I received the following question from a reader:
I was the staff photographer at a small Canadian magazine and recently quit to start a freelance career. My former publisher has asked me to remove all images in my portfolio and stock site, claiming they own all images I took while employed there. The thing is, I didn’t sign any contract that says they own any of these images. Do you have any thoughts on this or have anyone in Canada who specializes in copyright law that I may be able to contact?
I don’t know anyone who specializes in copyright law in Canada but I do know Carolyn E. Wright, AKA the Photo Attorney (http://www.photoattorney.com), who I recommend to anyone looking for an attorney who specializes in photography and copyright. I asked her to answer the question for US employees because I thought it would be helpful, but if anyone knows how it works in Canada please chime in on the comments.
If you are an employee in the United States, the copyrights to the photos that you take as part of your job responsibilities belong to your employer, not you. When your employer owns the copyrights to the photos, it’s as if you didn’t take them. You have no rights to use them, even for your own portfolio unless your employee gives you a license for such use.
If you are not an employee of an organization, you own the copyrights to the photos you take, even if the organization hired you to take the photos unless you have signed a document (including via an email) stating otherwise. In that case, the hiring company will own the copyrights as a “work made for hire.” See 17 USC 101.
Sometimes, however, you may have a dispute with a company whether you are an “employee.” The court inCCNV v. Reid addressed this issue. There, the court explained:
In determining whether a hired party is an employee under the general common law of agency, we consider the hiring party’s right to control the manner and means by which the product is accomplished. Among the other factors relevant to this inquiry are the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; the extent of the hired party’s discretion over when and how long to work; the method of payment; the hired party’s role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party.
In addition, it’s important whether the organization issues a 1099 or a W-2 to you. To help with understanding this law, the Copyright Office has prepared Circular 9.
If you are a full-time employee and do some part-time shooting for the company (because you have the “big camera”) and/or shoot on company time, it is a judgment call as to whether the photography is within the scope of your employment. But if you get a statement/agreement in writing from your employer to confirm that it isn’t, it will be helpful later if there is any dispute.
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This seems to be pertinent, especially the section “Copyright on photos and other commissioned work.”
http://www.capic.org/resources.html?screen=bp&t=bp_section&chapter=What+You+Sell
In Canada, the employer owns the copyright in the works taken by an employee unless there is a signed agreement saying otherwise.
Yup this is true. One has to admire the BS though of a small publisher – or any publisher for that matter – who is asking that images be taken down from a website if the images are being used as promotion only esp. if proper attribution were applied.
Is there room to negotiate? No stock resales – for obv reasons – but for promo only?
Hey this is great to know.
That means that all of the polaroids and images I took while assisting those famous and infamous photographers I can use in my portfolio.
Since I: Produced, lite, composed and directed the setups I’ll now have a kicking portfolio.
So glad I always carried my own polaroid and film on those shoots.
Generally speaking, be very very careful in trying to compare the US Copyright Law with Canada’s laws. Canadian Copyright laws are fundamentally different in that the commissioning party owns the copyright, not the creator. Photographers who are hired to shoot a job have to regain copyright or any rights in their paperwork, unlike the US where photographers own their copyright automatically (but still need to register to be fully protected). Otherwise in Canada, it’s owned by the party paying for it. But always remember, there is no substitution from getting the real world advise from a practicing Canadian IP lawyer. You take a big risk otherwise. Quoting a law in a vacuum and from a book is fraught with danger and can lead to a major lightening of your wallet or pocketbook.
To add, as stated in the article, it is best to get who owns what in writing, no matter the perceived relationship, if you want to be entirely safe. While a 1099 or W2 is important, as my writing partner, Lawyer Ed Greenberg has stated, a 1099 or W2 “in and of itself is not dispositive” as to if the work is or is not a work-for-hire. Ed has said that he has many clients that receive a W2, but still retain the copyright to their work through drafted agreements. Best to have it spelled out in an agreement and it will save you much time away from the aggravation and feeling like you ate a piece of your liver over the grief you had to go through because you didn’t have a simple piece of paper.
