STATEMENT OF RALPH OMAN REGISTER OF COPYRIGHTS AND ASSISTANT LIBRARIAN FOR COPYRIGHT SERVICES Before the Subcommittee on Patents, Copyrights Senate Committee on the Judiciary Mr. Chairman and members of the Subcommittee, I am Ralph Oman, Register of Copyrights in the Copyright Office of the Library of Congress and Assistant Librarian for Copyright Services. I thank you and the Subcommittee staff for giving me the opportunity to testify today on S.1253, a bill to amend the Copyright Act with respect to works-made-for-hire and works of joint authorship. A. BACKGROUND Under the Copyright Act of 1976, the copyright in a work vests initially in the author or authors of the work. 17 USC 201(a). In the case of so-called "works made for hire," "the employer or other person for whom the work was prepared is considered the author" and, "unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright." 17 USC 201(b). Section 101 of the Act defines two categories of works that may, under specified conditions, constitute "works made for hire." One category, defined in subdivision (1), includes works "prepared by an employee within the scope of his or her employment." The Copyright Act does not, however, contain definitions of the terms "employee" or "scope of employment." The other category, defined in subdivision (2), includes works "specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire." 1 The purpose of the work-made-for-hire provisions is to protect the rights of individual authors while still providing employers and those commissioning works a mechanism by which to secure the usage rights that their financial and editorial support warrant. The Act accomplishes this purpose by providing, on the one hand, that in the case of works created by employees within the scope of their employment, their employer automatically owns all rights in the work, and, on the other hand, that the types of specially ordered or commissioned works-made-for-hire are limited to those falling within one of the nine enumerated categories of works in subdivision (2), and by further conditioning work-made-for-hire status for works falling within 1. Section 201(d) permits transfer of all or part of a copyright "by any means of conveyance or by operation of law." Thus, even if an employer or commissioning party cannot obtain rights to a particular work through work-made-for-hire status, all or selected rights may be obtained, on an exclusive or nonexclusive basis, through negotiation with the author. Although nonexclusive licenses may be oral, exclusive licenses and transfers of all rights (other than by operation of law), must be in writing. 17 USC (204 (a). 3 one of those categories upon the parties signing an agreement designating the work as one made for hire. The two work-made-for-hire categories represent a carefully worked out compromise between the interested parties, negotiated by the Copyright Office, and endorsed by Congress. On June 5, 1989, the Supreme Court interpreted the work-made-for-hire provisions in Community for Creative Non Violence v. Reid, 109 S.Ct. 2166 (1989). The Copyright Office, through the Solicitor General, submitted an amicus curiae brief to the Court, arguing: (1) the term "employee" in the first subdivision is limited to formal, salaried employees; and, (2) the two subdivisions are mutually exclusive; i.e., independent contractors whose works do not qualify under the terms of the second subdivision may not be regarded as employees under the first subdivision. The Court did not adopt the Copyright Office's interpretation of the first subdivision, deciding instead that Congress intended to use federal common law rules of agency to construe the term "employee;" the Court did, however, state that the two subdivisions are mutually exclusive. The Supreme Court's construction of the term "employee" rested on the absence of a definition of the term in the Copyright Act of 1976 and the Court's practice of "infer[ring], unless the statute otherwise dictates, that Congress means to incorporate the established meaning of ... terms. In the past, when Congress has used the term 'employee' without defining it, we have concluded that Congress intended to describe the conventional master-servant relationship as understood by common law agency doctrine." 109 S.Ct. at 2172. 4 Legislation altering the Court's interpretation of the statute is desirable. Since the Supreme Court's agency law approach is dependent upon the balancing of a large number of factors, no one of which is determinative, ownership questions will, of necessity, be ad (and post) hoc. I am doubtful that the agency law approach will provide certainty in business relations. Litigation, involving facts years old and inevitably shoehorned by the parties to conform with the factors set forth in CCNV, could, without clarifying legislation, be the ultimate legacy of the CCNV decision. I believe the approach taken by S. 1253 represents, on balance, a sound approach to ownership issues and will provide order and certainty in business relations. S.1253 also addresses a number of important issues related to work-madefor-hire not decided by the Supreme Court; e.g., blanket and ex post facto work-made-for-hire agreements. For the reasons given below, the approach taken by S.1253 represents, on balance, a sound approach to these issues. Finally, S. 1253 would amend the current definition of a "joint work" in two respects; first, by including a requirement that each joint author make an "original" contribution to the work, and, second, by requiring that in the case of specially ordered or commissioned works only, there must be a signed written agreement, entered into before commencement of the work, that the work shall be considered a joint work. The current definition of a "joint work" states that a joint work is a work "prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole." 17 USC 101. The Senate Judiciary Committee report accompanying the 5 1976 Act indicates that the "touchstone" of joint authorship is the parties' intention, at the time the work is created, "that the parts be absorbed or combined into an integrated unit, although the parts themselves may be either 'inseparable' (as in the case of a novel or painting) or 'interdependent' (as in the case of a motion picture, opera, or the words and music of a song)." S. Rep. No. 94-473, 94th Cong., 1st Sess. 103-104 (1975). See also: H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. 120 (1976). The purpose of this definition was to cut back on expansive decisions by the Second Circuit under the 1909 Act, holding that complementary efforts performed at different times by authors unacquainted with one another resulted in a work of joint authorship because there was a common design. 2 The purpose of S.1253's proposed amendments is, first, (contrary to the suggestion of the District of Columbia Circuit in dictum in Community for Creative Non-Violence v. Reid, 846 F.2d 1485, 1496 n.15 (D.C. Cir. 1988), aff'd on other grounds, 109 S.Ct. 2166 (1989)), to make clear that each joint author's contribution must consist of copyrightable material. The D.C. Circuit expressed the possibility that the mere supplying of titles or other uncopyrightable elements might be sufficient to render one a joint author. Such a result would violate the statute. The 1976 Copyright Act extends copyright to "original works of authorship." One who contributes only uncopyrightable elements cannot be considered an author nor can such elements 2. Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 161 F.2d 406 (2d Cir. 1946), cert. denied, 331 U.S. 820 (1947) ("Melancholy Baby" held to be a joint work even though lyrics were substituted for those written earlier in collaboration with the composer); Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 221 F.2d 569, modified on rehearing, 223 F.2d 252 (2d Cir. 1955) ("Twelfth Street Rag"). |