, all other artists have already owned the copyrights to their work and thanks to this new law, Canadian photographers, albeit the last in the industrialized world, now have all legal rights to their images” (emphasis added).

Really? Canada is the last in the industrialized world? [This Leo thought that the term “industrialized world” died concurrently with the term “first world” but is sad to see that he is mistaken.]

In the United States, Prof. Tyler Ochoa - a preeminent authority on Copyright Law at Santa Clara University and, full disclosure, this Leo’s Copyright Law professor in law school - says the following:

17 U.S.C. 201 gives rights to the commissioning party ONLY if the work meets the definition of a "work made for hire"…  For [independent contractors], the work must fall within one of the nine specified categories (which does NOT include photographs), AND there must be a signed written agreement that the work is made "for hire."

Thus, even if the photos fall within one of the nine categories (perhaps as a contribution to a collective work), the photographer owns the copyright in the photos UNLESS there is a signed written agreement stating it is a work made for hire.  (Or unless the photographer is an employee…)

Other countries… would similarly treat the photographer as the owner of copyright, absent a signed written agreement to the contrary (i.e., an assignment).

Indeed, although this Leo is no expert in UK copyright law, a cursory review of the Copyright, Designs, and Patents Act 1988 does appear to grant ownership of works-for-hire to the author. So the laws in Canada and the US (and seemingly the UK) are favorable to photographers.

In contrast, the law in Kenya is much more favorable toward the commissioner of a work-for-hire. The Kenyan Copyright Act 2001 provides that, in a commissioned work, the copyright is deemed to transfer to the commissioner of the work unless there is an explicit agreement otherwise. For example, in the case of a verbal contract commissioning a work with no mention of ownership, the commissioning party owns the copyright. Furthermore, in the case of a written contract commissioning a work with no mention of ownership, the commissioning party owns the copyright. In both cases the moral rights will remain with the author. A similar provision is present in the Ghanaian Copyright Act 2005.

In other words, the default rule in the US/Canada gives copyright to the author, but in Kenya/Ghana gives copyright to the commissioner for works made for hire.

Upon learning of the law in Kenya, Prof. Tyler Ochoa further added: “The Kenyan rule was the rule in the U.S. under the 1909 Act.  It changed in 1978, with the adoption of the 1976 Copyright Act. (CCNV v. Reid, 490 U.S. 730 (1989)).”
 
Nairobi feels quite industrialized,
but what does a Leo know of that?

Why should this be? The current Kenyan and Ghanaian copyright laws were enacted long after the law was changed in the US. The Berne Convention and TRIPS both appear to be silent on this specific issue. Is this a remnant of colonial laws? Did Kenyan/Ghanaian lawmakers intentionally adopt this position?  Insight from readers is welcome, and in the meantime, independent consultants beware! Perhaps it's time to move to the industrialized world...

[Special thanks to Prof. Ochoa!]

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