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(Copyright) Works Made for Hire

September 1, 2000

Many companies mistakenly believe that when they hire a freelancer or
consultant to perform some work (e.g., design a new website), the
company owns the rights in the work because it paid for it. This,
however, is generally not the case. In fact, the copyright doctrine of
“work-for-hire” putting ownership of the copyright in the employer, not
the creator, is a very narrow doctrine. In most instances, the work will
not be owned by the contracting organization unless the transfer of
ownership is clearly expressed in a writing between the parties.

U.S. copyright law defines a “work made for hire” as:

(1) a work prepared by an employee within the scope of his or
her employment; or

(2) a work specially ordered or commission for use (i) as a contribution to a collective work, (ii) as a part of a
motion picture or other audiovisual work, (iii) as a translation, (iv)
as a supplementary work, (v) as a compilation, (vi) as an instructional
text, (vii) as a test, (viii) as answer material for a test, or (ix) 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….

Absent a written agreement, copyright will vest in someone other than
the author of the work only when the work was prepared by an employee
within the scope of his or her employment. Sometimes it is questionable
whether a hired party is an employee or an independent contractor. The
factors generally considered to make this determination are:

The hiring party’s right to control the “manner and means” in which the work is performed,

The hired party’s discretion over the time to complete the work, and determining which hours to work,

The hired party’s ability to hire assistants,

Whether the hired party receives employee benefits,
Which party owns the tools needed to perform the work,

The method of payment,

The duration of the parties’ relationship, and

The amount of skill required to do the work.

If the hired party is an employee, then the employer will own the
copyright, provided the relevant work was performed within the scope of
employment and provided there is no written agreement between the
parties to the contrary. Alternatively, if the hired party is an
independent contractor, then, absent (i) a written agreement that the
work is a work for hire and it fits into one of the nine enumerated
categories or (ii) a written assignment of the copyright to the
contracting organization, then the hired party will own the copyright.

When hiring independent contractors to perform services resulting in
copyrightable material, consider the following practical tips:

Always discuss at the outset who is to own what rights.

Set forth the parties’ understandings and intentions in a writing, signed by
both parties; if the contracting organization is to own the copyright in
any of the work, it is an absolute requirement.

If the parties intend for the contracting organization to own the copyright in the work
being created, the agreement should make clear that any work created
will be considered “work made for hire”, but that the independent
contractor also assigns all rights to the contracting organization in
any of the work that does not qualify as a work made for hire.

For further information contact Ellen Beardsley 203-498-4582, ebeardsley@wiggin.com