Contracting with Photographers and Other Independent Contractors

Here’s a common scenario: you’ve spent months developing your product. It’s finally done and you need product photos for your website, social media, and print media. You hire an outside photographer, who probably costs more than you wanted to spend. The photographer does a great job, and turns over digital files. You think the photos are yours – including copyrights – because, after all, you paid the photographer for the photographs which now sit on your computer drive. Wrong! The photographer owns the copyrights unless you have a written agreement stating that you own them.

Is copyright ownership a big deal? It could be. You need to own — or at least have an exclusive license in — the copyrights if you want to freely copy, distribute, or create derivative works and prevent others from doing so, including the photographer. You’ll also need ownership rights if you want to register the copyright with the U.S. Copyright Office and/or sue any infringers. Below is a roadmap for how to get what you need from your photographer (or any independent contractor).

Copyright Law – Ownership

Under U.S. Copyright law, the “author” owns the copyright in the work. Author means the person who actually created the work. The photographer who takes photos for a business for use on its website is the author and copyright owner of the work – even if the work was commissioned and/or paid for by the business.

Work Made for Hire Exception

e.g., business) is deemed the author and owner of the copyright outright, even though the work was created by someone else.

Employment – Work For Hire

A work is a considered a “work for hire” if it was created by an employee in the scope of his/her employment. Under that circumstance, the employer automatically owns the work and no written agreement is required. An example would be if an employee from a company’s marketing department took product photographs instead of hiring an outside photographer. The company would own the copyright to those photographs.

Commissioned – Work for Hire

A “work for hire” may also be created when a person commissions someone (e.g., photographer) to create the work for them. There are two requirements to fall under this exception.

First the agreement must be in writing and expressly state that the work is a “work made for hire.” In some states (e.g., California), a “work for hire” contract must be entered into before the work begins (and cannot be entered into after the fact). In other states (e.g., New York), parties may retroactively enter into a “work for hire” agreement. It is best practice, however, to enter into the agreement before any work begins.

A sample “work for hire” clause might look something like this:

The Work is being specially ordered by the Company for use in connection with its brand. The Work contributed by the Contractor shall be considered a “work made for hire” as defined by the United States Copyright Act (17 U.S.C. § 101). The Company shall own all right, title and interest in the Work and be the sole and exclusive copyright owner.  The Contractor agrees not to use, make derivative works, copy, distribute, broadcast, display, or perform the Work, or any part of the Work, without the express permission of Company.

Second, the commissioned work must fall under one of nine specific categories of work. And this is where it gets confusing. Many times, businesses enter into a “work for hire” agreement only to find out the project didn’t fall under one of the nine categories, and they don’t really own the copyright. Those nine categories are:

  1. As a contribution to a collective work;
  2. As part of a motion picture or other audiovisual work;
  3. As a translation;
  4. As a supplementary work;
  5. As a compilation;
  6. As an instructional test;
  7. As a test;
  8. An answer material for a test; or
  9. As an atlas.

Categories numbers 2, 3, 6, 7, 8, and 9 are self explanatory and not likely to apply in this photography situation. The others, numbers 1, 4, and 5 deserve explanation, because depending on the situation, could be applicable to this photography example.

  • Contribution to a Collective Work
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A collective work includes a “number of contributions,” which are separate and independent works in themselves, and are assembled together as one work. Examples include articles written for a magazine. To qualify, however, there must be more than a few separate elements in the collective work (e.g., more than one article).

  • Supplementary Work

This is a work that is considered “secondary” 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 and illustrations in a book.  For example, a writer writes a children’s book, and hires an illustrator to draw pictures for the book. That illustrator’s work would fall under this category and they could enter into a written “work for hire” agreement.

  • Compilation

A compilation is basically a collective work, and consists of a work that is compiled of pre-existing material that is arranged in a way that results in a “new” work. An example is an album compiled of a group’s best songs from the past decade.   

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Where Do Photographs Fit In?

