The Conundrum of Works for Hire.
You are a small business. You’ve hired a web developer to create your website, a marketing expert to author critical passages about your products and services, and you’ve hired a graphics person to design your business cards and signage. You paid everyone, took delivery of and launched your beautiful new website. The problem is, you don’t have any paper that confirms your developer, marketing guru, and graphic designer transferred the rights to the work to you. “But wait,” you protest, “they cashed my checks and I have possession of the files. Doesn’t that mean I own it?”
It’s natural to assume that if you engaged a service provider to create something for you, and you paid for it, it’s yours. But that’s not what the law says, at least with respect to works that are eligible for copyright protection. In fact, even if you have a writing that says the work shall be considered a “work made for hire,” that might not be sufficient to ensure that the work belongs to you.
What Does Copyright Protect?
Copyright protects original, creative works that are set out in a “tangible medium,” meaning they are written or recorded in some fashion. When you hire someone to create content for you, whether its text, graphics, or even computer software code, those works are generally considered eligible for copyright protection as long as they are at least minimally creative, and original.
Creative works that are eligible for copyright protection belong, in the first instance, to the creator of work unless either a) the creator assign the work to someone else, or b) the work fits the statutory definition of a “work made for hire.” Works that do not fall into either category remain the property of the person or persons who created them.
What is a Work Made for Hire?
Under our hypothetical above, assuming our small business owner does not have an assignment in writing, then she will want to understand if the works are “works made for hire” as defined in 17 U.S.C. § 201(a).
The Work For Hire “Test”
Courts have interpreted the statute in various ways, and the test can vary depending upon the age of the work and which version of the copyright law applies. Generally, however, a work will be considered a “work made for hire” owned by the entity that paid for it or commissioned if:
- The work was created by an employee with the scope of his or her employment; or
- The work was specially commissioned in a written agreement and meets specifically described in the statute.
Specifically, a commissioned work can qualify as a work for hire if it is:
- A contribution to a collective work;
- A part of a motion picture or other audiovisual work
- A translation
- A supplementary work (such as a forward, afterward, illustration, appendix etc for a text)
- A compilation
- An instructional text
- A test
- Answer material for a test; or
- An atlas
Even a quick read of the “accepted” items as commissioned works eligible for “work made for hire” categorization suggest that relatively few works you might have someone create on your behalf qualify as “works made for hire,” and might not cover the website design, content creation or the graphic design in our hypothetical above.
So How Do I Obtain Title To These Works?
If the work does not qualify statutorily as a ‘work for hire,’ then you must get an express assignment of the work in writing. This can be accomplished either in the contract in which you engage the contributor or developer, or you can obtain an express assignment in writing separately. Often, you will see clauses in contracts where the parties agree that the work is a “work made for hire,” belonging to the party that purchased the services. Importantly, simply stating in the contract that the work is a “work for hire,” does not necessarily render the work a work made for hire. If the work does not meet the criteria above, the entity that acquires the work is vulnerable to a claim that the work is still owned by the creator. For this reason, you will often see contracts that no only agree that the work is a “work made for hire,” but also state that, if for some reason the work is not a ‘work made for hire under applicable law, then the creator transfers and assigns the work to the purchaser under the agreement.
If your contract does not include any of this “work made for hire” and/or assignment language, and it was not created by an actual employee within the scope of his/her employment, you can still “fix” the situation by getting an assignment after the fact.
Importantly, there can be long-term implications for any work that is “assigned” as opposed to being a work for hire statutorily. Therefore, getting legal analysis of the specific language that might be best for the work at issue in your case can be important. Regardless, making sure that you have some claim to ownership via a transfer or “work made for hire” claim can be critical to ensuring you own and can enforce rights in the works you are engaging others to create.