January 11, 2013
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.”