It’s true, copyright law in Canada and the US differs to a certain extent. In Canada, the case used to be that, upon full payment for commissioned work, all copyright transferred to the commissioning party (to the client that is, in the absence of a signed contract to the contrary). However, with the recent passing of bill C-21 Canada brought the copyright laws here back in line with the rest of the world (well, most of it). Photographers now retain copyright in the work they produce, period, unless they enter into a contract with the commissioning party stating otherwise (buyout/complete rights transfer). That copyright is created as soon as the photographer ‘fixes’ an image onto something tangible (used to be a film strip, now shooting to a card or laptop hard drive is considered ‘fixing’ an image).
Photographers in Canada also have ‘moral rights’ in the images they produce, loosely meaning that someone cannot alter, adjust and/or present the work in a derogatory or distasteful way. It’s a bit of a loopy law, but there it is.
This bill also opened up the ‘fair use’ laws to an extent with regard to parody and educational uses. When Rick Mercer or Stephen Colbert show images of politicians/world leaders ‘shopped together for the sake of comedy, that’s parody. No compensation to the image creator is required. Same goes for image use for educational purposes.
I agree with Jack, get everything in writing and signed, prior to the shoot if at all possible. Everyone involved should know exactly what can and cannot be done with the body of work created. The first point in my terms and conditions; “Photographer retains all image rights”, even though, by law, they’re already mine. After all, it’s not about what’s right, it’s about what you can prove.
To add to Jack’s brilliant comments:
1. In real life there is no black line, simple test which can be employed in all states of the United States for all work situations to determine definitively and for all purposes whether a given person is an employee or independent contractor. Each case is different and the determinations are often different from state to state on the very same facts.
2. Your state’s Workman’s Compensation Board may yield a different determination that your state’s income or sales tax department .
3. There are no simple “one size fits all” answers here despite our yearning in the legal community to have such a simple test. The criteria vary from agency to agency ,state to state – that is the real world. Book learning gets you just so far.
4. A W2 or 1099 worker may own his/her copyrights….or not. Each case is fact sensitive. All of this can be avoided by the signing of an agreement clearly setting forth the copyright ownership of images produced or to be produced. Writing such an agreement takes very little time or effort for an experienced attorney who practices where the parties are located.
5. If Canadian law is at issue, one must consult a lawyer who is licensed to practice in Canada. Is that really so hard to do? American photographers do work for Canadian clients and/or shoot in Canada every day. We are not talking about the state of copyright law in far off, war torn Afghanistan. Canada has produced Martin Short, Paul Schaefer, illustrator Anita Kunz and Howie Mandel…OK forget that last one. Point is Canada is simply our English speaking neighbor to the north. They are almost, almost like us. Pick up a phone a speak to a lawyer who knows the law and the turf.
p.s. Images created through the course of duties performed for an employer (you’re on the payroll & receive a cheque every 2 weeks) belong to the employer (unless there’s a signed contract to the contrary). Employer retains all rights to images you create while ‘on the job’, images you create while on your unpaid lunch hour or after hours are yours.
Here’s an illustration of how using otherwise correct information may be misleading if not viewed in the context of each and every case.
Dan’s statement about shooting images on “unpaid” time is correct in at least 95% of all commonly occurring situations. But – “it a’int necessarily so”. While over the last two decades employee/photojournalists have disappeared from newspapers, more and more photographers have become staff or in house shooters for corporations. I have seen and/or written many, many contracts where a professional photographer is paid a salary as a W2 and anything he/she shoots, repeat – anything he shoots, that is offered for sale or licensing shall be deemed to be owned copyright and all by the employer.
Sometimes this is done to discourage the photographer from doing outside work and/or the corporation’s position is that if the photographer is going to be getting a salary and benefits yet is not going to be shooting everyday from 9 -5, then the corporation is over paying and is entitled to all images which have value and/or the corporation simply does not want their employee engaged in another business which could be similar to theirs.
Put it in writing so there need not be endless discussions of “what ifs” and the parsing of the words of laymen.
