Volunteer Created Work: Who Owns It?

[mikeWizowsky]

What is the name of your state? Louisiana
A volunteer creates many works for a nonprofit, without signing anything or giving ownership of the works to the nonprofit. The work is used, but after about a year, the volunteer resigns and, a month after the resignation, demands the nonprofit cease and desist all use of his/her intellectual property. This includes the logo, website, photos, documents, videos and artwork. Must the nonprofit comply with the former volunteer's demand?

Because the volunteer was not an employee, the copyright laws don't apply and copyright falls, by default, to the volunteer, however, if the nonprofit has been using the material for some time, does that constitute a gift to the nonprofit, in some way?

 

[Taxing Matters]

Because the volunteer was not an employee, the copyright laws don't apply and copyright falls, by default, to the volunteer, however, if the nonprofit has been using the material for some time, does that constitute a gift to the nonprofit, in some way?

Copyright laws still do apply. The question is who owns the copyright in the works. Because a true volunteer is not an employee the works would not be works for hire. If they were works for hire the nonprofit would own the copyright. But since the volunteer is not an employee, the only way it could be a work for hire is if the volunteer and the nonprofit agreed in writing that it would be a work for hire. So the next question is whether the volunteer ever transferred to the nonprofit either the copyright or at least a license to use the works and if there was a license, what were the terms of the license, e.g. was it perpetual, was it exclusive, etc. Simply the fact that the nonprofit has been using the works only implies that the volunteer had permitted use while the volunteer was involved with the organization. The organization would need something more if it is to claim it has rights to use the copyright now that the volunteer has demanded that it cease use of the work. It was foolish for the organization not get in writing an agreement transferring the rights to the organization or least securing a perpetual exclusive license to the works before using them. The organization really needs to see a copyright lawyer to find out if there is anything it can do to continue using the works. Perhaps additional information you did not share would make a difference.

 

[mikeWizowsky]

@Taxing Matters whenever I said, copyright laws don't apply, I misspoke. I meant the copyright laws that apply to "works for hire" don't apply, since the volunteer was never contracted, compensated and was never an employee. The volunteer made almost everything for them, from the logo to the website, found out there was some shady business and resigned. Now the volunteer doesn't want their name associated with the nonprofit. Normally, all volunteers sign an NDA, which contains a release of intellectual property, but this volunteer wrote the NDA, so they never signed it.

 

[quincy]

@Taxing Matters whenever I said, copyright laws don't apply, I misspoke. I meant the copyright laws that apply to "works for hire" don't apply, since the volunteer was never contracted, compensated and was never an employee. The volunteer made almost everything for them, from the logo to the website, found out there was some shady business and resigned. Now the volunteer doesn't want their name associated with the nonprofit. Normally, all volunteers sign an NDA, which contains a release of intellectual property, but this volunteer wrote the NDA, so they never signed it.

Based on what you have said, the volunteer appears to have retained all copyrights in his works but the volunteer also gave permission for the nonprofit to use the copyrighted works for limited purposes.

Oral consent from a copyright holder is valid (and enforceable) when the copyright holder is granting nonexclusive uses of the copyrighted works. Any transfer of rights or granting of exclusive rights, on the other hand, need to be in writing.

The nonprofit cannot exceed the permission granted them by the copyright holder, but the copyright holder will have a difficult time preventing the nonprofit's current use of the works (i.e., using the logo as a company identifier, etc).

The volunteer should speak to an IP professional in his area to see how best to approach the company.

 

[xylene]

Your organization is going to need an attorney no matter what, because it seems like you aren't going to avoid a lawsuit at this point, probably not even if all the demands are followed.

Now the volunteer doesn't want their name associated with the nonprofit.

I say this because of the above statement. Without a time machine, his demand is effectively impossible. People with impossible demands tend to have a hard time ever seeing them as 'met'.

Try to figure out why he is so upset and consider the possibility of coming to a settlement with the disgruntled former volunteer.

 

[quincy]

Your organization is going to need an attorney no matter what, because it seems like you aren't going to avoid a lawsuit at this point, probably not even if all the demands are followed.



I say this because of the above statement. Without a time machine, his demand is effectively impossible. People with impossible demands tend to have a hard time ever seeing them as 'met'.

Try to figure out why he is so upset and consider the possibility of coming to a settlement with the disgruntled former volunteer.

Hmmm. I got the impression from the posts that Mike is the volunteer who created the works for use by the nonprofit organization.

