Work Made for Hire | Practical Law

Work Made for Hire | Practical Law

A discussion of the copyright work made for hire doctrine under the 1976 Copyright Act and related considerations for drafting employee and independent contractor agreements involving copyright-protected work product.

Work Made for Hire

Practical Law Legal Update 3-566-2125 (Approx. 5 pages)

Work Made for Hire

by Practical Law Intellectual Property & Technology
Published on 29 Apr 2014 • USA (National/Federal)
A discussion of the copyright work made for hire doctrine under the 1976 Copyright Act and related considerations for drafting employee and independent contractor agreements involving copyright-protected work product.
The initial owner of the copyright in a protected work of authorship is generally the work's author. However, work made for hire is a key exception. Under the 1976 Copyright Act, it applies when:
  • An employee prepares a work within the scope of his employment.
  • An individual or other entity specially orders or commissions a work from an independent contractor if certain statutory conditions are met.
(17 U.S.C. § 101.)
In these cases, the employer or commissioning entity initially owns the copyright unless the parties agree differently in a signed writing. A key benefit of work made for hire treatment is that the statutory provisions allowing an author to terminate copyright assignment and license grants after 35 years do not apply. For more on statutory rights to terminate copyright grants, see Article, Expert Q&A on Copyright Statutory Termination of Transfers and Licenses.

Works Created by Employees

For works created by employees, a key issue is how to determine if the individual is an "employee" and the work was created in the "scope of employment." Courts apply general principles of agency law to determine whether an work is created by an employee (Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730 (1989)). Similarly, to determine whether the work was created within employee's scope of employment, courts generally apply Section 228 of the Restatement (Second) of Agency's three-prong test, which examines whether the work:
  • Is of the kind the employee is employed to perform.
  • Occurs substantially within the authorized time and space limits.
  • Is performed at least in part to serve the employer.
(See U.S. Auto Parts Network v. Parts Geek, LLC, 692 F.3d 1009, 1015 (9th Cir. 2012).)

Works Created by Independent Contractors

Work made for hire applies to a narrower subset of works created by independent contractors. Under the 1976 Copyright Act, for a commissioned work to qualify as a work made for hire:
  • The work must be specially ordered or commissioned for use as:
    • a contribution to a collective work;
    • a part of a motion picture or other audiovisual work;
    • a translation;
    • a supplementary work (for example, a foreword, afterword, pictorial illustration, map, chart, table, editorial note, musical arrangement, answer material for tests, bibliography, appendix or index);
    • a compilation;
    • an instructional text (a literary, pictorial, or graphic work prepared for publication use in systematic instructional activities);
    • A test;
    • Answer material for a test; or
    • An atlas.
  • The parties must agree in a signed written instrument that the work is considered a work made for hire.

Practical Considerations

Written Work Made for Hire Agreements

To secure work made for hire for eligible works created by independent contractors, a written agreement signed by both parties expressly stating that work shall be considered a work made for hire is required (but not sufficient).
Although a written work for hire agreement is not required for eligible works created by an employee in the scope of his employment, it is a good idea to have one to help minimize the risk that an employee may later attempt claim ownership of a work.

Back-up Assignments

In each case, a work for hire clause should be accompanied by an assignment clause assigning all rights in the work to the employer or commissioning party in the event copyright ownership through work made for hire is challenged. However, where copyright ownership is transferred through an assignment to the employer or commissioning party, the author (or his statutory heirs) may have statutory termination rights to terminate the assignment after 35 years.
In addition, work made for hire only covers any copyright in an eligible work. Any other intellectual property rights that may arise from the employee or contractor's work product (for example, patents, trademarks and trade secrets) must be assigned in writing to the employer or commissioning party.
The assignment clause should be drafted as a present grant to all rights in the work work product developed at a future time rather than a promise to assign at a future time, allowing the employer or commissioning party to:
  • Secure an actual conveyance of the employee or independent contractor's rights.
  • Minimize the risk of a successful challenge to the employer or commissioning party's rights at a later date.
(See Bd. of Trust. of Leland Stanford Junior Univ. v. Roche Sys. Inc., 131 S. Ct. 2188 (2011).)

Sample Agreements and Clauses

For a copyright work made for hire and IP assignment clause for use in employee contracts, see:
For a copyright work made for hire and IP assignment clauses for use in an independent contractor contract, see Standard Documents: