The Nonprofit FAQ
| Do volunteers own the copyright when they contribute creative works? |
| Stephen C. Nill, founder of CharityChannel.com, wrote to CHARITYLAW on the subject "Copyright Law" on November 7, 1998: Robbie Dawson wrote asking about how the U.S. copyright law applies to artwork or other written work provided by a volunteer to a nonprofit organization. She provides the following hypothetical: "A volunteer creates a logo for a new fundraising event. An advertising company contacts the volunteer and would like to use the logo, created for your organization=3D92s event for an unrelated advertising campaign. Does the copyright belong to your organization or the creator (the volunteer)?" The answer to this question lies not so much in the law of U.S. tax-exempt organizations as in the law of U.S. copyright. However, by adding the element of "volunteer" to the mix, it becomes an interesting cross-over question and one well-suited to this forum. I will use the word "charity" here to denote the entity for whom the work is created; however, there is nothing unique in how these rules operate for charities as contradistinguished from their for-profit brethren. The starting point in all U.S. copyright ownership issues is the general rule that the individual who creates a work is the initial owner not only of the work, but of its copyright. The copyright protection applies the moment the artist or author creates the work -- even before the work is finalized. Additionally, the copyright protection applies whether nor not the artist/author affixes the © symbol or the words Copyright [date] to the work, or chooses to register the work with the Register of Copyrights in Washington, D.C. or with any of the state equivalents. Under the Copyright Act, however, the rule is sometimes reversed for "works made for hire." There are two categories: works created by traditional employees and works created by independent contractors. If the work is one made for hire, the creator does not own the work or the copyright, but rather it belongs to the charity for whom the work is created. In contrast, if it is created by an independent contractor, both the work and the copyright are owned by the creator of the work. Is the Volunteer an "Employee"? It thus becomes important to determine whether or not a volunteer is an "employee" within the meaning of the Copyright Act. Under CCNV v. Reid, 109 S.Ct. 2166 (1989), the volunteer is an "employee" for these purposes if the charity has the right to control the manner and means by which the work is created. Titles and even how the parties themselves characterize their relationship are disregarded. Unfortunately, there are no concrete guidelines. The issue must be settled on a case-by-case basis by the courts. In one case, involving an "employer" who didn't pay the "worker's" Social Security taxes and other employee benefits -- as would be true with a volunteer --, the court refused to find an employer-employee relationship. Aymes v.Bonelli, 980 F.2d. 857 (2d Cir. 1992). My reading of this and other cases in this area would lead me to believe that it's unlikely a volunteer, who by definition receives no compensation or other employment-related remuneration, ever will be deemed an "employee" for purposes of the Copyright Act. Unfortunately, there is no statutory "per se" rule in this regard. It is up to the courts to decide on a case-by-case basis. That brings us to the question, Is a volunteer an "independent contractor"? If so, the work, and its copyright, is presumed to be owned by the creator and not the charity (at least, if the work was created on or after January 1, 1978, when the law changed). Since there are only two categories, employee and independent contractor, it stands to reason that it's much more likely a work created by a volunteer is a creation of an independent contractor within the meaning of the Copyright Act. (Either that, or the work was simply created by the volunteer without any "work for hire" character, in which case the volunteer owns the work and its copyright as per the basic rule.) While it is sometimes possible to reverse the "independent contractor" presumption that the work, and its copyright, is owned by the creator by interposing a written contract to that effect, the creation of a logo does not fit into any of the nine categories set forth by the Copyright Act for doing so: a contribution to a collective work, a part of a motion picture or other audiovisual work, a translation, a compilation, an instructional text, a test, an answer material for a test, an atlas, or a supplementary work. No matter. The volunteer/creator may nevertheless transfer his/her work to the charity as a charitable contribution. The transfer must be in writing and signed by the owner of the rights conveyed or his/her authorized agent. 