Photographs taken for use on a website might possibly fall under any of the above three categories, but the first two are probably the most appropriate. For example, photographs on a website are meant to illustrate the text and descriptions of products making it a supplementary work. Or they could be considered part of a larger, collective, work.

However, and importantly, a stand-alone photograph posted on social media (e.g., Instagram) does not necessarily “supplement” or add to a broader work. It therefore might not fall under any of these three categories to be a “work for hire” even if there is an agreement stating that it is.

Another caveat to be aware of is entering into “work for hire” agreements with individual contractors located in California. California law states that if you enter into a “work for hire” agreement under the Copyright Act, then that individual contractor shall be deemed an employee, resulting in worker’s compensation insurance, benefits, wage and other employment requirements. One way to get around this issue is to contract only with companies and not individuals. Another way is to only enter into assignment agreements, discussed below.

Assignment Agreement

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If the photographer’s work does not qualify as a “work for hire” or you don’t want to classify him/her as such, then the only way for a business to own the copyrights in the photographs is to have the photographer expressly assign the copyrights to the business. An assignment is a permanent transfer of copyright ownership. Copyrights are made up of a bundle of rights (e.g., the rights to copy and distribute). A copyright owner can transfer some or all of those rights. Usually all rights are transferred in this type of situation.

Under copyright law, the assignment must be in writing. Unlike a “work for hire,” an assignment doesn’t necessarily last the full term of the copyright. Rather, after the end of 35 years after the assignment, the assignor (original copyright owner) has the right, but no obligation, to terminate the assignment. If that happens, the copyright reverts back to the assignor. The termination rights are not automatic, and the assignor must timely and properly seek reversion. Otherwise, the assignment continues for the full term of the copyright.

A typical simple assignment clause looks something like this:

The Contractor hereby irrevocably assigns to the Company in perpetuity, the Contractor’s worldwide rights, title and interest in and to the Work, and all intellectual property and proprietary rights therein, including all copyrights, moral rights, contract and licensing rights, pertaining to the Work, together with any and all preexisting, current and future claims, demands, and/or causes of action relating to the use ownership and/or infringement of the Work.

Sometimes, contracts include both a “work for hire” clause and an alternative assignment clause when it is unclear if the work falls under a “work for hire” category.

If the Photographer Won’t Assign the Rights – Get an Exclusive License

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It’s not unusual for photographers, especially more established ones, to refuse to sign a “work for hire” or assignment agreement, even if more money is offered.  

To get around this issue, a business can, and should, enter into an exclusive license for the copyrights. That gives the business the ability to exploit the work however it desires and prevent others, including the photographer, from using the work. It also gives the business the ability to register the copyrights and sue any infringers. However, there usually is a clause that allows the photographer to use the photographs for marketing purposes (e.g., in his/her portfolio).

If the photographer does not agree to an exclusive license, then you should reconsider whether you want to do business with him/her.

A typical, simple exclusive license clause looks something like this:

The Photographer hereby grants to the Company an exclusive, perpetual, irrevocable, freely transferable and sub-licensable, royalty-free right and license to use, reproduce, perform, display, transmit, disseminate, and distribute the Work, including the right and license to translate, alter, modify, edit, and compile the Work, in all formats and media, whether now known and existing or hereafter discovered or developed, throughout the universe, for all or any purposes whatsoever.

Company hereby grants Photographer a limited license to use the Photographs in his/her online and print portfolio.

What to Do Now If There Are No Agreements in Place?

If the work has already been completed, and no written agreement is in place, then you have a few options to protect yourself.  Ask the photographer to enter into a written assignment agreement or an exclusive license agreement on a going forward basis, and offer additional money for those rights.  If the photographer refuses, then all is not lost. Hiring the photographer and paying for the files gave you an implied, non-exclusive license to use the photographs. However, you won’t be able to register the copyright, sue infringers, or stop others from exploiting the work.  Only the photographer has that power.

This article is meant for informational purposes only and not intended as legal advice. Please contact an experience attorney with questions.

Copyright 2018 by Anne Kearns Law –  visit www.annekearnslaw.com