So you’re a writer, a publisher, or an artist with a deep ache to express yourself. You’ve gone to the trouble and expense of searching out and then paying a professional Website designer to put together your piece of the electronic universe. Now you can tell everyone whatever it is you want to tell everyone. The question is: who owns what everyone is going to see? Does this piece of your heart actually belong to you?
In the absence of a valid written contract that would resolve these issues, it is actually not quite as simple a situation as you might expect. But what is simple in the law business?
Content Copyright Issues
These are some of the open issues:
1. What is Design and What is Content?
We must first distinguish between the copyright in the design – the "look" of the site – and the copyright in the content. Colors, gifs, jpegs, setup, hyperlinks, and other elements that contribute to that design start out being owned by the creator, in this case the Website designer. But even this is not set in stone, for you undoubtedly played a hand in making the underlying creative decisions – so perhaps the copyright is owned jointly.
This is what the United States copyright statute defines as a joint work:
A ‘joint work’ is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.
But as you may see, if the respective contributions to the end product – your Website – are distinguishable, there may be separate copyright owners of those separate elements. Not only that, but your contribution must be more than minimal in order that you qualify as a joint author. There are many consequences of joint authorship which are beyond the scope of this article.
2. Content from the Public Domain
Moreover, to the extent that the gifs, jpegs and other elements were downloaded from the Net, assuming even that they themselves are free of copyright restrictions (which is not always the case), neither the designer nor you can claim a copyright in that which already exists within the public domain. On the other hand, to the extent that these graphics were created by the Website designer, it appears again that that designer initially owns the copyright therein. But if they are your creation, your logo, or your photo, then presumably you own the rights thereto (unless of course the photos were taken by someone else, in which event the photographer owns the copyrights therein and you must obtain permission to use them on your site). I told you – this is not simple.
Let’s move on to the other substance of the site: the text. Obviously, if the text has been created by you, you own the copyright to it. But it’s not simply a question of the text that appears on the Net, it’s also the way that that text is set up, in the form of HTML or other coding. If the designer created that coding, then the coding, as distinguished from the text itself, may be owned by the designer. Included in this concept of copyright in the coding is the manner in which the designer has created any hyperlinking within the site. So you may own the text but the designer may own the way the text is set up on the site. Keep in mind that it is not yet all that clear that coding can be copyrighted. It may not be protected by the copyright laws but may, under certain circumstances, be protected by patent laws.
There may be many other elements of copyrightable material on the site. The question of copyright ownership as to each of those elements turns on who created them and under what circumstances.
Having outlined some, but certainly not all of the issues, there are two potential kinds of agreements that may be used to resolve those issues: a "work made for hire" agreement and a "copyright assignment".
1. A Work Made for Hire Agreement
In order that there be a valid work made for hire agreement, several criteria must be satisfied:
- If the designer is a valid employee of your company, then everything that that designer creates during the course and scope of his or her employment belongs to you. You own the copyright.
- On the other hand, if you have hired an independent contractor to design the site, then there must be a valid, written agreement, signed by the parties. But note that it must be both valid and written. To be a valid work made for hire agreement you must have "specially ordered or commissioned" the work (which presumably you did) and the written agreement must state that it is a work made for hire agreement. There is also a significant question as to when this agreement must be executed – either before the work actually is commenced or afterwards. You cannot acquire rights to the site by an after-the-fact attempt at a work made for hire agreement. There is no such thing.
The Website design work also must belong to one of the statutory categories in order to qualify as a work made for hire. I am assuming for the sake of this article that hiring the designer is a "contribution to a collective work," one of the statutory categories of permissible work made for hire agreements. In this regard, it may be a collective work, I am assuming, because you have created certain of the elements – the text for example – and the designer is contributing the design elements. It also may, under certain circumstances, be an audio visual work or a compilation. There may be other circumstances in which the work does not fall into any of these categories nor any other of the statutory categories of permissible work made for hire agreements. In this event you cannot rely on the work made for hire contract, and you must turn to the copyright assignment to transfer the rights.
So let’s assume that there is no writing between the parties that satisfies the work made for hire requirements. You may perhaps acquire all the rights of the designer in the site by having the designer execute a written assignment of copyright that transfers all those rights from the designer to you. Note however, that to the extent the designer did not create the material (as in the form of gifs etc. sourced from the public domain outlined above), you do not acquire any rights therein.
You would want to acquire all rights in the site, not merely the rights to use it as your site. As a result, if you have no written, valid agreement conveying to you all these rights, you may end up with at best merely a license to use your own site. This is not particularly satisfying since you may be losing valuable rights. This is after all, you, your expression of yourself, and you should be free to use your expression of your heart freely. You must remain constantly aware that this area of electronic issues is constantly evolving and what appears to be a Website today can be a video game or a feature length motion-picture tomorrow.
However, please note that this is not unfair to the designer, as the designer can build into his or her fee what he or she feels is appropriate for a total "buy out". Thus both sides can win.
There may be other issues involved beyond the basic copyright ones. These other issues might address whether the designer can put his or her logo on the site or whether the designer can use a copy of the site as part of his or her portfolio. These are more contract questions than copyright questions, although they may flow from the answers to the copyright questions.
As you can see, there are no simple answers in this new area. And it is the wisest advice to enter into a written agreement that deals with these – as well as other – issues that may arise.
Â© 1996 Ivan Hoffman. This article is not intended as a substitute for legal advice. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. You should consult with an attorney familiar with the issues and the laws.