Copyright issue within a family business

[digitaljjs]

I have been working on a contract basis for the past three years with a company that I used to work for as a graphic designer and photographer. Over the past 7 years of working with them as an employee and now owning my own business I have created a group of product and event photos of about 3000 photos of which half are since I had left as an employee. All of the photos where shot with my camera and their lights. When I started my own business, they leased the lights to me for $1.00 per year and we have a contract drawn up for that which lists the equipment.

They use these photos (mostly product photos) for all of their marketing: brochures, catalogs, press releases, website and anything else that they might think of. I am the one who also designs most of these things. They pay me according to a contract renegotiated yearly by a specified number of hours per month with all hours at the same rate weather graphic design, photography or whatever. There have never been any licensing terms or copyright talked about or listed in print in any contract. I know this is foolish, even if he did say, "We don't need a contract, I trust you".

Recently, he asked me who I believed owned the copyright to the photographs. I replied, "you own the copyright to the ones that I took when I worked for you and I own the copyright to the ones that I took since I left." He had been assuming that he owned everything which I did know he would assume this from working with him for 10 years. I get the idea that he is planning to take all of the photos as his own and tell me he has found someone "more economical" so he can save money in rough times.

The reason that I had never pushed any licensing is that I was doing all of the design with the photos that I had taken so why complicate things. We're family, right. I know better now.

Finally, my questions for now, I think, are:
1.)In light of these circumstances, am I correct? Do I own the copyright on these images?
2.) Can I now submit them to be copyright office now after some have been published over 2 years ago?

[Jerry Skrocki]

I have to preface by stating that I am not a lawyer, but I believe that the photos you took for the business are work product and the property of the business.

Frequently Asked Questions

While I have been a photographer for over 30 years, I just graduated from a graphic design school and finished an initial assignment with a major wholesale distributor. Although I worked without a contract (for the last time), I did stipulate that I wanted to retain the rights to use the work product as portfolio pieces. The work was a combination of product and employee photography as well as magazine covers, brochures and design for tractor trailers. The kind of stuff that I would not want to use again. I am assuming that your work was similar.

It seems that you wanting to copyright some of the images at this point is a bit retaliatory. Family feuds are difficult and sometimes it is best just to let it go.

Jerry

[jlipkin]

I'm not sure I agree with Jerry, but like him I am not a lawyer. I think it would depend on how your work agreement was written. I wrote two books. One, the copyright was owned by the publisher, and I owned the copyright on the other. This was clearly stipulated in the contracts.

Probably best for you to contact a lawyer.

[KevinStecyk]

I am not a lawyer.

You would have to familiarize yourself with Section 101 of the copyright law.


Copyright Office Basics

Who Can Claim Copyright?

Copyright protection subsists from the time the work is created in fixed form. The copyright in the work of authorship immediately becomes the property of the author who created the work. Only the author or those deriving their rights through the author can rightfully claim copyright.
In the case of works made for hire, the employer and not the employee is considered to be the author. Section 101 of the copyright law defines a “work made for hire” as:

1. a work prepared by an employee within the scope of his or her employment; or
2. a work specially ordered or commissioned for use as:
   • a contribution to a collective work
   • a part of a motion picture or other audiovisual work
   • a translation
   • a supplementary work
   • a compilation
   • an instructional text
   • a test
   • answer material for a test
   • 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.

The authors of a joint work are co-owners of the copyright in the work, unless there is an agreement to the contrary.
Copyright in each separate contribution to a periodical or other collective work is distinct from copyright in the collective work as a whole and vests initially with the author of the contribution.
Two General Principles

• Mere ownership of a book, manuscript, painting, or any other copy or phonorecord does not give the possessor the copyright. The law provides that transfer of ownership of any material object that embodies a protected work does not of itself convey any rights in the copyright.
• Minors may claim copyright, but state laws may regulate the business dealings involving copyrights owned by minors. For information on relevant state laws, consult an attorney.

[Emphasis Added]

You might wish to read:

1. http://www.copyright.gov/circs/circ09.pdf ; and
2. Work for hire - Wikipedia, the free encyclopedia .

If the Wiki information is accurate--I have no clue--then you might have reasonable grounds to say you have copyright:

If a work is created by an independent contractor or freelancer (that is, someone who is not an employee), the work can be created as a work made for hire, or not. In order for it to be a work made for hire, all of the following conditions are required: i) the work must be specially ordered or commissioned; ii) the work must come within one of the nine categories of works listed in the definition above; and iii) there must be a written agreement in advance between the parties specifying that the work is a work made for hire.

[Emphasis added]

In the absence of a legal agreement that the work is for hire, you own the copyrights. Or at least that is the way I read it.

You are in a bit of a mess. Even if you do own the copyright, I suspect your client has some rights to display and publish your copyrighted pictures. If nothing else, he has done so for several years, and you did nothing. So any argument you make NOW has little effect upon him. However, if we are correct that you do hold copyright, then you could prevent him from selling your art to others.

I am way beyond my comfort zone. So this is just my quick ramblings of how I read things. At least it might provide you with some food for thought and allow you to have a discussion with your client to reach an amicable settlement.

Good luck.

[digitaljjs]

First of all, thank you all for your replies. I did read the all of these materials before posting and I came to the same conclusion as you Kevin. I don't see this as a work made for hire. But this type of reading also has the tendency to make one question oneself also. I do plan to talk to a lawyer but I wanted to see if I was over-interpreting what I was reading.

The contract we have is only specific to number of hours worked at a particular rate for whatever type of work I might be doing. It does not talk about ownership of copyright at all. I just always figured that we are fulfilling a need each of us has and as long as we have a working relationship I don't mind the photos being used. When I realized that he may be just using me to get all the photos he wants and then move on I wondered if there was a way to protect myself. I wondered if I could collect usage fees in the future. Unfortunately a good part of my income comes from this contract. That is my fault, I realize I should have been more active seeking more customers and not so content with where I was.

Experience is a hard teacher because it always gives the test first and the lesson later. I wish I would have known what questions to ask on the way into the situation instead of on the way out.

[KevinStecyk]

Good luck in resolving your differences.

[Mike Keller]

Where are the photos now? If they are digital, do you have a copy of the images? If not, can you get one? To claim copyright, you certainly should have the originals (i.e. in-camera files) in hand, even if your boss has a set.

I also agree that if you have a contract that says you are NOT an employee, and does not stipulate what you are shooting, but rather is a general hourly contract (you get paid no matter what you are doing), then you should own the copyright. The very fact that you have your own business and a contract to do work for him indicates that you are independent.