Independent Contractor Copyright

[Roger1889]

I worked as an independent contractor for a creative agency for around a year. Over this time I asked for contracts and to be a full time employee, however this never came to be. Therefore, all that I am about to write is under the basis that I have no written obligations or contracts with the party that has sent me a cease and desist letter. Here it is...

I was considered a content creator or videographer for this company, working as an independent contractor creating video content for them and their respective clients at the time. I was paid on a recurring basis and moved to another state for this contracted gig, and had asked several times about becoming an employee. After around a year of never signing a contract when I wanted, he brought me an NDA and a non compete, which is when I finally stopped working for them. Now, some of the content I created for him while there I have on my website as part of my portfolio. They have sent me a cease and desist letter to remove all work I did that contains materials owned by the company.

"(Company Name) is the author of a copyright work which includes its logo, pictures, videos, and all materials owned by (Company Name). We have been advised of your use of its videos as if they were to be yours. Pursuant to the federal copyright act, such use is unlawful."

This doesn't seem like a work for hire situation because I remained an independent contractor and I want to know if I have copyright over the work I created there or if they do. I never signed any contracts obligating me to anything with this company. All work on the content I am presenting on my website was created and built myself.

 

[adjusterjack]

This doesn't seem like a work for hire situation because I remained an independent contractor

I think you are right. I'm going to quote Wikipedia here (yeah, I know):

if the work is created by an independent contractor or freelancer, the work may be considered a work for hire only if all of the following conditions are met:

• the work must come within one of the nine limited categories of works listed in the definition above, namely (1) a contribution to a collective work, (2) a part of a motion picture or other audiovisual work, (3) a translation, (4) a supplementary work, (5) a compilation, (6) an instructional text, (7) a test, (8) answer material for a test, (9) an atlas;
• the work must be specially ordered or commissioned;
• there must be a written agreement between the parties specifying that the work is a work made for hire by use of the phrase "work for hire" or "work made for hire."[1]

In other words, mutual agreement that a work is a work for hire is not enough. Any agreement not meeting all of the above criteria is not a valid work for hire agreement and all rights to the work will remain with the creator. Further, courts have held that the agreement must be negotiated, though not signed, before the work begins. Retroactive work for hire is not permitted

https://en.wikipedia.org/wiki/Work_for_hire
Note that ALL those conditions must be met to be a work for hire, not just some of them.

I suggest you engage a copyright attorney to more thoroughly examine your situation and have him respond to the letter. Whatever money you pay him now is just a fraction of what you'll pay to defend a lawsuit if you don't address this properly.

Then, and in the future, register your creations with the US Copyright office for additional protection.

 

[quincy]

I worked as an independent contractor for a creative agency for around a year. Over this time I asked for contracts and to be a full time employee, however this never came to be. Therefore, all that I am about to write is under the basis that I have no written obligations or contracts with the party that has sent me a cease and desist letter. Here it is...

I was considered a content creator or videographer for this company, working as an independent contractor creating video content for them and their respective clients at the time. I was paid on a recurring basis and moved to another state for this contracted gig, and had asked several times about becoming an employee. After around a year of never signing a contract when I wanted, he brought me an NDA and a non compete, which is when I finally stopped working for them. Now, some of the content I created for him while there I have on my website as part of my portfolio. They have sent me a cease and desist letter to remove all work I did that contains materials owned by the company.

"(Company Name) is the author of a copyright work which includes its logo, pictures, videos, and all materials owned by (Company Name). We have been advised of your use of its videos as if they were to be yours. Pursuant to the federal copyright act, such use is unlawful."

This doesn't seem like a work for hire situation because I remained an independent contractor and I want to know if I have copyright over the work I created there or if they do. I never signed any contracts obligating me to anything with this company. All work on the content I am presenting on my website was created and built myself.

What is the name of your state?

Absent a contract to the contrary and based strictly on what you have said here, the work you completed for the company belongs to the company but the copyrights in these works remain your property.

Copyrights need to be expressly transferred by the creator of a work in a written and signed transfer of rights agreement.

That said, how you use what you created can be a trademark infringement issue, so you should have your website's use of the material personally reviewed by an IP attorney in your area.

 

[Roger1889]

What is the name of your state?