The logo is of no use to the volunteer because it is used to identify the organization. No one else can use the trademark, including the volunteer, without infringing on the trademark rights of the organization.

There could be a copyright issue if the logo has elements creative enough to be offered copyright protection, but many/most logos do not qualify.

The organization could offer the volunteer compensation for his creative work (buy all rights) but it does not appear that the volunteer has much of a legal action to pursue. The organization did not use the works without authorization.

If the volunteer wants to disassociate himself from the organization, he can best do this by transferring all rights. The volunteer could also request that the organization does not credit him as creator of the works.

 

[xylene]

Hmmm. I got the impression from the posts that Mike is the volunteer who created the works for use by the nonprofit organization.

That is an interesting view, and I see it now.

I wasn't seeing it as a rational act by the creator, more one to burn some backsides with forcing them to make a blizzard of costs to replace lost art and design.

Watever the the position of the OP's voice, I stand by my assessment that people who 'don't want to be associated' with something they did, particularly over the course of over a year is essentially trying to gaslight a very public reality in a way that is basically impossible.

 

[quincy]

That is an interesting view, and I see it now.

I wasn't seeing it as a rational act by the creator, more one to burn some backsides with forcing them to make a blizzard of costs to replace lost art and design.

Watever the the position of the OP's voice, I stand by my assessment that people who 'don't want to be associated' with something they did, particularly over the course of over a year is essentially trying to gaslight a very public reality in a way that is basically impossible.

I agree. It is pretty hard to erase the past.

If the volunteer is now in the business of creating logos and websites professionally, the work he did for the organization can be a positive addition to his portfolio, this even if he does not especially like the organization.

You do not have to like "clients" to do work for them.

At any rate, the options appear to me to be limited for the volunteer.

 

[LdiJ]

Hmmm. I got the impression from the posts that Mike is the volunteer who created the works for use by the nonprofit organization.

The logo is of no use to the volunteer because it is used to identify the organization. No one else can use the trademark, including the volunteer, without infringing on the trademark rights of the organization.

There could be a copyright issue if the logo has elements creative enough to be offered copyright protection, but many/most logos do not qualify.

The organization could offer the volunteer compensation for his creative work (buy all rights) but it does not appear that the volunteer has much of a legal action to pursue. The organization did not use the works without authorization.

If the volunteer wants to disassociate himself from the organization, he can best do this by transferring all rights. The volunteer could also request that the organization does not credit him as creator of the works.

I hope that the OP comes back and clarifies who he is, because I was/am convinced it was someone from the non-profit, not the disgruntled volunteer, who made the original post.

 

[quincy]

I hope that the OP comes back and clarifies who he is, because I was/am convinced it was someone from the non-profit, not the disgruntled volunteer, who made the original post.

The legalities don't change either way.

 

[mikeWizowsky]

Thank you, everyone, for the help, so far.

Since verbal agreements are binding, would a third party, say, another volunteer, overhearing a verbal agreement be sufficient? Something to the effect of "You can have this as long as I'm here."

The logo, for instance, is completely unique. It's one-of-a-kind. There are no clip-art elements or features from anywhere else, as is the website, blog posts, many videos, pictures and graphics. Not to mention the videos and photographs of the volunteer.

I am speaking for the volunteer, to get some ideas of what to do, before spending a bunch of money on a lawyer. I can't say too much, because I don't want it to ever be tracked back to the volunteer. Suffice it to say, the volunteer spent thousands of hours on this organization, almost single-handedly, building it from the ground up, to find out there were some shady things going on. When the volunteer started asking questions, the organization trashed the volunteer, blacklisted the volunteer and cut all ties.

Disgruntled sounds more like someone who was rightly fired from a job. Cheated, defrauded and deceived would be a more accurate description. The volunteer don't want anyone "profiting" from the many years of work, if you catch my sarcasm, when I say, profiting.

 

[quincy]

Thank you, everyone, for the help, so far.

Since verbal agreements are binding, would a third party, say, another volunteer, overhearing a verbal agreement be sufficient? Something to the effect of "You can have this as long as I'm here."

The logo, for instance, is completely unique. It's one-of-a-kind. There are no clip-art elements or features from anywhere else, as is the website, blog posts, many videos, pictures and graphics. Not to mention the videos and photographs of the volunteer.