Just so people don’t think corporations are maybe picking on photographers, they usually have all employees, including engineers, sign employee agreements granting the company IP rights to anything an employee does. That means anything an engineer invents–including theoretically in their sleep–is owned by the company.
Very, very, excellent, spot on comment.
The attorney in the office next to mine is a brilliant octogenarian who has spent a good portion of her 60 years of practicing law teaching, writing, lecturing and writing textbooks for other attorneys on exactly that topic. Her clients were typically Fortune 500 multi-nationals engaged in chemical engineering, paper products, transactions licensing of patent applications by the biggest companies in the world.
Tim references a legal practice that is even older than than I am. In Latin it is known as, “Lock up the brainy ones”.
Wouldn’t the photographer be able to use the tearsheets themselves, as in photographing the actual magazine spreads, and captioning, “I shot this”?
I would say yes.
Were you working as an independent contractor and if so would this make any difference? E
It is like asking: “what does a car cost”?, “How much will a location shoot cost me”? or one of my favorites (a real one) Client to photographer: “Before I even begin tell you what I am looking to do, I need to know if you can get it done by Thursday”. The correct answer is always, “It depends….”
Why even guess? Neither you nor I, have any way of intelligently answering an such an open ended question. The best answer is “it depends on the circumstances” A brief review of the facts and paperwork in a given situation will promptly yield the correct answer to any IP attorney with a double digit IQ.
There are no simple, one size fits all answers to these type of open ended questions. No matter how many times we say that our put it in writing, photographers and illustrators seem to have the irresistible urge to render an instant diagnosis without seeing either the test results or examining the patient. Creatives can’t let the understandable yearning for simple, direct answers lead to basing their livelihood on adopting as gospel, factoids, myths and half truths.
I have yet to meet a photographer or illustrator who both has practiced copyright law and has a CPA certification. Those persons who have those triple credentials would know the adage, “A lawyer who represents himself has a fool for a client” and would likely seek the opinion of a buddy lawyer. Please don’t guess when you career or even that of a comrade is on the line.
what if photography did not fall under your general job duties, or outlined in your job description and you did all the photography while on vacation or weekends, days you were off? Isn’t this considered to be separate from employment?
GENERALLY speaking and absent a writing reflecting otherwise, the answer is “yes”.
Watch out for “work for hire” agreements AND troublesome boilerplate on
(the back) purchase orders.
The first book on photography every photographer should buy is Harrington’s Best Business Practices for Photographers. It’s ready for a third edition but it still will get you started on the right path with your paperwork.
Weigh the advantages of a quick buck over a long return.
A photo doesn’t have to be the Hindenburg burning to be extremely valuable down the road. Never trust an internet posting for legal advice. Take a crowbar to your wallet and hire an IP professional Lawyer!
It’s the cheapest insurance you’ll ever BUY.
Again- Forgo that snazzy new piece of gear and get an experienced PRO to make sure your paperwork is current and represents what YOU want it to.
Copyright lawyers ain’t cheap- Unless you use them on the Frontside.
On the backside… Forget-about-it!
Can anyone clarify what determines the applicable countries copyright law? For example, I’m an American and have done shoots in the US for a Canadian publication. I have also traveled to Canada to complete assignments for American publications. Is it my citizenship, the location of the shoot, or the location of the client that is the determining factor?
This is a subject covered by Jack Reznicki and yours truly in our lectures and workshops. An oral answer to your questions takes a good 15 – 30 minutes, this space could not fit a written one.
The only simple “answer” I can give you is the (frustrating for you) “it depends on the circumstances”. The good news however, is that one can easily eliminate any potential problem by simply putting in your paperwork the appropriate legalese to the effect that jurisdiction and venue relating to issues, disputes etc. arising out of the work shall be with the US District Court, ____(Your hometown Federal )____District Court and that such court shall employ US Copyright Law.
This is why we do lectures where we take questions for hours.
Employees who take photos on behalf of their employer should be sure to read their contracts to be sure intellectual property created outside of work is not also part of what a company owns. Some employers claim right to intellectual property produced outside of work. Google is known for this most popularly. We’re on mission to help make the world safe for creativity.
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