How to negotiate a Creative Commons license in a work contract

Michael Mandiberg has written a piece, HOWTO Negotiate a Creative Commons License: Ten Steps, targeted at authors working with commercial publishers.

I’ve encountered a similar challenge in a different context: work contracts. Even friendly organizations tend to use legal boilerplate in their contracts — which typically treats your intellectual production as a work for hire, assigning exclusive copyright to your client or employer. This should be problematic for anyone: not only do you lose the right to apply a CC license to your work, you lose the right to use your work for any purpose without getting your (former) employer’s permission.

Without getting into a discussion about the work-for-hire doctrine, there’s an easy way around this. You can assign copyright to your employer, but you get a non-exclusive license, too. This is similar to the logic of the author addenda of the scholarly publishing world. They can do anything they want with the content you produced — but you can, too.

There are some common conditions an employer will want in this situation, which I find pretty reasonable:

  • The license only applies to non-confidential materials.
  • The employer gets right of first publication and may want an embargo on other uses (e.g., you can’t publish it elsewhere for 30 days).
  • The employer has a right of attribution and may want a link back.
  • You can’t imply the employer endorses your re-uses.

Conveniently, the latter conditions are already written into the Creative Commons licenses.

Here are three live examples, the first two without a CC license, the third with:

Any written work product created by you under this agreement will be deemed a “work made for hire” under Section 101 of the United States Copyright Act of 1976, as amended. [Client] hereby grants you the royalty-free, unlimited, perpetual, non-exclusive, irrevocable right and license to make, use, copy, distribute, display, publish, perform, modify, or translate any written work product not containing Confidential Information for any purpose and in any medium worldwide and to sublicense the foregoing rights, and this sublicense right, to others.

Contributor acknowledges and agrees that [client] owns all right, title and interest in and to the Works, each which is hereby deemed to be “work made for hire” (as such term is defined in 17 U.S.C. § 101). To the extent that a Work may not be considered a “work made for hire,” Contributor hereby irrevocably transfers and assigns to [client] all of Contributor’s right, title, and interest in and to the Work. To the extent Contributor retains any right, title or interest in or to the Works, Contributor hereby grants to [client] a perpetual, irrevocable, fully paid-up license to use, reproduce, distribute, display and perform, prepare derivative works of and otherwise modify all or any portion of the Works in any form or media. Contributor further waives any “moral” rights or other rights with respect to attribution of authorship of integrity of the Works.

Subject to the terms and conditions hereof, [client] hereby grants to Contributor a royalty-free, unlimited, perpetual, non-exclusive, irrevocable right and license to make, use, copy, distribute, display, publish, perform, modify, or translate the Works (including portions thereof) for any purpose and in any medium worldwide and to sublicense the foregoing rights, and this sublicense right, to others; provided, however, that (a) Contributor attribute the Works (or portions thereof) to [client], and require sublicensees to do so; (b) any such use can only be made after thirty (30) days following [client]’s first publication of same (unless [client] agrees otherwise); and (c) Contributor shall require that sublicensees may not implicitly or explicitly assert or imply any connection with, sponsorship or endorsement with [client]. Notwithstanding the foregoing, Contributor may not make any changes to the Work in a manner that alters its editorial intent without prior written consent; however, this provision shall not bind any sublicensee receiving a license which permits modification.

Any Works not containing Proprietary Information shall be made available to [author] under a Creative Commons Attribution 3.0 Unported license. Attribution of non-proprietary material shall be in the name of [client].

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4 Responses to How to negotiate a Creative Commons license in a work contract

  1. Joss Winn says:

    Thanks for this.

    The university where I work has an IPR Policy which states:

    INDIVIDUAL INTELLECTUAL PROPERTY RIGHTS

    However, the University agrees to allow individuals to retain intellectual property rights on:

    Copyright and royalties from books, articles, artefacts, dramatic, musical or artistic works and other scholarly work produced in furtherance of the member of staff’s professional career (apart from those commissioned by the University);

    Audio or visual aids to the giving of lectures; or

    Computer-related works other than those listed in 5.2.1 – 5.2.7 above.

    Given this statement, would you still see a need to pursue a non-exclusive license for these products of employment as you outline above? It seems to me that our policy already provides the freedom to apply CC licenses to ‘scholarly works’.

    Thanks.

  2. Gavin Baker says:

    Joss, thanks for the question. I’m not a lawyer, so don’t take this as legal advice. But it does seem like scholarly works (unless they’re especially commissioned by the university) are exempted from the university’s claim — they’re not a work for hire, you own them, so there’s not a special need to retain your rights via a non-exclusive license.

  3. Joss Winn says:

    Thanks, Gavin. Not taken as legal advice but just looking for considered opinion. I’d like to have CC recognised in our university contracts and policies but don’t want to force it where it’s not needed.

    Thanks for all the work you do on OA News.

  4. Pingback: Transitions » Blog Archive » Negotiating a Creative Commons License - The University of Iowa Libraries

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