I am speaking for the volunteer, to get some ideas of what to do, before spending a bunch of money on a lawyer. I can't say too much, because I don't want it to ever be tracked back to the volunteer. Suffice it to say, the volunteer spent thousands of hours on this organization, almost single-handedly, building it from the ground up, to find out there were some shady things going on. When the volunteer started asking questions, the organization trashed the volunteer, blacklisted the volunteer and cut all ties.

Disgruntled sounds more like someone who was rightly fired from a job. Cheated, defrauded and deceived would be a more accurate description. The volunteer don't want anyone "profiting" from the many years of work, if you catch my sarcasm, when I say, profiting.

The logo identifies the organization. It is their trademark. That the volunteer freely created it for the organization with no demand for or expectation of compensation does not now mean the volunteer can simply "take it back."

The volunteer and the organization had an agreement, albeit not one committed to writing. The volunteer gave the organization a "license" to use his work. It was not an exlusive license or a transfer of any copyrights because both exclusive uses and transfers of copyrights must be in writing.

The volunteer can ask the organization if they wish to purchase all rights to the works from him. But I do not see that the volunteer can prevent the organization from using the logo. No one else, including the volunteer, can use the logo without infringing on the organization's trademark rights, as the logo is an identifier for the organization. This is true even though the volunteer still retains the copyrights in the works he created.

I recommend the volunteer seek out advice from an IP professional in his area.

 

[Zigner]

Thank you, everyone, for the help, so far.

Since verbal agreements are binding, would a third party, say, another volunteer, overhearing a verbal agreement be sufficient? Something to the effect of "You can have this as long as I'm here."

The logo, for instance, is completely unique. It's one-of-a-kind. There are no clip-art elements or features from anywhere else, as is the website, blog posts, many videos, pictures and graphics. Not to mention the videos and photographs of the volunteer.

I am speaking for the volunteer, to get some ideas of what to do, before spending a bunch of money on a lawyer. I can't say too much, because I don't want it to ever be tracked back to the volunteer. Suffice it to say, the volunteer spent thousands of hours on this organization, almost single-handedly, building it from the ground up, to find out there were some shady things going on. When the volunteer started asking questions, the organization trashed the volunteer, blacklisted the volunteer and cut all ties.

Disgruntled sounds more like someone who was rightly fired from a job. Cheated, defrauded and deceived would be a more accurate description. The volunteer don't want anyone "profiting" from the many years of work, if you catch my sarcasm, when I say, profiting.

You should advise your friend to speak to an attorney about this matter. I understand that you want to help, but you really aren't being helpful since you don't have first-hand knowledge and also since any information you pass on won't be first-hand.

 

[quincy]

The volunteer will either need to share the rights per the (oral) license he granted the organization or, if he wants to reduce his connection with the organization, he can sell all of the copyrights to the organization through a transfer of rights written agreement.

And, yes. I agree with Zigner that the volunteer needs to speak to an attorney in his area for a personal review.

 

[mikeWizowsky]

Thank you. I suppose we're going to have to go talk to a lawyer.

In general, it sounds like a copyright doesn't mean much, if the person holding the copyright can't control usage rights to their work, when only a verbal agreement was made to use the material, as long as the volunteer remained with the organization. Maybe I'm not understanding the same meaning of ownership, here. To me, if I own something, I can take it back or control the usage of it, unless I signed something saying otherwise.

Furthermore, according to (link to lawyers website removed)

"The Copyright Act is a federal law that protects authors or creators of an original work when they fix a creative idea in a 'tangible form of expression.' The exclusive rights to the original work, known as the copyright, are automatically granted once the work is fixed in a tangible form of expression." Additionally, "The Copyright Act provides two exceptions to these ownership rules.... First, an employer is granted the copyright in a work prepared by an employee in the course of employment. Second, under very limited situations, the Act will grant the copyright in a work to someone who commissions a work to be created by an independent contractor, provided that the parties agree in writing to such arrangement.

Both of these exceptions are known as “works made for hire.” They do not apply to volunteers. Thus, any time a volunteer creates a copyrightable work for the nonprofit, the Copyright Act confers the exclusive ownership of the work to the volunteer.

According to 17 U.S. Code § 106, the copyright holder has the rights to...

(1) to reproduce the copyrighted work in copies or phonorecords;
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

If that's the case, and there was no written agreement, can't the copyright holder simply say the works were a lease? Wouldn't the burden of proof be on the organization to show they weren't?