USCA Ninth Circuit, January 28, 2008
The Ninth Circuit held that a work for hire agreement cannot apply to pre-existing materials and that the work for hire agreement in this case did not serve as a copyright transfer agreement.
The plaintiff had created and copyrighted certain materials before it entered into an agreement with the defendant to create reports and schedules. When the plaintiff sued for copyright infringement, the defendant moved to dismiss for failure to state a claim, arguing that the agreement with the plaintiff was a work for hire agreement entitling the defendant to all of the materials the plaintiff produced including the pre-existing materials.
The district court granted the defendants’ motion and the Ninth Circuit reversed, relying on the definition of a work made for hire in the Copyright Act that provides it is “a work specifically ordered or commissioned... if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” The court wrote that the plain language of the statute indicates that a work for hire agreement cannot apply to works that are already in existence because works “specifically ordered or commissioned” can only be made after the execution of a work for hire agreement.
The court also rejected the defendants’ argument that the agreement could serve as a transfer of the plaintiff’s copyright in the pre-existing materials. The language “[a]ll reports, information, data, work product, findings, and conclusions furnished to or collected, prepared, assembled, and/or made by [Gladwell's agents] under this Agreement ("Work Product") shall be the property of [Marin]" is not enough by itself to operate as a copyright transfer as a matter of law, according to the court. Finally, the court also questioned whether the agreement could be considered a work for hire agreement because of apparent mistakes that said all of the work product provided to the plaintiff (instead of provided to the defendant) shall be the property of the defendant.