Civil Litigation

A Copyright Best Practices Reminder: Get it in Writing

“Get it in writing” is a common refrain from lawyers. Not getting it in writing is a mistake I have seen too many clients make.

When an individual or company engages an independent contractor or consultant to create something for them, they think that they own “it” in its entirety merely because they have commissioned and paid for the work. Contrary to their assumption, without a written contract in which the third party commissioned to do the work assigns the copyright to the individual or company commissioning the work, the copyright in the work will be retained by the independent contractor in the vast majority of cases. Indeed, Section 204 of the Copyright Act requires that a copyright assignment be in writing and signed by the owner of the copyright. It is thus critically important to have a written contract with any outside party that creates a piece of work for you, whether it is software code, a website, text, design, or any other piece of copyrightable subject matter. Ideally, this agreement would be executed prior to the creation of the work.

It is also preferable that the agreement explicitly spell out that the copyright in any work created by the independent contractor has been assigned to the company, but several Courts have found that the mere act of having a written instrument that has been signed by the independent contractor and expresses his or her intent to transfer the copyright may be enough. For example, the U.S. District Court in the Western District of Virginia found an agreement to be sufficient to assign a copyright where the independent contractor agreed that he had no ownership interest in the works, did not own any copyrights therein, would not challenge the company’s ownership of such works, and would execute any documents necessary for the company to register the copyright. See Capital Concepts, Inc. v. Mountain Corp., 2012 U.S. Dist. LEXIS 182874 (W.D. Va. December 30, 2012). While there may be no “magic words” required for a copyright assignment, it is clear that the assignment must be in writing and executed by the creator of the work. See Radio Television Espanola, S.A. v. New World Entertainment, Ltd., 183 F.3d 922, 927-99 (9th Cir. 1999) (“No magic words must be included in a document to satisfy §204(a).”).

In the words of Judge Kozinski, “[C]ommon sense tells us that agreements should routinely be put in writing. . . . Copyright law dovetails nicely with common sense by requiring that a transfer of copyright ownership be in writing.” Effect Associates, Inc. v. Cohen, 980 F.2d 555 (9th Cir. 990).

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