By Kenneth Liu
The website designer you hired may own the materials used and use them again with the church down the street.
Think you own the new website that you just paid a vendor to create? Consider the following scenario. First Baptist Church hires a Web developer to create a new website. The developer designs a website with a new contemporary look that the church is proud of, complete with great graphics and content.
A few months later, the church sees that the new website of Trinity Christian Church in the next town over has much of the same graphics, artwork, and even some of the same text and other content. First Baptist discovers that Trinity hired the same developer to create its website, and the developer simply re-used much of the same stock material. Was the developer permitted to do so? If First Baptist did not enter into a contract giving ownership of the website content to First Baptist, the developer was fully within his rights to re-use the same materials.
Many organizations are surprised to learn they may not own a website or other projects that they hired someone to create, even though they paid for it.
Under U.S. copyright law, an independent contractor who creates a work is, by default, the owner of that work, regardless of who pays for the work.
This is true not only for websites, but for all types of creative works, including software, videos, music, artwork, graphics, photos, publications, brochures, and the like.
Before or after
In order for the copyright in a work to be owned by the hiring organization, it must either (1) enter into a “work-for-hire” agreement with the creator prior to the creation of the work or (2) the contractor must assign (transfer) the rights in the work to the hiring organization. Unlike a “work-for-hire,” an assignment can be executed before or after a work is created.
If a hiring organization has neither a work-for-hire agreement or assignment of a copyright, the creator owns and is free to re-use the content. At most, the hiring organization may have only a non-exclusive right to use the work. (Note: “Works-for-hire” agreements are applicable only to certain types of works listed in the U.S. Copyright Act, such as audiovisual works, collective works, and compilations.)
Sometimes contractors are reluctant to give ownership of materials to a hiring organization, particularly when they have stock material that required significant effort to create. This happens frequently with software components. Often in these situations, it may not be necessary for a church to obtain ownership of the material as long as the church has the right to use it for the desired purposes. It is wise, however, to ascertain ownership before hiring a contractor so that it is clear which materials will be owned by whom, and the price and terms of the work can be negotiated accordingly. A church may wish to obtain a better price for a work when it knows it will not own certain elements of a project (or the entire project).
If a church does not acquire ownership of a project, it will not have the right to reuse the materials for other purposes, unless explicitly stated in an agreement. For instance, without ownership granted from a contractor, a church may be prohibited from using the graphics and artistic theme created for a website in other ways, such as on printed brochures or newsletters. A church wishing to use contractor-owned materials for other purposes would need to obtain a license from the contractor. Failure to do so could result in copyright infringement.
Use an agreement
Churches and ministries can safeguard their interests in copyrighted material by entering into a written agreement. The larger the project, the more critical it is to have a formal agreement. If the contractor supplies his own agreement, it would be prudent to have it reviewed by an attorney experienced in such matters.
Consider the following recommendations before engaging an independent contractor:
- Enter into an agreement before starting a project. Although work can be assigned to the hiring organization later, it is wise to enter into an agreement before a project is started and before any money is paid. Generally, the hiring organization has more leverage for negotiating the terms before work is started, and it is always better to have agreed upon terms before disputes arise.
One of the key purposes of a contractor agreement is to define the scope of work: What are the contractor’s specific obligations? What end products will be delivered? When will each stage be completed?
- Delineate the rights of each party. If the hiring organization will not own all intellectual property rights in a project, it is crucial to define what rights will be retained by the contractor and what will be granted to the hiring organization. For those rights that will merely be licensed to the hiring organization, the agreement should clearly define the scope of the license, including the term of the license and the specific items on which can the hiring organization use the materials. The larger the project, the more important it is to clearly define the rights.
- Be sure works are original to the contractor. Obviously, a contractor cannot assign rights to materials he or she does not own. Be sure that an agreement with a contractor includes a warranty that all works created are original works. If a contractor uses materials from other third parties (such as a stock photo agency), the contractor should be responsible for obtaining all the rights allowing the hiring organization to use the materials for the purposes intended under the agreement. No church wants to receive a copyright infringement claim from someone whose work was “borrowed” by a contractor without permission.
- Get an agreement, even with a friend or a volunteer. Churches may often use the services of a church member (or a member’s friend or relative) who designs websites or other works on the side. The church may have a good relationship with this person at the outset, but unfortunately relationships sometimes sour. Although it may be awkward to ask for a written agreement from a volunteer or to work out details of ownership with a contractor, an agreement can prevent later confusion and frustration.
A written agreement protects both parties by defining the scope of each party’s rights. For small projects, an agreement does not need to be a lengthy formal contract. Even a short email agreement in which the designer assigns to the church all rights in the works he or she creates is better than no agreement at all.
Having a written agreement allows you to be sure you are getting what you pay for, or at least know what you are getting for your money.
Kenneth Liu is a partner in the Intellectual Property and Internet practice group of Gammon & Grange, P.C., a law firm in McLean, VA.