Why Associations Need Copyright Agreements to Protect Content
On the eve of the publication of a white paper that was a year in the making, attorney Paula Goedert, a partner at Barnes & Thornburg LLP, Chicago, got a call from a distressed association client. The client said three of the four authors, all volunteer committee members, were demanding it not be published. “The client said, ‘They don't have the right to do that. We're going to go ahead and publish anyway,’” recalls Goedert.
Her first question to the client was, “Do you have a copyright agreement?”
The client did not, which meant the volunteers held the copyright. Consequently, the association had no other recourse than to honor their request not to publish. “Because the volunteers are the copyright holders, if they register the work, the association will owe statutory damages, which can be substantial,” she said. “My client immediately saw that this was not a good course of action and backed off.”
This is a common problem among associations, says Goedert. Just because a volunteer produces content for an association — be it white papers, articles in newsletters, photographs, guidelines, logos, basically anything in writing – doesn’t mean the association automatically owns it. And because it does not own the content, the association cannot prevent others from using it.
Content is king in the association world. Whoever owns the content gets to determine how it's used, repurposed, and disseminated. “If the association is not aware that the creator of the work product owns the copyright, they go on their merry way thinking they own a lot of intellectual property when they really own a handful of sand.”
Here are some do’s and don’ts to ensure that the association owns what its volunteers produce.
Get a Signed Copyright Agreement.
It doesn’t have to be fancy, but associations must get a signed copyright agreement for any written content that’s created by volunteers. A simple sentence that states, “I hereby assign copyright in XYX product to XYZ Association,” will do, says Goedert. If it’s subject to trademark, like a logo, then it should say, “I hereby assign my rights in XYZ Logo to XYZ Association.” And get it signed. “I've seen associations destroy mugs, stationery, t-shirts and all sorts of things because they didn't get written assignment from the creator.”
Don’t Forget About Photographs.
People often think that the person featured in the picture owns the picture, but the truth is, the photographer owns the picture. “So, when someone says, ‘Here's a picture of me and my buddies at the last conference that you can put it in the newsletter,’ someone must ask — who took the picture?” explains Goedert. The association may also have to get permission of the people in the photo, but first it needs to get the okay from the photographer. “I have had client associations pay out significant damages for failure to understand this simple concept,” says Goedert.
Don’t Rely on Copyright Notices.
It happens all the time, says Goedert — associations put a copyright notice on a white paper that says, “Content is copyright of XYZ Association, do not reproduce,” or something similar. It’s meaningless, she says. “Simply putting a copyright notice on something doesn't make it true. Otherwise I’d go out and put my copyright on a whole bunch of John Grisham novels,” Goedert quipped.
“I would never wait until the first committee meeting to get signatures,” states Goedert. Volunteers probably won’t appreciate having this dropped on them after they’ve already sprung for airfare to get there. Goedert recommends sending a letter every time a volunteer is asked to work on a committee or work group. It might say, “Congratulations on being appointed to XYZ Committee. The society thrives on volunteers like you. Please sign below so that we can fully utilize your work product for the committee.”
Also, state that if the association does not receive the signed agreement, the volunteer will not be allowed to attend the meetings or participate in the group.
Make Sure Staff Members Understand.
Goedert lectures her clients routinely on this topic, but recently had a situation where a staffer failed to get a copyright agreement on a major project. As it turned out, the author refused to transfer his copyright. The staffer said she didn’t give the author the form Goedert provided at the lecture because she didn’t think it applied to her. The lesson learned — “Make sure that any staff member in the association that deals with committees thoroughly understands this issue.”
MARCH 2017 EDITION
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