special commission where there is no relation of employer and employee, unless the parties agree otherwise. In summary, the provisions regarding employment for hire proposed in the aforementioned general revision bills fall into two main categories: those which designated the employer for hire as the author and those which considered him as the copyright owner (or the assginee of the actual author). The Vestal bills of 1926 to 1931, the Sirovich bills of 1932 and 1936, and the Thomas bill of 1940 belong to the former group; while the Dallinger bill of 1924, the Perkins bill of 1925, the Duffy bill of 1935, and the Daly bill of 1936 belong to the latter. It should also be noted that all the bills which defined the employer for hire as the author also provided, as the present law does not, that he was deemed to be the author in the absence of an agreement to the contrary. Two of the earlier general revision bills provided special rules for contributions to periodicials. The first Dallinger bill of 1924 (which extended the same rule also to contributions to books or catalogs) provided that in the absence of a contrary agreement, the employeeauthor was deemed to reserve all rights other than the right of publication in such a periodicial (or book or catalog). The Perkins bill of 1925 provided that the author of a contribution to a periodical shall be the copyright owner, and in the absence of a contrary agreement, the publisher shall be deemed to have a license to print and publish the contribution. None of the later revision bills contained any comparable provisions regarding such contributions. The Dallinger bill of 1924 and the Perkins bill of 1925 also had special provisions for motion pictures. The Dallinger bill specified that the manufacturer of a motion picture shall be deemed the author thereof, while the Perkins bill specified that the manufacturer of a motion picture (or of a sound recording) shall be the first owner of copyright therein. Several of the general revision bills dealt specially with commissioned portraits. The Dallinger bill provided that the person ordering an engraving, photograph, or other portrait of a living person shall be the first owner of copyright. The Vestal bill of 1930 provided that the person ordering a photographic portrait shall be the first owner of copyright. The Duffy bill of 1935 and the Daly bill of 1936 took a somewhat different approach in providing that copyright could not be had of the photograph of a person without his written consent. Except for the foregoing provisions regarding portraits, the various general revision bills did not provide affirmative rules regarding the ownership of copyright in commissioned works. Instead, most of the bills contained the negative proviso that the provisions regarding the authorship or ownership of works made by employees would not apply to commissioned works in the absence of a contrary agreement. It was apparently contemplated that commissioned works would be dealt with under the rules established by the court decisions. V. FOREIGN LAWS A. WORKS MADE FOR HIRE Statutory provisions concerning works made for hire are found in the copyright laws of the British Commonwealth, Ireland, Thailand, the Netherlands, and Turkey. The laws of the Commonwealth, Ire land, and Thailand invest the employer for hire with first copyright ownership, while the laws of the Netherlands and Turkey regard the employer for hire as author. The provisions of the new copyright laws of the United Kingdom and India are slightly different from the provisions in force in the other Commonwealth countries, the latter being adopted from the United Kingdom Copyright Act of 1911. In various countries which have no stautory provisions concerning copyright in works made for hire, rules have been formulated by the courts. The following is a brief survey of the relevant statutory provisions of Canada (as representing the law in the Commonwealth countries except United Kingdom and India), the United Kingdom (as representing the law in United Kingdom and India), the Netherlands and Turkey, supplemented by some remarks on the principles followed in certain countries with no statutory provisions in this field. Canada Section 12 (3) of the Canadian copyright law of 192127 provides: (3) Where the author was in the employment of some other person under a contract of service or apprenticeship and the work was made in the course of his employment by that person, the person by whom the author was employed shall, in the absence of any agreement to the contrary, be the first owner of the copyright; but where the work is an article or other contribution to a newspaper, magazine, or similar periodical, there shall, in the absence of any agreement to the contrary, be deemed to be reserved to the author a right to restrain the publication of the work, otherwise than as a part of a newspaper, magazine, or similar periodical.28 The provision is almost identical with the provisions of the Dallinger and Perkins bills.29 Probably the latter were modeled on the old British Act. It should be noted that in all cases of works made for hire an express agreement regarding the copyright governs. Otherwise, the author-employee who works for a newspaper or periodical is favored over other employees inasmuch as he may restrain his employer or others from using his work otherwise than as a part of a newspaper or periodical. His position in this respect is improved under the new United Kingdom Act, as noted below. United Kingdom The new United Kingdom Copyright Act of 1956 30 provides for works made for hire in section 4(2) and (4). For the sake of continuity, the first five subsections will be quoted in full: 4. (1) Subject to the provisions of this section, the author of a work shall be entitled to any copyright subsisting in the work by virtue of this Part of this Act. (2) Where a literary, dramatic or artistic work is made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, and is so made for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall be entitled to the copyright in the work in so far as the copyright relates to publication of the work in any newspaper, magazine, or similar periodical, or to reproduction of the work for the purpose of its being so published; but in all other respects the author shall be entitled to any copyright subsisting in the work by virtue of this Part of this Act. (3) Subject to the last preceding subsection, where a person commissions the taking of a photograph, or the painting or drawing of a portrait, or the making of an engraving, and pays or agrees to pay for it in money or money's worth, and the work is made in pursuance of that commission, the person who so commissioned 27 CAN. REV. STAT. c. 55. 