It should be clear by now that it is very important to know whether any person you hire to create a work of authorship qualifies as an employee or IC for copyright ownership purposes. You automatically own the copyright in works created by employees within the scope of employment, but this is emphatically not the case with works created by ICs. The special steps discussed above must be taken to own IC-created works.
The common law right of control test is used to determine whether a worker is an IC or employee for copyright purposes. (See Chapter 13 for an in-depth discussion of the common law test.)
EXAMPLE: Marco, a professional photographer, took photographs for several issues of Accent Magazine, a trade journal for the jewelry industry, over a six-month period. Marco had an oral agreement with the magazine and was paid a fee of about $150 per photograph. Marco made no agreement with the magazine concerning copyright ownership of the photos. Marco, who had not signed a work-for-hire agreement, claimed that he owned all the copyright rights in the photos.
The court concluded that Marco was an IC. Marco was an experienced and skilled photographer. He used his own equipment, and worked at his own studio, on days and times of his choosing, without photography assistants hired by the magazine. No income tax was withheld from his payments and he received no employee benefits. He performed discrete assignments for the magazine, rather than hourly or periodic work. Since Marco owned the copyright in the photos, the court held that the magazine had to pay him a licensing fee when it re-used them. (Marco v. Accent Publishing Co., Inc., 969 F.2d 154 (3d Cir. 1992).)
You Can’t Have It Both Ways
Courts don’t look favorably upon hiring firms that don’t treat workers evenhandedly for copyright ownership purposes. In one case, for example, a federal court held that a part-time programmer employed by a swimming pool retailer was not the company’s employee for copyright purposes and the programmer was therefore entitled to ownership of a program he wrote for the company. The court stated that the company’s failure to provide the programmer with health, unemployment or life insurance benefits, or to withhold Social Security, federal or state taxes from his pay was a virtual admission that the programmer was an independent contractor. The court stressed that the company could not treat the programmer as an independent contractor for tax purposes and then turn around and claim he was an employee for copyright ownership purposes. (Aymes v. Bonelli, 980 F.2d 857 (2d Cir. 1992).)
The moral is that if you treat a worker as an IC for IRS purposes, you had better assume he or she is an IC for copyright ownership purposes as well.