The Importance of a Writing

If I pay for something, I own it, right? With most everything in the world, that is true, and it seems logical. When it comes to copyrights, however, the law and logic do not always agree. In a recently filed case entitled Wayne Wm. Peterson v. Harley-Davidson, Inc., et al., Case No. 12-cv-00381 (E.D. Wisc. 2012), Harley-Davidson may learn the hard way that no matter who pays for a copyrighted work, if the creator of the work does not assign his or her rights in writing, the copyright may continue to belong to the creator.

In the Peterson case, Peterson, a free-lance commercial artist, alleges that Harley-Davidson commissioned him to create over 600 pictorial and other works, many of which have since become iconic to the Harley-Davidson brand and have been widely used by Harley-Davidson for its various branding and merchandising efforts. Peterson further alleges that he never assigned his copyrights in these works to Harley-Davidson, and thus, he remains the owner of the copyrights. Peterson is claiming that Harley-Davidson's continued use of these works constitutes copyright infringement, and he is seeking an injunction and unspecified damages.

Whatever the outcome of the case, it reinforces the importance of obtaining a clear writing of copyright ownership. Under the copyright laws, the creator of a work owns the copyright in that work, no matter who pays for it. The exception to this general rule is when the work is considered a work made for hire, in which case the hiring party is deemed the owner of the copyright. However, there are only two ways in which a work is deemed a work made for hire under the Copyright Act: 1) when the work is created by an employee within the scope of his or her employment; or 2) when the work is specially commissioned provided that: a) there is a writing between the parties acknowledging that the work is a work made for hire, and b) the work falls within specific categories outlined in the Copyright Act (i.e. not all works will be considered works made for hire even with a writing to that effect).

It can often be murky whether a work was created by an employee acting within the scope of his or her employment or whether a work made by an independent contractor is deemed a work made for hire under the Copyright Act (even if there is a writing). Therefore, it is always recommended that you obtain a very clear written assignment of all rights if you hire or commission someone to create anything for you, whether it is a pictorial, audio/visual, graphic, photographic, textual, or any other type of work.

Harley-Davidson has since filed a Motion to Dismiss in the Peterson case alleging that Peterson should be barred by laches and estoppel as he created many of the works over 25 years ago. Whether Harley-Davidson will be successful in obtaining a dismissal of the case remains to be seen, but a clear written assignment of rights from Peterson would have been the best defense of all.

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