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Copyright Experts: Does Work-for-Hire Doctrine Apply to Nonprofit Board Member?

Under the Works Made for Hire doctrine, a work prepared by a sillydood04/07/18
Looks like both can claim rights. Note 3 in your opinion st jeffm04/07/18
Thanks. Re: Note 3: I think that could be the case if th sillydood04/07/18
I don't think being on the board makes someone a de facto em jeffm04/07/18
That's what I'm worried about. I can't find anything directl sillydood04/07/18
Yes, but also, I noticed the notes look to the parties' "int jeffm04/07/18
CCNV is a very fact-specific copyright case. Unless your que genylawyer04/08/18
It involves commissioned written work, so I'm pretty sure it sillydood04/08/18
sillydood (Apr 7, 2018 - 6:47 pm)

Under the Works Made for Hire doctrine, a work prepared by an employee within the scope of his employment is owned by the employer, not the employee.

If a nonprofit board member authors a work on behalf of the organization, but is not compensated, and has not otherwise signed an agreement assigning any works created to the organization, who owns the work? Can the board member or his heirs claim rights to the work?

I think this case might be on point: https://www.law.cornell.edu/supremecourt/text/490/730. Basically saying that to determine whether someone is an "employee" under the Copyright Act you look to agency law and not to a formal/salaried arrangement. That case involved a volunteer, and nonprofit board members are basically high-level volunteers. In that particular case the volunteer was found to be a contractor not an employee, but I think there’s significant factual distinction between that case and a case involving a board member.

Applying the agency factors, and intuitively, a nonprofit board member would be probably be an employee when he’s working on something on the organization’s behalf. After all, the affiliation is long between the board member and the organization, the organization is fronting the money for the work, and the board member is subject to oversight and control from the board. There would also potentially be a conflict of interest and/or a violation of the rule against private inurement if ownership of the work fell to the board member.

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jeffm (Apr 7, 2018 - 7:28 pm)

Looks like both can claim rights. Note 3 in your opinion states this. It seems like matters of inquiry are spelled out in Note 2.

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sillydood (Apr 7, 2018 - 7:46 pm)

Thanks.

Re: Note 3: I think that could be the case if the board member is *not* an employee under the Act and therefore the work-for-hire doctrine is N/A. If, however, the board member is an "employee" under the Act, then I think under section 201(b), it's owned 100% by the company. 201(a),which is the part they cite in Note 3, describes where ownership initially vests, but 201(b) overrides that in cases of employment (basically saying that, for purposes of (a), the employer is the "author"). In the case I cited, the court found the worker was a contractor, not an employee, so 201(a) could be relevant and 201(b) was N/A.

Re: Note 2: yes, that's the relevant framework. I think a board member would come out on the other side of this analysis, since there's a longer-term relationship and there's formal oversight from the Board.

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jeffm (Apr 7, 2018 - 7:52 pm)

I don't think being on the board makes someone a de facto employee, but I'm not sure.

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sillydood (Apr 7, 2018 - 7:58 pm)

That's what I'm worried about. I can't find anything directly on point about nonprofit board members. At best it'd be a case-by-case determination if a fight ever arose.

I suppose the safe thing is to have the board member sign an assignment of rights?

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jeffm (Apr 7, 2018 - 8:08 pm)

Yes, but also, I noticed the notes look to the parties' "intent" when there is no employment relationship. I would imagine their intent can be ascertained from any number of sources, including minutes of the meeting of the board, emails, etc.

Just my thinking based on what you posted. I have not looked into this issue in greater detail than just reviewing the notes in your case.

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genylawyer (Apr 8, 2018 - 7:23 pm)

CCNV is a very fact-specific copyright case. Unless your question involves commissioned art, I wouldn’t rely on it. One big issue I see that isn’t addressed by CCNV is the idea-expression dichotomy. Mere ideas are never protectable. Most board members only contribute ideas or opinions. So I would be very skeptical about any rights existing to be transferred to anyone.

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sillydood (Apr 8, 2018 - 8:43 pm)

It involves commissioned written work, so I'm pretty sure it's copyrightable. The board member is collaborating with an outside ghostwriter on a book regarding the nonprofit's work.

To be safe, I drafted the agreement so both outside consultant and board member are assigning rights to the nonprofit, and disclaim any contribution to a joint work. That way the nonprofit owns the rights free and clear from any later claim by the board member or the ghostwriter.

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