28 Since the employer is merely the first copyright owner and the employee is referred to as "the author," it would seem that the latter retains his moral rights under sec. 12 (7) of the Act. 29 See supra pp. 7 and 8. 30 4 & 5 ELIZ. 2, C. 74. the work shall be entitled to any copyright subsisting therein by virtue of this Part of this Act. (4) Where, in a case not falling within either of the two last preceding subsections, a work is made in the course of the author's employment by another person under a contract of service or apprenticeship, that other person shall be entitled to any copyright subsisting by virtue of this Part of this Act. (5) Each of the three last preceding subsections shall have effect subject, in any particular case, to any agreement excluding the operation thereof in that case. As indicated above, the position of the newspaper or periodical employee, or the "staff journalist," 31 is somewhat improved under the new Act. Previously he parted with the entire copyright in the absence of an agreement to the contrary. He could, unlike other author-employees, restrain his employer from using his works otherwise than as a part of a newspaper or periodical. But he did not have other remedies. For example, he could not obtain damages for such use. Under the new Act the staff journalist retains the copyright except the right to publish in newspapers and periodicals. The Copyright Committee proposed to retain the rule of the 1911 Act,32 but the rule was amended during the debates in Parliament.33 Generally, it was felt that first ownership of copyright in works made for hire as a rule should vest in the employer. As stated by Lord Lucas: Perhaps it is right that under a contract of service the whole of the creator's brain and muscle should be at the disposal of the employer.34 However, there was strong sentiment for giving journalists in this respect an even better status then the 1911 Act. Lord Mancroft said: Instead of applying the idea of a restrictive covenant, the copyright is to be split, the newspaper proprietor getting newspaper rights and the author retaining all other rights.35 It is this principle of a split copyright which is embodied in the new United Kingdom Act.36 The Netherlands Article 7 of the Netherlands copyright law of 1912 37 provides: Article 7. If a literary, scientific, or artistic work is produced in the service of another person, such person shall be deemed the author thereof, unless otherwise agreed between the parties. The provision seems to establish a relationship between employer and employee similar to the one provided by the U.S. copyright law. Although the U.S. law does not state that an employee may preserve his rights as author by contract, it seems likely that a contractual stipulation to this effect will be recognized also in the United States. This is the term used during the Parliamentary debates in which a distinction was made between the "staff journalist" and the "commissioned" or "free-lance journalist." 12 Copyright Committee, Report, CMD. NO. 8662, at 101 (1951). "As to the distinction between newspaper and periodical employees on the one hand and other employees on the other, the recent Canadian Report on Copyright has the following to say about the problem: "Should this special treatment of employed contributors to periodicals (e.g. members of a newspaper staff) be extended to all employees? This is, we think, out of the question. It will be noted that the employed periodical contributor's right of restraint is not to restrain the use to use for the express or immediate purpose for which the contribution was made, but only to restrain it to periodical use. To carve out categories of use to which publication should be restrainable by employees in other businesses would be impossible. If we moved in the other direction and restrained use of all employers to the immediate purposes of works it would place an intolerable restraint on employers, as for instance, in the case of business letters written by employees. We think that the general principle that copyright in a work made in the course of an author's employment by another person should vest in that person unless there is an agreement to the contrary is the correct one and that there should be no qualification in favour of employee contributors to periodicals. Needless to say the present statutory qualification, or a variation of it, could be created by agreement between the employer and the employee." (p. 46) "Staatsblad," 1932, item 308. Turkey The Turkish copyright law of 1951 38 deals with employment for hire in the first paragraph of article 8 which provides: Article 8. The author of a work is the person who has created it. The authors of works produced by officials, employees, or workers, as part of their duties are the persons who have appointed or who employ them, unless the contrary results either from a contract between the parties concerned or from the nature of the work. This rule shall also apply to legal entities. Compared with the Netherlands provision, this provision contains the additional qualification that the nature of a work may cause authorship to vest in the employee. It is not clear to what kinds of works this would apply. Otherwise, the Turkish provision seems to follow the same principle as the Netherlands and the United States. Countries without statutory provisions regarding works made for hire One of the basic principles of the Berne Convention, to which most of the countries in question belong, is the strong tie between the author