Works Are Never Made for Hire

Malibu Textiles, Inc. v. Carol Anderson, Inc. is a good demonstration of the confusion that, almost 20 years after CCNV, still surrounds whether a work is a "work made for hire." In Malibu, designs for lace were created by an independent party but Malibu filed copyright applications for the lace designs listing ownership as works made for hire. Early in the lawsuit Malibu said that the registrations were correct, although four months later, the day before moving papers for summary judgment were due, it filed Forms CA to change the ownership claim to ownership by assignment.

Luckily for Malibu the parties who created the designs agreed that Malibu owned the designs, executed after-the-fact written assignments ratifying the oral transfer, provided testimony that assignment of the copyright in lace designs was both their and industry practice, the case was in the 2nd Circuit which accepts a writing that is dated after the actual assignment, and the judge was one who was not going to entertain a challenge on the basis of formalities rather than substance. The court therefore held that Malibu was the owner of the copyrights in the lace designs; the defendants had already conceded substantial similarity. The case may not have even been litigated but for the problematic ownership.

An overexpansive view of when a work is a "work made for hire" is the most common misunderstanding about intellectual property ownership I run across. Malibu is educated and buttoned up now.

Malibu Textiles, Inc. v. Carol Anderson, Inc., No. 07 Civ 4780 (SAS), 2008 U.S. Dist. LEXIS 51783 (S.D.N.Y. July 8, 2008).