17 U.S.C. Sect. 201(b). (Interestingly, the transfer of the work, and its copyright, to the charity is a charitable contribution.) For these reasons, it is vitally important that the charity obtain a writing signed by the creator which clearly conveys copyright rights to the charity. Such a writing should best be obtained at the outset, to avoid misunderstandings, but may be obtained after the fact if the volunteer is willing to sign such a document. In the hypothetical above, there was no mention of a writing signed by the volunteer. There is no doubt the volunteer, either orally or by implied conduct, conferred on the charity a nonexclusive license to utilize the logo for the original use for which it was created. A nonexclusive license is the right by the charity to use a work in the manner permitted by the copyright holder, and which does not prevent the copyright holder from licensing the work to others -- a dire result if the logo is also a well-marketed trade symbol of the charity. Even though the charity probably received, by oral contract or by the volunteer's conduct, a license to use the work, it becomes questionable whether or not the logo can be used for other, even related, purposes. The advertising company quite likely would not be permitted to utilize the logo for an unrelated advertising campaign without the express permission of the copyright holder, the volunteer. Doing so might subject both the advertising company and the charity to a copyright infringement claim. It therefore becomes vitally important for a charity receiving free volunteer services such as logo creation or other written works -- even web site design -- to enter into a written agreement, preferrably before work is commenced but no later than the new use of the work, spelling out that the copyright ownership in the work is being transferred to the charity. (Be careful not to attempt to define the original owner of the work as the charity unless it happens to fit within one of the nine categories discussed above.) For my own nonprofit clients, I have tried to "artfully" incorporate such conveyance language into an "Acknowledgement of Donation" document which acknowledges and accepts the generous offer to create a written work (such as a logo, ad copy, policy manual, photograph, web page design, etc.) and specifies that the copyright in the work is being transferred to the charity. Caveat: Discussion forums are an increasingly popular medium for the interchange of techniques, experiences, and opinions. However, they are not a substitute for professional counsel. Neither this, nor any posting to an Internet discussion forum, shall constitute the rendering of legal, tax, securities, insurance, real estate, or other advice. No attorney-client relationship is formed hereby. Always consult with competent legal counsel on important questions of law. Stephen C. Nill, J.D. Rancho Santa Margarita, California USA The question Stephen Nill was responding to, and some other observations on this topic, are included in this earlier correspondence quoted by Brenda Ruth: "I remember at the class you said that any design on the web is property of the designer. (Did I remember that correctly?)" In general, any creative works are automatically copyrighted to the creator. By default, the creator holds copyright at the time of creation, regardless of whether the creator posts the (c) signs on his/her work. (People put those (c) signs on to show that they are actively defending their copyright; this can be important if copyright is ever challenged.) For web design, this means that if I create a GIF and post it on my page, that GIF is automatically copyrighted to me unless I choose to give or sell the copyright to someone else. As a professional web designer, my contracts typically state that I relinquish copyright to my clients. (This is called a work-for-hire arrangement) There are exceptions and caveats to this, but in general, this is the way I run my business. Other web designers may do it differently. In terms of BCN, I think your agreement between BCN and BCN clients needs to state:
Brenda, I did not use a lawyer to draw up my contract, but I know there are several other types of copyright issues. I would strongly suggest that you contact BCN's legal counsel for intellectual property law. If you don't have an agreement in place, or if the agreement does not cover copyright, it's just a matter of time before a problem comes up. For example: "A volunteer creates a logo for a new fundraising event. An advertising company contacts the volunteer and would like to use the logo, created for your organization's event for an unrelated advertising campaign. Does the copyright belong to your organization or the creator volunteer)?" My understanding is, if no contract is in place that addresses the intellectual property issues, then the volunteer still owns copyright, and the volunteer is free to use that logo elsewhere. Again, check with an attorney. Do not rely on my advice! The National Council of Nonprofit Organizations has a useful paper on copyright infringement questions as they come up for nonprofit organizations on its website at http://www.ncna.org/_uploads/documents/live//Copyright_Infringement.doc Vicki Pellegrini Cooper, the Membership Director for LibertyNet in Philadelphia (http://www.libertynet.org), supplied this useful text: LibertyNet has been matching volunteer web designers with nonprofits for about 4 years now. I contacted a lawyer back in 1995 when the issue of copyright came up. We created an agreement that all nonprofit members of LibertyNet must sign. Here is the paragraph that deals with copyright: "That upon request, LibertyNet may provide me or my nonprofit organization (collectively, the "Information Provider") web authoring services. If these services are furnished, and unless there is a written agreement to the contrary, the Information Provider shall be the sole owner of all rights under copyright in any web page or web site and its underlying HTML code (collectively, the "Web Site"), which LibertyNet or its volunteers create. In consideration for these services, the Information Provider agrees (1) to grant LibertyNet a license to electronically distribute and display the Web Site for the duration of this Agreement, and (2) to maintain the Web Site exclusively on LibertyNet's file server for a period of not less than one year from the date of this Agreement." Reposted, with additional information, 11/14/98, 8/10/05 -- PB |