Work Made For Hire Agreements

Hi, welcome back to Trebor's Bite-Sized Bits! As our regular readers know, this little blog/newsletter is intended to offer some basic background on copyright law, trademark law and other related areas of interest. It is not intended to be legal advice in any way, shape or form. If you have copyright or trademark issues, always consult an attorney experienced in those areas.

I've been getting a lot of questions lately about Work Made for Hire Agreements. The usual rule is that the person who creates a work is the owner of the copyright in that work and is free to exploit it. However, under a work made for hire agreement, the person who employs the creator of a work or commissions a legally valid work made for hire is the owner of that work upon its creation.

If you are clearly a regular employee of a person or entity, get paid a regular salary, get W-2s, benefits, health care, etc. there is little doubt that if you create a work within the scope of your employment, it belongs to the boss. However, there's a wrinkle to this. Notice the words "scope of your employment". If you create a work outside the scope of your employment, on your own time using your own resources, the authorship of that work may very well vest in you, absent some agreement with your boss to the contrary. This may be true even though the idea for the work might have been inspired somehow by your workplace and relate to your employment.

In a copyright ownership litigation, if there is some question about whether you are an employee or not, a court deciding that issue will look at all the circumstances of the relationship between you and the person claiming to be your employer to determine the real nature of that relationship. Generally speaking, if a person controls the means and methods of how you do your work, you are an employee. If that persons has only the right to control or direct the result of the work without more, you are an independent contractor.

If you are clearly an independent contractor or free-lancer, whether or not a work is a work made for hire depends on two things: (1) a written agreement between the parties agreeing that the work is indeed a work for hire and (2) the type of work it is. Here is the language of the United States Copyright Act:

Works Made for Hire. -- (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. 17 U.S.C. sec 10.

It is important to note that BOTH conditions must be met for a work to be considered a work made for hire. There must be an agreement and the work must fit within one of the nine rather narrow categories outlined above. If both of these conditions are not met, the work is NOT a work for hire. Tricky business. I'd definitely consult a lawyer before entering into a work made for hire agreement.

Those in the music industry, both on the talent and production end, should note that a sound recording is generally not currently included in any of the nine categories named above. However, most recordings contracts will provide that should a sound recording not qualify as a work made for hire under the recording contract, then, alternatively, the recording artist agrees to assign the artist's rights in the sound recording to the record label. While there are some important differences between a work made for hire agreement and an assignment, I'm going to save that topic for a later date.

Since it is somewhat related conceptually, I'm also going to touch briefly here on another topic that was raised by someone in a recent communication. Suppose you commission a photographer to do some photographs or an artist to do an oil painting. Be aware that physical ownership of the photographs or the oil painting generally gives you no rights in the images that constitute the photographs or the oil painting, absent an agreement to the contrary.

In other words, gentle readers, if any of you are ever struck by the bright idea that you suddenly want to incorporate the lovely painting you purchased as a design on some china plates and sell those plates on E-Bay, put that idea right out of your adorable heads--at least absent a talk with the artist and a very carefully drafted written agreement that allows you to use her images from your oil painting.

Again the TBSB battle cry rings out: For heaven's sake, be careful out there people!

See you next time with another issue of TBSB.

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