Protecting rights in commissioned photographs.

You have a great idea for a new ad campaign, but cannot find an appropriate stock photograph to support your message. A photographer needs to be hired, but of course, you want to make sure that you'll own the photos. How do you make sure that you obtain ownership and that the photos don't wind up being licensed by the photographer for use by a competitor?

Your first thought is probably to obtain an agreement from the photographer that all of the photographs created as part of the project will be considered a "work for hire," thereby ensuring that you own them from the moment the photos are created. Although this has been the traditional approach, it may not be sufficient to ensure your ownership and control over the images. Instead, it is recommended that you also obtain an upfront agreement stating that the photographer will assign his/her rights in the images, including the copyrights. Even more important, you should obtain a written assignment on delivery of the photographs. While this max sound like a "belt and suspenders" approach, it may he the only way to be certain that you obtain ownership and control of the images.

The commercial photography business operates in two broad areas: stock photography and assignment photography. Stock images are available from a number of agencies that operate websites where you can sift through the available images. When you find one you like, you provide information about your intended use of the image, type in your credit card number and get a high resolution image available for immediate download.

When you can't find a stock image, you need to find a photographer willing to take on your "assignment" and create the images you need. The photographer typically works as an independent contractor. The custom and practice is that absent some other agreement, the photographer will own the images he/she creates, and you obtain a non-exclusive license. As a result, after you get your copies, the photographer can place the images with a stock agency where they will be available for license to anyone who wants them, including your competitors. To avoid this result, you need to ensure that you will own the images, including the copyright in each image.

Copyright law controls the use, distribution and reproduction of photographs. Once the film is developed or the digital image taken, the photograph is "fixed in a tangible medium of expression" and becomes subject to the federal Copyright Act. 17 U.S.C. [subsection] 101, et seq. (hereinafter, "the Act"). Any state laws that purport to govern the same rights addressed in the Act are preempted by the supremacy of federal law.

Traditionally, the agency/employer who wants to obtain ownership of images to be created by an independent photographer will negotiate a written "work for hire" agreement with the assignment photographer. However, not every work created by an independent contractor qualifies as a potential work for hire. Rather, the Act specifically enumerates nine categories of works that may qualify as a work for hire by an independent contractor. Notably photographs are not listed among the nine categories.

The issue of whether specially commissioned photographs can properly be the subject of a work for hire agreement has not been squarely addressed by the courts. However, one federal court has recently held that individually usable and copyrighted photographs cannot be the subject of a work for hire agreement.

In Knauer v. Kaiser Permanente, the plaintiffs, professional photographers, sought damages for copyright infringement when the defendant, a healthcare provider, used photos specially created by the photographers (as independent contractors) beyond the alleged licensed period. Although the photographers had signed agreements with Kaiser which provided that the photographs to be created would be works for hire, the photographers argued that the legislative history behind the 1976 revisions of the Act made clear that photographs were not intended to be included as an enumerated category of potential works for hire by an independent contractor. In turn, Kaiser argued that the photographs constituted a "compilation," one of the enumerated categories under the Act. However, the photos were used by Kaiser individually, not as a group, and only a small fraction of the photographs had actually been used. Moreover, the photos were individually copyrighted, and Kaiser had separately licensed rights in individual photographs. As a result, the court rejected the notion that the photographs could be considered a compilation. As there are no other enumerated categories in which the photographs could fall, and in light of the legislative history of the work for hire provision, the court concluded that the photos could not be the subject of a work for hire agreement as a matter of law.

As noted, there is no reported case that supports the determination of the court in Knauer. Given the risk that a work for hire agreement regarding photographs could be held invalid, however, an agreement should be signed by both the employer and the photographer at the beginning of the relationship stating that the photographer will assign all rights in the photographs, including the copyrights, to the employer.

In addition, because the copyright does not exist until the work is created, and the Act requires that any transfer of ownership in a copyright be set forth in a writing signed by the copyright owner, the employer needs to obtain a signed, written transfer of ownership, including the copyrights, when the photographs are delivered. If properly prepared, the work for hire agreement, coupled with the assignment documents, will ensure that the employer maintains ownership and control of the photographs, precluding unwanted uses or ownership claims by the photographer.

Jeffrey Spitz is with Greenberg Glusker. For more information visit ggfirm.com.