You Can't Always Get What You Want (But
Get What You Need)
By E. Scott Johnson
A wise attorney once asked, “Would you really rather beg for forgiveness
than ask for permission?” That should be the touchstone for all those
who use photographs, sound recordings, film or video clips, artwork or an actual
person’s name or image in a website, print publication, product or advertising.
Unauthorized use of such third party materials poses the risk of infringing
intellectual property rights. Even when such materials are created by employees
or vendors, intellectual property ownership and scope of use license issues
can arise. The prevalent misunderstanding of “fair use” as an affirmative
right, rather than what it really is – a defense to an infringement claim
that can be expensive to vindicate in litigation) – can lead to serious
“Rights clearance” is the discipline of securing
rights, permissions and licenses to incorporate intellectual property owned
by others in new works. For example, to use a popular recording in a corporate
video or on a website, rights must be secured from both the owner of the musical
composition copyright (a “synchronization” license) and the owner
of the sound recording copyright (a “master use” license). To use
the photograph of an identifiable person in a print advertisement or on a website,
one must secure a license from the photograph’s copyright owner. That
could be the photographer or the photographer’s stock photo house, agent
or publisher. One must also secure a model release from the person photographed
or risk infringing that person’s privacy or publicity rights.
Rights clearance is both art and science. “Rate cards” are
not always available, and licensors charge what the market will bear. License
fees negotiated after use has commenced are generally higher than fees quoted
for prospective uses, but not every use must be cleared. New productions should
be evaluated early, so that rights, permissions and licenses can be secured
before production costs are incurred. Developing a clearance process is important
to insurers offering Errors and Omission or Media Perils coverage, insurance
needed by companies that produce or distribute creative works.
Not all pre-existing materials must be cleared. For example,
public domain works can be used without license. However, adaptations of public
domain works (e.g., Disney’s animated film adaptation of Victor
Hugo’s public domain Hunchback of Notre Dame) are often protected
under a separate copyright that covers the material added to the public domain
work. Unauthorized use of the later-added material would infringe the copyright
in the adaptation.
Attention to the legal requirements for acquisition of copyright
is especially important when dealing with independent contractors. Frequently
misunderstood is the term of art “work-made-for-hire.” Under U.S.
Copyright law, other than nine specific categories of works (a contribution
to a collective work; part of an audiovisual work; a translation; a supplementary
work; a compilation; an instructional text; a test; answer material for a test;
or an atlas), work prepared by an independent contractor cannot be a work-made-for-hire.
Unless expressly assigned in writing, the copyright for a commissioned work
that is not in one of the nine statutory categories remains with the creator.
For works falling within the nine statutory categories, copyright
can be acquired by assignment or as a work-made-for-hire, but express words
of assignment (or words designating the commissioned work a work-made-for-hire)
must appear in a signed writing. This aspect of the U.S. Copyright Act, which
denies automatic acquisition of copyright in commissioned works and requires
specific words of assignment (or work-made-for-hire designation for certain
categories of works) can be counterintuitive and lead to significant problems.
For example, a company that engages a freelance photographer may expect to
own the copyright in (or at least the exclusive right to publish) the photographs
for which it pays. But unless copyright is expressly assigned or exclusively
licensed in writing, the photographer is generally free to publish and re-license
or sell the photographs to others. The default rules under the Copyright Act,
which apply when no written agreement expressly addresses copyright ownership
or exclusive license rights, give specific and often unanticipated rights to
the creators of commissioned works.
When intellectual property is created by employees, vendors
or volunteers, the organization that expects to own or exclusively exploit
the work product must ensure that intellectual property ownership and use issues
are appropriately addressed in contracts. Even though U.S. copyright law provides
that works created by employees within the scope of employment are automatically
owned by the employer as works-made-for-hire, intellectual property provisions
in employment contracts can be important in avoiding debates over “scope
To avoid infringement, the best practice is to evaluate rights
clearance issues early before significant production costs are incurred. Securing
rights, permissions and licenses before production commences is almost always
less costly than the alternative of responding to an infringement claim or
negotiating a license from the position of infringer.
E. Scott Johnson is a principal of the national law firm Ober|Kaler. He chairs
the firm’s Intellectual Property practice.