and his works. Principally, the author is the first copyright owner. However, there are certain deviations from this principle, and at least some of the Berne countries recognize in their judicial practice a rule governing works made for hire which is similar to the one found in the statutes of the British Commonwealth. This is the case, for example in Germany and Scandinavia. Runge, in his work on copyright,39 states that in Germany the copyright in literary works (the German word "Schriftwerke" includes also dramatic works) and certain pictorial works (not including works of art; in German, "Kunstwerke") often, as a result of the employment contract, vests in the employer rather than the author-employee. Runge states: It is true that copyright also in this case first comes into existence in the person of the author. However, as soon as it exists, the title passes to the employer either by express agreement (for example, a stipulation in the employment contract) or, as a rule, by tacit agreement.40 The recent report of the Swedish Copyright Committee states: In certain employment relations it is implied in the employment contract that the author gives to his employer the entire copyright in works created within his employment.41 The rules mentioned are derived from the general law of contracts which has developed along fairly uniform lines in the European countries. Similar rules may therefore be assumed to apply elsewhere in Europe. B. WORKS MADE ON COMMISSION A number of countries have statutory provisions regarding copyright in commissioned works. 42 Of these, only the laws of China and Venezuela provide generally that the copyright in any commissioned work belongs to the person who commissioned it, in the absence of an agreement to the contrary. In the rest of these countries, the same rule applies to certain types of works only. The various statutes of the British Commonwealth limit the rule to engravings and photographs in general and paintings 35 "Resmi Gazete," 1951, page 2397. 39 RUNGE, URHEBER UND VERLAGSRECHT 28-29 (1948). 40 Id. at 29. 41 UPPHOVSMANNARATT TILL LITTERARA OCH KONSTNARLIGA VERK, LAGFORSLAG AV AUKTORRATTSKOMMITTEN 277 (1956). 42 Art. 16 of the Chinese Copyright Law of 1944, and Art. 144 of the Venezuelan Copyright Law of 1928. 44 or drawings of portraits.43 The Italian copyright law applies the rule to photographs, and the Japanese copyright law applies it to photographic portraits.45 The British Copyright Committee thought it arbitrary to single out certain types of works for special treatment in this respect, and recommended generally that in the absence of an express contract to the contrary, the copyright in a work which has been created for valuable consideration in pursuance of an agreement to create it *** should vest in the person giving the consideration.46 This proposal, however, was opposed strongly in both Houses of Parliament, the members of which took exception especially to the effect it would have on freelance journalism.47 In countries which have no statutory rules regarding copyright in commissioned works, the courts have, like the U.S. courts, formulated rules according to which the copyright in certain types of works will vest in the persons who commissioned them, subject to agreements to the contrary. 48 VI. ANALYSIS OF BASIC ISSUES A. WORKS MADE FOR HIRE Employer or employee as initial copyright owner generally Under the present law the employer of a work made for hire is deemed to be the author, and is thereby the initial owner of the work.49 This rule may be said to have in its favor simplicity and definiteness in result, once an employment relationship is established. It may also be argued that the present law has worked satisfactorily in practice; that employee-authors are compensated for their work; that the product of employment should ordinarily belong to the employer; that the present law is in accord with the result that would usually be brought about by contract or trade custom; and that in unusual cases employees may reserve rights to themselves in their contracts with the employers. On the other hand, it may be argued that the concept of designating the employer as the author of an intellectual creation of another person is artificial; that the actual creator is intended to be the primary beneficiary of copyright; that since copyright works may be used commercially in a number of ways beyond their use in the employer's business, the employee-creator should ordinarily be the beneficiary of such other uses; and that the burden of contracting otherwise should be placed on the employer. ❝ See, for example, sec. 12(2) of the Canadian Act of 1921, and sec. 4(3) of the U.K. Act. Art. 88 of the Italian Copyright Law of 1942. 45 Art. 25 of the Japanese Copyright Law of 1899. See also Art. 24. Report, op cit. supra, note 30, at 100. See also the very recent Report of the Canadian Royal Commission, at 47-48. The Canadian Commission recommended that copyright in a commissioned work should vest in the person commissioning it, but the Commission made a distinction in case of works "commissioned or ordered for a particular purpose communicated to the author before the work was made." In such a case, the author should have the right to restrain the use of the work for another purpose by publication or what otherwise would be an infringement if the author owned the copyright." 47 Official Reports, op. cit. supra, notes 30-31. "See, for example, as to Germany, RUNGE, op. cit. supra, note 37, at 29; and the Swedish Copyright Committee Report, op. cit. supra, note 41, at 278. 49 A survey made in the Copyright Office [see Appendix A attached to the study on "Duration of Copyright" to appear later in this series of committee prints] shows that of the copyright claims registered during the first six months of 1955, about 39% were for works of which corporations or other group organizations were the "authors." With the addition of a small amount (probably less than 1%) for works made for individual persons as employers, this figure can be taken as an estimate of the percentage of copyrighted works that are made for hire. |