In addition to the ethical obligations and restrictions governing lawyer marketing and advertising, attorneys should consider carefully how well they are protecting any intellectual property that they hired third parties to prepare on their behalf. Many lawyers use head shots, websites and advertising copy prepared by nonemployees in their marketing and advertising materials. Attorneys should ensure that they have the appropriate agreements in place to assign ownership of these materials to themselves.
Many lawyers are familiar with the work-for-hire doctrine; it’s a statutorily created exception to the general rule that an author owns copyrightable material. However, it’s easy to misunderstand how the work-for-hire doctrine applies in various scenarios, such as a firm website that features photos of and biographies about lawyers.
The work-for-hire definition enumerated in 17 U.S.C. §101 covers two type of authors: employees and independent contractors. Any type of copyrightable work prepared by employees within the scope of their work is a work made for hire (e.g., software programs, sound recordings, etc.).
But for works prepared by independent contractors, only a few types of works qualify as works made for hire. These include: contributions to a collective work; parts of a motion picture or other audiovisual work; translations; supplementary works; compilations; instructional texts; tests; answer materials for a test; or atlases.
For any copyrightable work that qualifies as a work for hire, the employer or the person who commissioned the work is both the author and the owner of the work. The copyright application includes a box for an owner to check to indicate that the author seeks protection for a work made for hire.
In many instances, attorneys who do not have internal marketing departments will be unable to avail themselves of the work-for-hire doctrine because websites, marketing materials and photographs are not included in the nine types of works defined as works made for hire.
Even if an attorney cannot claim that marketing materials prepared by independent contractors are works made for hire, the attorney can seek protection for the intellectual property created by a contractor.
Before the attorney engages a contractor to take photographs, design a computer program, design a website or prepare a marketing campaign, the attorney should discuss IP ownership of all the final products. If it is important that the attorney own the copyright in all the materials, the attorney should insist on a copyright-assignment agreement with the vendor.
These types of agreements typically contain the following information: name of the author; title and/or a description of the work; representation and warranty that the author is the sole owner of the work; express assignment of the copyright to the attorney; and agreement that the author will cooperate with the attorney to obtain a copyright owned by the attorney.
A copyright application based on an assignment agreement should identify the independent contractor as the author. The application then has a section where the attorney can indicate that the attorney is the copyright owner based on an assignment agreement. Having a copyright assignment can ensure that there are no restrictions on what the attorney can do with the copyrighted materials.
If it is not important that the attorney own the copyrights in the photographs or other marketing or advertising materials, he or she should seek license agreements from the copyright owners before making final payment. The license agreement should outline how the lawyer can use the copyrighted works and whether the lawyer has to pay a royalty for each use of the work.
Attorneys should address IP ownership in the beginning of the relationship with an independent contractor and ensure that their ability to use products generated by the contractors without infringing on any IP rights. Attorneys who have in-house marketing or advertising departments staffed with employees may be able to seek copyright protection easily for any of the materials produced by those employees.
It would be difficult for attorneys to claim that the work-for-hire doctrine applies to marketing or advertising materials created by independent contractors, because 17 U.S.C. §101 does not identify those types of works. Those attorneys instead should seek an assignment agreement to transfer ownership of the copyright from the independent contractor to the lawyer or a royalty-free license agreement allowing the attorney to use the copyrighted material in his or her own marketing materials without a payment to the copyright owner.