In working with brand owners large and small, I find a surprising number of instances where independent contractors are hired to create content without a proper work for hire or other agreement to protect the company. In the rush to complete projects, get product to market and move on to the next task, even sophisticated brand owners often neglect to obtain the appropriate work for hire or assignment agreements from contractors who create photographs, graphic designs, web design, text and logos.
A recent case in New York demonstrates that independent contractors can and will contest a company’s ownership of such copyrightable works. In Buday v. New York Yankees Partnership, the niece of a man who designed the Yankee’s Top Hat Logo claimed (among other things) that her uncle retained all copyrights in the design and the Yankees’ use infringed upon those rights. Luckily for the Yankees, Ms. Buday’s copyright claims were dismissed by the Second Circuit on the bases of formalities and the employer-friendly work for hire provisions of the 1909 Copyright Act, which governs works made at the time the logo was created.
Nevertheless, this case should be a cautionary tale for brand owners, particularly because the work for hire requirements of the 1976 Copyright Act (which apply to all works created today), include provisions which presume ownership by the independent contractor in the absence of an appropriate written agreement to the contrary. Only certain categories of works are eligible for work for hire status, and a company cannot claim it owns a graphic or other work without a written work for hire agreement.
Brand owners: listen to your copyright attorneys, they are not just being overcautious! You must ensure you have the appropriate agreements in place, particularly for brand logos, product packaging, and advertisement graphics, because everyone is not as “lucky” as the NY Yankees. (Just ask my husband, who is a Boston fan!)