Volunteer Created Work: Who Owns the Copyright?

Question

A volunteer creates many works for a nonprofit, without signing anything or giving ownership of the works to the nonprofit. The work is used, but after about a year, the volunteer resigns and, a month after the resignation, demands the nonprofit cease and desist all use of his/her intellectual property. This includes the logo, website, photos, documents, videos and artwork. Must the nonprofit comply with the former volunteer's demand?

Because the volunteer was not an employee, the copyright laws don't apply and copyright falls, by default, to the volunteer, however, if the nonprofit has been using the material for some time, does that constitute a gift to the nonprofit, in some way?

Answer 1

The volunteer owns the copyright

However, does the non-profit have a licence and on what terms?

The volunteer has allowed the non-profit to use the material royalty-free for a period of time so there is clearly a licence. A court would try to determine what the party’s intentions were when that licence was granted.

On the facts, it’s possible that a court would rule that the licence was perpetual so the non-profit can continue to use it. It’s also possible that it could rule the licence is revocable in which case they couldn’t.

The non-profit can continue to use it, get sued, and find out. Or, they can try to strike a deal with the ex-volunteer.

Answer 2

You may have been an employee.

If the volunteer's activities look, walk and quack like an employee's activities, and would be a type of work that the nonprofit would hire to an employee but for the volunteer stepping up, then there's a fairly compelling argument that the volunteer is acting in the capacity of an employee, and is well aware of that at the time of work.

You would need to prove a) it was a freelance relationship in which it would be normal for you to retain copyright from a client, and b) that there was understanding that this was not volunteer work and you never intended to donate it. (rather hard to prove now).

If you enjoyed any tax benefits of volunteering.

If you deducted mileage, cost of donated materials, etc. It means those deductions are void, and you may have misfiled your taxes!

Such deductions also are evidence for the question of intent to donate vs retain.

You have no other use for it.

There's also another problem. If this was work that you could cheerfully license to another firm instead -- say you build a Web gift shop for them - and you could unplug this and plug it into your new organization, that might be one thing. But this logo and design work was tailored just for them. You had to know that this would be used by them, and you have no possible financial gain for reclaiming it, since it is unfitful for any other client.

Therefore the very fiction of your owning it is patently absurd; you went into it knowing it would be theirs. What use would you have for it (other than hurting the nonprofit by denying their use, or even less impressively, extorting it back to them; private benefit which is taxable.) I think any court would hold that if you wanted that relationship, you should have contractually provided for that before work begun.

Volunteerism is irrevocable.

We once had a volunteer quit. 10 years before he had built a cabinet to fit our radio chargers. He cut the power cord and took the hutch off the wall. Nuh-uh. What he overlooked is he did it using our wood, our saw, our shop space, and our varnish, and "our time" (in the sense that we would have redirected his time if that wasn't the best use of it, and he would've complied). Volunteerism becomes the property of the organization the day you do it.

If you don't want to do it, don't do it. There's no takes-backsies.

As a matter of policy, though...

The nonprofit should continue use for as long as it takes to make plans and replace it. They have no legal obligation to do so, but there's a big strategic win to honoring donor wishes. Those donors may calm down later, and respecting their wishes will go far toward them warming to you later.

When the volunteer sees his work disappear, he may have another thought about whether this was a smart thing to do. It's one thing to leave, and quite another to witness all signs of you ever having been there eradicated.

Answer 3

As is rightly pointed out in the question, under those circumstances the work would not constitute a work for hire under the definition in 17 U.S.C. § 101 because neither was the individual an employee nor have the parties agreed in writing that the work should be a work for hire. In the absence of "an instrument of conveyance, or a note or memorandum of the transfer (...) in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent", we also cannot assume a valid transfer of copyright. § 204(a).

What could be explored is whether, at least in some of the cases, the organisation (or another volunteer member) is a joint author of the work, which is the case if the work is "prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole". This was pointed out by the Supreme Court in Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 753 (1989). For instance, websites are often not just created by one individual, even if that individual may provide the basic structure of the site. Traditionally, a somewhat tricky question (all the more so if there is nothing in writing available) is the intent requirement, but it's not that far-fetched to assume that someone who helps setting up a website for a nonprofit might not have an intent to use her contributions independently but rather sees it as a joint project. A finding of joint authorship would be particularly helpful to the organisation in our scenario as joint authors are equally entitled to the copyright in their work; "an action for infringement between joint authors will not lie". Weissman v. Freeman, 868 F.2d 1313, 1318 (2d Cir. 1989).

Another - less availing but likely the most promising - option would be to argue the existence of an implied license. Nonexclusive licenses do not need to be written; they can also be oral or implied. "The concept of an implied nonexclusive license has been recognized not only by Nimmer, a preeminent treatise on copyright law, but also by the courts, including this one, which universally have recognized that a nonexclusive license may be implied from conduct." I.A.E., Inc. v. Shaver, 74 F.3d 768, 775 (7th Cir. 1996) (footnote omitted). "An implied nonexclusive license can provide an affirmative defense to a claim of copyright infringement (...) the alleged infringer bears the burden to show that such an implied nonexclusive license exists." Karlson v. Red Door Homes, LLC, 611 F. App'x 566, 569 (11th Cir. 2015). Different circuits apply slightly different tests, but, generally speaking, the key point is that the licensee must in some way have requested the creation of the work and that the licensor must have intended for the licensee-requestor to use her work in some shape or form. The license then covers the use intended by the parties.

The absence of an "implied duration" of the license does, however, not automatically mean that the license is irrevocable; in particular, the license could also be terminable-at-will. (The specific conditions for revocation are governed by state law.) At any rate, the question of revocability is one that needs to be resolved by a court; any claim of irrevocability must be proved. That being said, if the work in question is a logo, for instance, I think a good argument could be made that it must have been clear from the get-go to the licensor that they cannot possibly terminate their (royalty-free) license at will as that would be extremely damaging to the organisation. On the other hand, if someone takes a few photographs at an event, they may not (be found to) have had the same intention.

Answer 4

If nothing else is done, the volunteer owns the copyright and does not matter how exactly the volunteer contribution "walks or quacks". Of course it looks like a job but it is not, and even if it has been compensated in some degree, without the work agreement this does not make any difference.

Projects that want to have better control on the contributions have additional agreement the volunteer needs to sign before contributing. Notably Free Software Foundation used to have such an agreement that made them possible to actual own they projects (so legally enforce they licensing conditions like GPL). When only owner can enforce, this is a problem, as a typical contributor who wrote ten lines of code does not have time and money for this.