I got a call last week from an organization which had commissioned a sculpture in the mid-1980s. For over 30 years, they had been making small-scale reproductions of the sculpture and using them as part of an annual award ceremony. The sculptor died recently, and the Executive Director had just received an email from the sculptor’s estate asking whether the organization had permission to make the reproductions. The estate representative had not been able to find any documentation regarding the commission. and suggested that the sculptor may have retained copyright in the work, in which case the estate should have been paid a license fee for each reproduction.
The Executive Director was puzzled and contacted me. He wondered how the sculptor, or his estate, could assert copyright ownership in a work that had been made over 30 years ago. Wasn’t the estate’s claim barred by the statute of limitations?
I explained that copyright gives the creator an exclusive right to make reproductions of a work for a limited period. Under current US law, copyright in a work created by an individual lasts for the life of the creator plus 70 years – in other words, a long time. The statute of limitations does not bar a copyright infringement claim brought during the copyright term.
The issue, I pointed out, is whether there was a written “work-for-hire” agreement for the commission signed by the sculptor. The facts of this case sounded identical to the seminal copyright case Committee for Creative Non-Violence vs. Reid (decided in 1989) in which the Supreme Court ruled that for the commissioning organization to own copyright in the commissioned work, there must be a written agreement signed by the creator acknowledging that the commission is a work made for hire within the meaning of the US Copyright Act. Absent that, the creator retains copyright in the work.
Underlying this decision is the fact that, under current law copyright ownership arises on creation and is owned by the creator. Copyright ownership can only be transferred in writing. So, either there must be a written agreement executed prior to performance of the work acknowledging that the relationship is a work-for-hire, or there must be a written assignment of copyright. A well-drafted work-for-hire provision will both indicate that the commission is a work-for-hire under US copyright law, and that, in the event it is not considered a work-for-hire, that the creator assigns copyright to the commissioning organization.
In situations where the creator wants to retain copyright ownership, the commissioning agreement should include language that expressly gives the organization the right to use the work for the purposes it needs. This can be stated in the form of a license to use the work for specific purposes, such as making small-scale reproductions of a sculpture for annual award purposes.
The Executive Director went back and searched his organization’s files, and apparently was able to find documentation addressing copyright ownership which satisfied the sculptor’s estate. The lesson to take from this is to always, always, address upfront the issue of copyright ownership when commissioning a creative work.