The Doctrine of Work for Hire is Often Misunderstood
The Doctrine of Work for Hire in Copyright Law
The doctrine of work for hire is a fundamental concept in copyright law, particularly relevant in the realms of business, creative industries, and academia. Understanding this doctrine is crucial for both creators and those who commission creative work, as it dictates who holds the copyright under different circumstances.
Understanding Work for Hire
The doctrine of work for hire is often misunderstood. Essentially, this doctrine states that if a work is created by an employee as part of his or her job, or if specific types of works are commissioned under a written agreement, the employer or commissioner is considered the legal author. Consequently, the copyright of the work belongs to the employer or commissioner, not the individual who actually created it. But there is a caveat.
There are two primary scenarios where the work for hire doctrine applies:
- Employee Creations: When an employee creates a work within the scope of their employment, the employer is considered the copyright holder.
- Commissioned Works: For certain types of works (such as contributions to collective works, parts of a movie or other audiovisual work, translations, and others as specified by law), if they are specially ordered or commissioned and there is a written agreement stating that the work is considered a work for hire, the commissioner owns the copyright.
This doctrine is particularly relevant in creative fields like film production, music recording, software development, and publishing, where a large number of works are created collaboratively.
Work for Hire Doctrine Requirements
Common Misinterpretations of the Copyright “Work for Hire” Doctrine
1. Misinterpretation: Employee-Created Software and Intellectual Property Ownership
Explanation: The “work for hire” doctrine applies only to copyright, not to all intellectual property rights like patents or trade secrets. An employee creating software doesn’t automatically transfer all intellectual property rights to the employer.
2. Misinterpretation: Ownership of Software Created on Company Equipment
Explanation: Copyright ownership under “work for hire” is contingent on the work being created within the scope of employment. If an employee develops software outside their job responsibilities, with their own resources, or in their personal time, the copyright may belong to them. Employers should use clear written agreements to define ownership of works and related IP rights created by employees.
3. Misinterpretation: Commissioning Software Development Equals Automatic Copyright Ownership
Explanation: For independent contractors, the Copyright Act specifies certain types of “specially ordered or commissioned” works as work for hire. These include contributions to collective works, parts of motion pictures or other audiovisual works, translations, supplementary works, compilations, instructional texts, tests, answer materials for tests, and atlases. For other types of works, including software not falling into these categories, a written copyright assignment is necessary for the commissioning party to own the copyright.
4. Misinterpretation: Software Programs as Automatic “Works for Hire”
Explanation: While a software program might be considered a contribution to a collective work in some instances, this classification is not straightforward and could lead to legal disputes. To avoid ambiguity and potential litigation, it’s prudent to include specific assignment clauses in software development contracts, ensuring clear and agreed-upon copyright transfer.
These clarifications emphasize the importance of understanding the nuances of the “work for hire” doctrine and the necessity of clear, written agreements to ensure copyright ownership aligns with the parties’ intentions.
How to Fix a Failure of Work for Hire: Addressing Non-Qualifying Scenarios
In situations where the creation does not meet the criteria for a work for hire, the copyright initially resides with the creator. This can pose a problem for businesses or individuals who commission works expecting to own the copyright. However, this issue can be resolved contractually.
Implementing a Copyright Assignment Clause
For projects that do not qualify under the work-for-hire criteria, it’s crucial to incorporate a copyright assignment clause in the independent contractor’s agreement. This clause should explicitly state that the independent contractor transfers some or all of their copyright rights to your business. Absent this clause, the independent contractor would maintain all rights to the created work, even if your agreement includes a work-for-hire provision.
Incorporating a copyright assignment clause into the independent contractor’s agreement is a straightforward process. To ensure comprehensive protection, consider adding this clause in conjunction with a work-for-hire provision. This approach covers scenarios where the created work may not be classified as a work for hire. The clause should clearly stipulate that, in cases where the work is not considered a work for hire, the independent contractor assigns all copyright rights to your company.
For example, if a film production company hires a freelance scriptwriter, and the arrangement does not meet the strict criteria for a work for hire, a copyright transfer clause can ensure that the film production company acquires the copyright of the script once it is completed. This clause acts as a safety net, ensuring that the commissioner of the work retains the rights they need for commercial exploitation or modification.
In conclusion, while the doctrine of work for hire automatically assigns copyright ownership in certain situations, it’s crucial for commissioners of creative work to be aware of scenarios where this doctrine does not apply. In such cases, a well-drafted copyright transfer clause is essential to secure the intended rights over the commissioned work. Legal consultation is often recommended when drafting such clauses to ensure they are enforceable and tailored to the specific needs of the commissioning party.