Absent a contract to the contrary and based strictly on what you have said here, the work you completed for the company belongs to the company but the copyrights in these works remain your property.

Copyrights need to be expressly transferred by the creator of a work in a written and signed transfer of rights agreement.

That said, how you use what you created can be a trademark infringement issue, so you should have your website's use of the material personally reviewed by an IP attorney in your area.

Thanks for the response! California is where this took place. I reside in Maryland now and the company is still in CA. When I was working with them, they were all for me sharing the content I made through my personal online avenues, however, now that it doesn't benefit them because they advertised themselves as creating the videos when in reality they contracted everything out, they want me to take them down. The only issue I can see is that their logo is in some of the videos. Other than that, everything was conceptualized by me, designed and created by me. They simply paid me to create the content. I agree that the video belongs to the company, however I still own the rights to use it a I feel appropriate. If I had signed a contract and given over that right, I would be approaching this differently, but because there isn't one is there any ground they can sue me on for publishing work I created as a contractor? I also don't believe they will pursue on the basis that on all fronts I should have been considered an employee.....worked in their office, moved to a different state, etc....but he wouldn't do it because I don't think he wanted to pay the taxes on it. It's a very frustrating situation and I simply want to move on, but the some of the work I did there I spent a lot of time on it, for little pay with the understanding that it would move to something else and I'd be able to use any and all work I created.

 

[quincy]

Thanks for the response! California is where this took place. I reside in Maryland now and the company is still in CA. When I was working with them, they were all for me sharing the content I made through my personal online avenues, however, now that it doesn't benefit them, they want me to take them down. The only issue I can see is that their logo is in some of the videos. Other than that, everything was conceptualized by me, designed and created by me. They simply paid me to create the content. I agree that the video belongs to the company, however I still own the rights to use it a I feel appropriate. If I had signed a contract and given over that right, I would be approaching this differently, but because there isn't one is there any ground they can sue me on for publishing work I created as a contractor? I also don't believe they will pursue on the basis that on all fronts I should have been considered an employee.....worked in their office, moved to a different state, etc....but he wouldn't do it because I don't think he wanted to pay the taxes on it. It's a very frustrating situation and I simply want to move on, but the some of the work I did there I spent a lot of time on it, for little pay with the understanding that it would move to something else and I'd be able to use any and all work I created.

I still suggest you have your website content personally reviewed. You might need to edit what you publish on your site to avoid trademark issues.

 

[adjusterjack]

The only issue I can see is that their logo is in some of the videos.

That's going to be a big issue and what is likely to get you sued. Remove the scenes that contain the logo.

is there any ground they can sue me

They can sue you if they believe they have grounds to do so. They don't have to be right only think they are. Getting sued costs you a bundle to defend and you don't get your lawyer fees if you win. Best to avoid getting sued.

I also don't believe they will pursue on the basis that on all fronts I should have been considered an employee.....

That has nothing to do with anything. If you were illegally misclassified as an independent contractor you had contemporaneous remedies. Too late to bring that up now. Besides, your type of work might fall under the definition of independent contractor regardless of the length of the engagement or the environment under which you worked.

some of the work I did there I spent a lot of time on it, for little pay with the understanding that it would move to something else

Lesson for the future: The word "understanding" means nothing. Next time you perform services for anybody, do it with a written contract and a fee schedule and make sure you get paid when you are supposed to.

 

[quincy]

Roger potentially could file a countersuit (if the company sues) because the company is claiming copyrights in works not created by them. It can be important to learn if the works created have been federally registered.

If the cease and desist notice received by Roger is only asking for removal from the website of the promotional material created by him for the company, it might be best (and certainly legally safest and cheapest) to simply comply with the takedown request.

Although I can understand the value to Roger of including on his website examples of works he has created, the value of this is diminished if there is a company questioning his rights in the works.

I generally recommend trying to resolve disputes amicably - coming to a negotiated middle ground where all can be satisfied - but I also think Roger needs to have an IP attorney personally review the works in question and how they are being used - to see first if he is on legally solid ground to argue rights.

 

[Roger1889]

Lessons have certainly been learned. Thank you for all the feedback!

 

[quincy]

Lessons have certainly been learned. Thank you for all the feedback!

We appreciate the thanks, Roger, so thank you.

Good luck.