A "work made for hire" (sometimes referred to as a "work-for-hire") is a work created by an employee as part of her/his job and, in some limited circumstances, where all parties agree in writing that work created by an independent contractor should be considered a work-for-hire. Works made for hire are deemed authored by the employer (or party hiring the independent contractor) for copyright purposes, rather than by the employee/contractor.
The work-for-hire "author" designation can be invaluable to a party that wishes to own the copyrights in and to a given work because, without it, a copyright author retains the right to revoke any copyright transfer after 35 years from the date of such transfer, as a matter of law. Under the United States Copyright Act of 1976 (the "Copyright Act"), a "work prepared by an employee within the scope of his or her employment" is automatically considered a work-for-hire, but certain parties to an independent contractor/hiring party relationship can create a contractual work-for-hire in certain circumstances as well. Given the advantage inherent in a work-for-hire designation, business owners should include applicable provisions in independent contractor agreements wherever possible.
Are Work-for-Hire Provisions Necessary?
How to Establish a Work-for-Hire Relationship with an Independent Contractor
While an employee/employer relationship will automatically give rise to work-for-hire status for all works created by the employee in the scope of her/his employment, contracting parties can only designate copyrightable works as works-for-hire under certain circumstances. According to the Copyright Act, in the absence of an employer/employee relationship, only certain works can be designated as works-for-hire contractually including, but not limited to, "a work specially ordered or commissioned for use as a contribution to a collective work."
Thus, for example, properly drafted work-for-hire language could be valuable in connection with software/hardware development agreements where a given contractor's efforts are part of a collaboration of multiple parties. However, given the risks involved if a work-for-hire relationship is deemed not to exist, and the lack of clarity about classifying individuals as independent contractors vs. employees, it is vital that any contractual work-for-hire provisions include clauses that ensure a complete copyright transfer where a court or other adjudicator of fact determines that work-for-hire provisions do not apply.
Making Work-for-Hire Work for You
Without properly drafted work-for-hire and copyright transfer provisions, business entities commissioning works from third parties may leave themselves without sufficient intellectual property rights in and to the works purchased.
Accordingly, it is highly recommended that you retain qualified legal counsel to ensure that any work-for-hire provisions that you intend to use, or currently use, are drafted and/or revised, as applicable, in order to ensure that they will grant you the broadest and most complete ownership rights possible.
If you are interested in learning more about this topic or require the preparation, revision and/or negotiation of work-for-hire provisions and/or agreements, please e-mail us at info@kleinmoynihan.com, or call us at (212) 246-0900.
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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
