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Monthly Archives: January, 2013

Work For Hire Part II – Scope of Employment

Following up on my last post concerning works made for hire, this post tackles the question: When is a work “prepared by an employee within the scope of his or her employment?”

The answer is determined based on common law principles as set forth in the Restatement (Second) of Agency. The three criteria are: (1) whether the work is of the kind of work the employee is employed to perform; (2) whether the work occurs substantially within authorized work hours; (3) whether it is motivated, at least in part, by a purpose to serve the employer.

When evaluating whether the work is of the kind the employee is employed to perform, courts generally have defined the scope of the employee’s work very broadly, holding that it encompasses work that is “incidental” to the employee’s work. Courts typically refer to comment b of Section 229 of the Restatement (2d) of Agency, which reads:

An act may be incidental to an authorized act, although considered separately it is an entirely different kind of act. To be incidental, however, it must be one which the servant is employed to perform. It must be within the ultimate objective of the principal and an act which it is not unlikely that such a servant might do. The fact that a particular employer has no reason to expect the particular servant to perform the act is not conclusive.

Applying that principle, one court held that software development work performed by a doctor employed as a research fellow was incidental to the work he was hired to do because his job description recited: “The fellows will acquire skills required to organize, administer, and direct a critical care unit, and to work effectively as a member of a multidisciplinary team.” The software, the court explained, helped organize and administer the critical care unit. In another case, a court found that computer programs developed by the supervisor of a quality control laboratory qualified as a work for hire because the supervisor was responsible for the organization and updating of the laboratory. The court held that “development of the computer programs was at least incidental to his job responsibilities because it was within the ultimate objective of the principal and an act which it is not unlikely that such a servant might do. ”

Of the three factors, the second, whether the work occurs substantially within authorized work hours, typically is the least important. Plenty of courts have found works created after hours to be works for hire. With respect to the third factor, it is important to remember that it is not necessary that the servant’s only motivation be to help his or her employer; the motivation only needs to be partial.

Monthly Archives: January, 2013

Work For Hire – Eligible Works

One commonly misunderstood aspect of IP law is the limited scope of work for hire. The broad concept of work for hire is that one can hire another person to create something, and the hiring party will own the copyright. What many layman and attorneys either do not realize or forget, however, is that unless the work is created by an employee as part of their job (the subject of my next post on this topic), only certain types of works can ever qualify as works for hire, and the list does not include many of the types of works most businesses typically hire outside personnel to create.

Most fundamentally, work for hire is strictly a creature of copyright law. It cannot ever apply to patents. If a business wants to own an invention, it needs to get an assignment.

Even with the respect to copyright, the class of eligible works is small. The list comes right from the definition of work made for hire in the Copyright Law. Here it is.

A “work made for hire” is— (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

As one can see, the list does not include many things a business might hire someone outside to create, such as: software; advertising copy; a jingle or theme song; or a drawing or logo. Moreover, for even the permissible classes of works to qualify as works made for hire, there must be a written agreement.

When your business hires an outside source to create material for it, one should always be wary when someone proposes that the parties just execute a work for hire agreement. One must ask, can the work actually qualify as work made for hire? If not, you’ll need an assignment. Consider the type of work involved and if an assignment is required, get it.

In my next post I will discuss what it means to for a work to be prepared by an employee “within the scope of his or her employment.”

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