Freelance authors are on the rise. According to a 2017 survey, 50.9% of the US population will be freelancing in ten years if the current trend continues.[1] With the rise in freelancers, there are growing concerns about freelancer rights and the bargaining power of large media publishers. Professor D’Agostino has done extensive research in this area and in her book titled, “Copyright, Contracts, Creators: New Media, New Rules” she sheds insight on this issue by focusing primarily on freelancers in the newspaper and magazine industries.[2] Her insight equally applies to other content industries, such as photography, where photos are increasingly created and shared in the digital world.

Professor D’Agostino mentions that granting exploitation rights to owners of original works is one of the key objectives of copyright law.[3] Yet, it seems like social media platforms such as Instagram and Facebook are essentially granting themselves broad licences via their terms and conditions. Professor D’Agostino reiterates this point when she says, “The current proliferation of digital technologies expands the publisher’s powers and puts the supposed objectives of copyright law under strain.”[4] At first glance, it might seem like social media is a solution to this problem by giving users the opportunity to post images and, depending on their follower base, have the opportunity to make money for each post. A freelancer’s dream, right? Not exactly. It turns out that Facebook and Instagram’s terms and conditions contain that scary licence provision that not many users know about.

Terms and Conditions: A Mandatory Licence

It seems as though social media platforms are a good example of the need to raise awareness of the non-exclusive licence. Take Instagram, for example, their terms and conditions include the following:

“… you hereby grant to Instagram a non-exclusive, fully paid and royalty-free, worldwide, limited license to use, modify, delete from, add to, publicly perform, publicly display, reproduce and translate such Content, including without limitation distributing part or all of the Site in any media formats through any media channels, except Content not shared publicly ("private") will not be distributed outside the Instagram Services.”[5]

It begs the question, why would Instagram need to modify a post, add to it, or distribute it on another media channel? One can understand why public performance is required given that Instagram is a platform whereby it gives creators the means to display their content on a global scale. Yet, with social media influencers making thousands per post, the fact that Instagram can modify it and display it in any media formats through any media channels seems problematic when content creators want to be able to still have control over the content that is providing them income.

Facebook’s terms and services include the following:

“… you grant us a non-exclusive, transferable, sub-licensable, royalty-free, and worldwide license to host, use, distribute, modify, run, copy, publicly perform or display, translate, and create derivative works of your content (consistent with your privacy and application settings).”[6]

This is an another example of a broad licence, with the main concern being the lack of control over the distribution of the content. Ultimately, this may be the risk users need to take when displaying content over social media.

The Price Creators Pay

All in all, although these broad licences seem scary they are the reality of the digital age. These social media platforms definitely need a licence to carry out their intended functions, but do they need to be this broad? One can only imagine a situation where Facebook creates a derivative work using one of your photos. Much like freelance journalists are vulnerable to publishers as independent contractors[7], users of Instagram and Facebook that post content are vulnerable to the social media powerhouses. Although there is no monetary price to post their content, they pay with a licence.

If, by chance, a user does read the Instagram terms and conditions in their entirety and decides they do not want to grant such a licence, they are free to not engage with the platform. The tradeoff is that they might miss out on potential profits and global exposure. A solution? Creators may wish to resort to a private website platform, but there is no guarantee that they will not require a similar type of licence. Until protective measures such as legislation or case law come to the rescue, to move forward in the digital age, creators will have to be prepared to hand out licences along the way.

Written by Lauren Chypyha, JD Candidate 2020, enrolled in Professors D’Agostino and Vaver 2019/2020 IP & Technology Law Intensive Program at Osgoode Hall Law School. As part of the course requirements, students were asked to write a blog on a topic of their choice.

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[1] Elaine Pofeldt, “Are We Ready For A Workforce That is 50% Freelance” (17 October 2017), online: Forbes

<https://www.forbes.com/sites/elainepofeldt/2017/10/17/are-we-ready-for-a-workforce-that-is-50-freelance/#326099fe3f82>.

