Download Does Your Association Own the Work Product of Your Contractors,

Producing work without penalty.
Savvy chamber execs know that it’s in their chamber’s best interest to be the primary resource
for information on living and doing business in the areas they serve. Consequently, successful
chambers are prodigious publishers.
They produce everything from brochures to books and from maps to magazines. The end
product might be created by staff (or possibly with the assistance of a chamber volunteer), or it
might be created by third-party contractors (e.g., authors, designers and publishers). Chamber
executives often assume that the chamber owns the intellectual property rights connected with
these printed materials. However, those assumptions could be incorrect.
Know the cardinal rule of ownership.
The basic rule under U.S. copyright law is that the creator of an original work is the owner of
the copyright on that work. This is true, regardless of who paid for the work that was created,
barring a written assignment of the copyright to another party. The rule does not apply for
employees acting within the scope of their employment and in certain other limited cases.
This widely misunderstood rule applies with equal force to all business entities, including
chambers of commerce. It applies not only to outside contractors and consultants, but also to
volunteer, or paid, authors, speakers, officers, directors, and committee members.
For the unsuspecting chamber, failure to understand this rule can have devastating consequences.
Even if chamber’s staff conceived of the idea and supervised the creation of the work (and the
chamber paid for it) that does not mean the chamber owns the work. There may only be a
“limited license” for a specific use. When the chamber wants to use the work on another project,
or in another medium, the work’s creator may demand a separate fee, or other consideration, for
its use. In some cases, the chamber may even be precluded from using it at all. This situation
can place serious financial (and in some cases legal) burdens on the chamber.
Make sure you own what you paid for.
It is critical, therefore, for a chamber to ensure that it owns, or at least has appropriate permission
to use, all intellectual property (e.g., text, graphics, photos, video, maps) that is included in the
chamber’s publications, on its Web site, and in all other media vehicles.
The three primary sources that the chamber may utilize for written or graphic work, are external
contractors/consultants, authors and chamber members. To protect the chamber’s interests, it is
very important to understand the nature of these relationships and to take measures upfront that
will secure the chambers rights to the material that is developed.
Contract with a contractor.
A chamber must maintain written contracts with all of its outside consultants and contractors.
This includes, but is not limited to, software developers, publishers and graphic designers. These
contracts will ensure that the chamber is assigned the ownership rights (or at least sufficient,
irrevocable license rights) to all intellectual property created by the contractor under the
agreement.
If the chamber is a joint author with another party (e.g. chamber staff work side-by-side with
consultants to design the chamber’s web site), the chamber should attempt to obtain an
assignment from the co-author(s) to the chamber. While all agreements with contractors should
be in writing, this is especially important if the chamber hopes to obtain ultimate copyright
ownership over the end product that the contractor is creating. U.S. copyright law requires that
an assignment of copyright ownership must be in writing if it is to be considered effective.
Sign up any authors.
A chamber should always obtain a sufficiently broad license, or assignment, from any or all
non-employed writers, including members, who provide work to the chamber. Licenses include
a number of very important items: permission that is irrevocable; worldwide scope; royalty-free
status (if applicable); exclusive properties (if applicable); freedom to re-use in all possible media;
a release that allows the chamber to use the author’s name, photograph, and biographical
information; plus appropriate representations and warranties.
Members equally apply.
Obtain a written document from all chamber officers, directors and committee members
assigning ownership of all intellectual property that they create (within the scope of their service
to the association.) Note: when a work has numerous creators (such as a report or a publication
produced by a committee, perhaps in conjunction with chamber staff), each of the individual
contributors (including the chamber) may be a joint owner of that work. Each may have the right
to use the work and may have a proportional right to share in all proceeds from the work.
Therefore, the chamber will need to get individual assignments from each person involved in the
project.
Don’t produce anything without protection.
It may seem innocent enough. The chamber needs a logo ASAP for a special program and the
marketing director’s roommate quickly draws something up. Everyone is happy—at least until
the chamber wants to use that logo for all future programs brochures and extensions. The
chamber could very well be faced with a major problem.
Taking the time at the beginning to make sure that all the necessary agreements are in place will
protect the chamber from issues related to matters of finance or ego. And that’s the first step to
producing the chamber’s work.
Jeffery S. Tenenbaum, Esq., and George E. Constantine, Esq., are attorneys in the Associations
Practice Group of the law firm Venable, Baetjer, Howard and Civileti, LLP, Washington, DC.
They can be reached at [email protected] or [email protected].
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