Typically, copyrights and patent rights belong to the creating party. Work for hire refers to a limited set of circumstances under which those rights vest in a third party who has employed or specifically contracted with the creator or inventor, either for the specific work or by employing the person specifically for the purpose of the invention.
Employers often include work for hire provisions in employment documents and independent contracting agreements, but those boilerplate provisions are not necessarily sufficient. Work for hire operates somewhat differently for copyrights than for patent rights and involves different requirements for employees versus independent contractors. Further, state law impacts the process required to protect the employer’s intellectual property rights in some cases.
Ensuring that the employer receives the rights that the parties intended to contract for requires a thorough knowledge of the relevant laws, careful construction of agreements and, in some cases, written disclosures.
Work for Hire in Employment Relationships
Work for hire is more straightforward in an employment relationship than an independent contractor situation. Generally speaking, work for hire is inherent in an employment relationship, and works created within the scope of employment may be deemed work for hire. However, the “scope of employment” element can complicate the analysis as to which party is vested with copyrights or patent rights.
In the patent scenario, for example, work of an employee is deemed work for hire by virtue of that relationship only if the employee has been hired for the purpose of invention. Thus, while the employer’s lead software developer’s work is typically deemed work for hire, an employee on the assembly line who creates a device or process that increases productivity may personally hold the patent rights to that device or process.
Work for Hire and Independent Contractors
Work for hire in the independent contracting relationship involves even more complex analysis and generally does not arise automatically as the result of the contractual relationship. When a company relies on independent contractors for creative work, it is essential that both contractual provisions and the actual nature of the contractual relationship are carefully managed to protect intellectual property rights.
The Nature of the Work
While all works created within the scope of employment may be deemed work for hire in an employer/employee relationship, the ability to enter into an enforceable work for hire contract is more limited. U.S. Copyright law sets forth specific types of work which may be contractually deemed work for hire, including work which is:
- Created as a contribution to a collective work
- Created as a part of a motion picture or other audiovisual work
- A translation
- A supplementary work
- A compilation
- An instructional text
- A test or answer material for a test, or
- An atlas
Not only is the type of work which may be deemed work for hire limited, but some of these classifications are open to interpretation, and thus more extensive legal knowledge is required in order to make an assessment as to the likelihood that a work for hire provision in an independent contracting agreement will be effective and how to construct the language of that agreement in order to maximize effectiveness.
Work for hire provides an employer or organization contracting for creative work greater protection than an assignment, in part because rights vest directly in the employer and are not subject to revocation. However, given the gray areas and limitations that may impact the determination as to whether a creation or invention truly was work for hire, it is often advisable for the organization to back up the work for hire arrangement with a pre-invention assignment agreement. Such an agreement is also useful in situations in which the nature of the work or the nature of the relationship precludes work for hire.
A pre-invention assignment agreement operates to transfer the rights of the employee or contracted creator to the organization that paid for the creation. However, this route triggers disclosure obligations in several states, and failure to comply with those requirements may result in the assignment being deemed invalid.
We Are Ready to Protect Your Intellectual Property Rights
As an employer or contracting organization that relies on creative efforts and inventions, your profitability depends on getting what you have paid for. Work for hire and pre-invention assignments are nuanced and subject to various restrictions that many people–even experienced managers–do not understand. To ensure that your work for hire provisions are effective and that you have an effective backup provision where necessary, work with an experienced intellectual property lawyer at KPPB LAW.