[2] Giuseppina D’Agostino, Copyright, Contracts, Creators: New Media, New Rules (Cheltenham: Edward Elgar Publishing Limited, 2010).

[3] Ibid at 16.

[4] Ibid at 3.

[5] Instagram, “Terms of Use” (19 January 2013), online: Instagram

<https://www.instagram.com/about/legal/terms/before-january-19-2013/>.

[6] Facebook, “Terms of Service” (31 July 2019), online: Facebook < https://www.facebook.com/terms.php>

[7] D’Agostino, supra note 2 at 8.

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In , Yehuda Pinto sought damages for copyright infringement of materials he prepared during his 14-year period working with the (BJEC) and the curriculum.Pinto Began working as a freelancer for TaL AM in 1992. His work involved original compositions, arranging traditional songs, and various other aspects of the musical component of the Tal AM curriculum. Since there was no written contract, the court had to make a determination as to what agreement the parties reached at the time. BJEC always paid Pinto at an hourly rate and he never received any royalties for the use of his works, though he did once receive a bonus as a thank you for his contributions.

The relationship ended in 2006 when an employee of BJEC discovered hidden copyright annotations in Pinto’s invoices. The documents were submitted electronically and contained white text on a white background, claiming that copyright in the works would remain with Pinto. At that time, BJEC required that Pinto either sign a document stating that all of his compositions were the property of TaL AM or an acknowledgement that his services would be terminated.

Copyright Ownership

At trial, both parties agreed that Pinto owned the Copyright to 58 of his original compositions pursuant to of the Copyright Act, which states that the author of a work is the first owner of copyright. His works were BJEC, since he was a freelancer and he did not sign the agreement, opting instead to end the relationship. In other works such as the actual songs, the Court found BJEC and Pinto to be joint authors. BJEC was also held to be the of the sound recordings, since they bore the associated financial risks. Finally, if Pinto consented to the use of the underlying works, BJEC ��held the copyright in the of the curriculum.

Additionally, Pinto did not assign the copyright because such an assignment must be in writing, per of the Act, and once again there was never any written contract or an agreement between the parties. Therefore, the central question before the Court was whether Pinto consented to the use of his works as a part of the contract for his services. The Court held that Pinto granted an implied licence to use his works and the actions of the defendants were within the scope of the licence. The action was dismissed.

Implied Consent

According to��, the burden of proof of lack of consent is on the party seeking to establish infringement.�� In its analysis, the Court stated that the testimony given did indeed establish that Pinto granted consent to use his work. He knew that his work was commissioned for Tal AM, and during the proceedings he acknowledged that he permitted BJEC to use his music for the TaL AM curriculum.��Pinto’s request for a written contract was not evidence of a lack consent. Pinto had argued that his repeated requests for a written contract to protect his “rights” established that he did not grant a licence.�� The Court reasoned that the fact that he continued to work with BJEC after they refused his requests meant that he impliedly consented to the terms as presented by the defendants.

In , the Supreme Court held that when a work is created at the request of a purchaser, the Court��can find an implied licence to use the work for the purpose for which it was created. Therefore, through the continued relationship, Pinto implied consent to the use of the works in the TaL AM curriculum.��The Court further held that there were no limitations put on the consent. No restrictions were communicated by Pinto, nor were they reasonably contemplated by the parties at the time.

Lessons for the Future

The lesson from this case is to make sure everything in writing. The relationship could have been preserved had the parties’ expectations been made clear from the start through a negotiation of rights and remuneration. Moreover, BJEC could have negotiated ownership of the works from the beginning as part of the contract for services. Alternately, if Pinto had held firm in his request for a written agreement, perhaps he would not have granted an implied licence. If he stopped working for BJEC immediately after the refusal he could argue that there was no implied consent to BJEC's terms. This ruling is a reminder to authors that even though they can retain copyright in their works, they may lose some degree of control over their use if they grant implied licences by continuing a "for service" relationship. The importance of this reminder is amplified in this context because in copyright, it’s all about control.

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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In 2009, the Kirby heirs served Marvel with notices of termination of transfer covering the extended renewal term for works published between 1958 and 1963. After negotiations failed, Marvel sought and received a summary judgment that the works were for hire.

Work for Hire

governs transfers executed before 1978. This provision covers works in which copyright was initially secured before 1978. This section allows parties to terminate the transfer for the extended copyright period under the 1976 legislation, which is a longer term than the parties had initially contemplated. This provision, however, excludes works for hire, in which case the employer owns the copyright and will retain it after their employee passes away.�� To determine whether a work was "for hire", courts turn to case law interpreting the legislation in effect at the time - the . Under the 1909 act, courts developed the "instance and expense" test to determine whether a work was in fact "for hire" or not.

Instance and Expense Test

The general rule of the instance and expense test (from��) is that, “a work is made at the hiring party’s instance and expense when the employer induces the creation of the work and has the right to direct and supervise the manner in which the work is carried out”. ��The instance refers to the extent to which the hiring party provided the impetus for, or participated in, the creation of the work, while expense refers to the resources the hiring party invests or their power to supervise the creation of the work.

Application to Kirby

The Kirby estate argued that when Jack Kirby drew panels for Marvel it was as a freelance artist. Kirby undertook all the costs, including his materials, and he bore the risk of non-publication. In addition, he received a flat per-page rate regardless of whether Marvel required edits. During the relevant period, Kirby worked from home, set his own hours and did not receive fixed wages or benefits. Marvel conceded that Kirby had more creative freedom than many of his peers, as he was Marvel’s best artist. Under what Stan Lee termed the “Marvel Method”, Kirby sometimes created panels without a script after collaboration meetings where Lee outlined the contours of the story and filled in the script after panels were completed.

Marvel paid a flat, per-page rate and reserved the right to require edits or reject pages although it admitted that this was a rarity for Kirby’s work. Marvel contended that the flat per-page rate paid to Kirby and other artists at the time showed that Marvel took on the risk of editing, ultimate publication, and commercial success. Marvel further argued that Kirby did not complete his work on spec; his work was created with an expectation that it would be published due to an ongoing relationship, which required little supervision due to its prolonged nature. The fact that Marvel rarely exercised control over Kirby did not mean that they did not retain the right to do so. Even when working under the Marvel Method, Kirby's work was within and for the scope of titles published by Marvel, under the direction of Stan Lee.

The court held that Marvel established that Kirby created the works at their instance and expense. This raised the presumption that the works were made for hire, which is rebuttable by an agreement to the contrary, contemporary with the works.�� The Kirby estate put forward the argument that a 1975 assignment to transfer interests in works to Marvel suggested an understanding that Marvel did not have the rights at the time. The court disagreed and felt that in all likeliness this was a redundancy to protect Marvel and its rights, not an admission that it lacked the rights.

Comparison to Canadian Context

In my opinion, this decision would have reached a similar outcome in Canada. Canadian employers are the for an employee in the absence of an agreement to the contrary, while a freelancer generally owns first copyright in their works. The question of whether Kirby was a freelance artist would still depend on the between the parties and the control that Marvel was able to exert on Kirby. A Canadian court would consider whether Kirby worked on his own account or in the business of Marvel and the extent to which Marvel could control his work. I think that as the court ruled in Kirby, the works were not stand-alone; they were a part of the universe developed by Marvel. The works came from direction from Lee and other writers, and he drew panels based on instructions from Lee. This was a prolonged relationship during which Marvel directed Kirby's work and assigned him to specific story lines. Therefore the heirs to the Kirby estate would be unlikely to fare any better in Canada. Is this an�� result? , perhaps? No matter the outcome, copyright law is always .

Allison McLean is an IPilogue Editor as well as a JD Candidate and second year student at Osgoode Hall Law School.��

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