Can a copyrighted work be classified as a work for hire after it is created? KAUFFMANN v. RIT

A copyright is a set of exclusive rights granted to the creator of a new artistic expression. When an artist creates a new work of art, the artist is automatically granted a copyright to their work. The owner of the copyright has the exclusive right to reproduce, distribute, display, perform, transmit and to prepare derivative works based on the original. If someone other than the copyright owner attempts to exercise one of these rights that can be considered copyright infringement.

Generally a copyright is owned by the artist that created the copyrighted work. The copyright is considered a separate piece of property from the tangible work. The artist is free to assign or transfer the copyright to another person just like any other sort of property. When the artist sells a reproduction of the work, the copyright remains the property of the artist. The exclusive rights associated with a copyright do not transfer when a reproduction is sold. No transfers of a copyright owner’s exclusive rights are valid unless the transfer is documented in writing. The transfer agreement must be signed by the owner of the copyright or his or her authorized agent.

When an artist is the employee of a company, the copyrighted work is considered a work for hire. A “work made for hire” is either: (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. In the case of a work for hire, the copyright vests in the employer of the artist and the employer is considered the owner of the copyright.

The question then becomes, can a work be created and then retroactively be made a work for hire?

THE ESTATE OF STANLEY KAUFFMANN, v. ROCHESTER INSTITUTE OF TECHNOLOGY, 18‐2404‐cv (2nd Cir 2021) is a case which deals with the question of whether an already created work can contractual be made a work for hire.

Plaintiff in this case is the estate of a deceased writer, Mr. Kauffmann. Mr. Kauffmann was a movie critic and would frequently write reviews that were published in The New Republic (TNR) magazine. The exact relationship between Mr. Kauffmann and TNR was ambiguous, but he was not a typical payroll employee or outside contractor. Over the years Mr. Kauffmann formally transferred the copyright to some of his articles to TNR, and he would ask TNR permission to republish his articles in compilations.

Mr. Kauffmann passed away in 2013 and Defendant published an anthology of Kauffmann’s film reviews including 44 that had originally been published in TNR in 1999. Plaintiff sued Defendant claiming that Mr. Kauffmann’s estate still owned the copyright to those 44 articles. At trial Defendant moved for summary judgement on the theory that a 2004 written agreement between Kauffmann and TNR made the 44 articles works for hire. Because the 44 articles were works for hire TNR, not Plaintiff, owned the copyright. The district court granted Defendants motion, Plaintiff appealed to the Court of Appeals for the Second Circuit.

The Second Circuit noted in some circumstances a writing that comes after the creation of a copyrighted work can grant work for hire status. For instance, when a payment check has a condition that the check is in consideration of a work for hire, that can be a valid written instrument. The 2004 Agreement was executed five years after the year in which the 44 articles were written. The Second Circuit found that five years created too much uncertainty as to the identity of the copyright owner. The law favors certainty, and allowing a contract to change the identity of a copyright owner 5 years in the past would lead to more ambiguity in the law. The Second Circuit concluded that the Plaintiff was the owner of the 44 articles and remanded the case to the district court for further proceedings.

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