“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.
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| 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)).”
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| 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!]
