The "work for hire" doctrine is one of the
most confusing subjects facing many employers. It is very important that employers
clear up copyright issues at the outset—before the work is performed. Assignments,
copyrights, and independent contractors all have to be handled delicately, and
E. Warren Jr.
One of the most commonly misunderstood subjects that confuses my clients
on a regular basis involves copyright law, and in particular the "work for hire"
doctrine. Imagine yourself as an executive of a company who hires an independent
contractor to perform some work for your company. The independent contractor
can be anyone:
In all of those instances you, the company owner or executive, will pay for
the work performed by the independent contractor. Now it would be logical to
assume that since you paid for it, you own the work and, therefore, could do
anything you like with it, i.e., modify it, copy it, build multiple buildings
from it or anything else that you would like. Unfortunately, that is not the
The copyright statute, 17 U.S.C. § 101 et seq., is very clear that it is
the author of the work who owns all the copyrights in it. As such, the author
has the sole ability to make copies, modifications, and changes to the work.
These latter works are commonly referred to as derivative works under the copyright
statute. For example, if you hire an architect to design a two-story, three-bedroom,
two-bath house and then you decide that you would like to change the elevations
and the floor plan, the architect (or copyright author) is the only one who
can do so, because he owns the copyright in the original work and, thus, owns
the right to make all of the derivative works.
A similar analogy is that of the author of a book. The book itself is one
work. The screenplay for a movie based on that book is a derivative work of
the book. The movie made from the screenplay is yet another derivative work.
And, importantly, it is the original book author who has the sole and exclusive
right to prepare all of these derivative works.
So what the company purchased is the one and only one copy of that original
work unless the company has an agreement
in writing with the independent contractor that assigns all of the copyrights
to that particular work to the company. Note that calling something a "work
for hire" may not necessarily provide you all the protection you need. Only
certain kinds of work actually qualify as a "work for hire" under the copyright
statute. For example, it is a common misconception that software qualifies as
a work for hire. It is not, however, one of the enumerated categories of works
that qualifies as a work for hire in the copyright statute.
How does a company protect itself in the case of an independent contractor?
It is very simple. Any independent contractor agreement should state (1) that
it is a "work for hire" and (2) also have an assignment of the copyrights in
the work to the company.
Note that this type of agreement must be in writing. While there are some
limited exceptions in which an oral agreement for a work for hire has been held
to be enforceable by a court, these are rare and very fact-specific. Thus, as
with many things in the legal profession, it’s always safer to have it in writing.
The good news for employers, however, is that any work performed by an employee
of a company automatically qualifies as a work for hire. Thus, if the author
of your software program or the architect who designed your buildings is an
employee of your company, then the copyrights in those works belong to the company.
The next question I frequently get asked by my clients is, "Well, I’ve already
had this work done and I didn’t get a work for hire agreement signed or an assignment
of the copyrights. What can I do?" The answer is very straightforward. Go back
to the independent contractor and have him/her execute a "work for hire" and
assignment agreement with you. It has been my experience that under the circumstances
where there is an ongoing relationship between the independent contractor and
the company, most people will sign such agreements.
On the other hand, if there is no ongoing relationship, or if there has been
a termination of that relationship, then your task becomes much more daunting
and difficult. Unless you can prove under the circumstances that the work was
always intended to be a work for hire and the independent contractor is willing
to agree with you, you will have no rights to the underlying copyrights in those
works and thus will have to try and design around the underlying copyrights
or find some other means of accomplishing your goal.
So if the old adage in real estate is "location, location, location," then
the adage under a "work for hire" is "get it in writing, in writing, in writing."
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