Did you know that even if you hire an independent contractor to undertake a project, provide that independent contractor the idea for the project, direct that person’s work on the project, pay that contractor for the project, and even cause the hired person to sign a piece of paper which states that the work is created for hire for your benefit, it does not mean that you necessarily own the contractor’s resulting work product. Counter-intuitive perhaps, but true.Whether a work may be said to be “for hire” requires a two-step analysis. The first step is to determine whether the work was created by an employee acting within the scope of his employment. If so, the work is owned by the employer and you need not proceed to the second step.
Care must be taken, however. The proper test for determining whether a person is an employee is the one commonly used to ascertain whether one person is the agent of another. Specifically, consideration is given to such factors as the duration of the relationship between the parties, whether the hiring party has the right to assign additional projects to the hired party, the extent of the hired party’s discretion over his or her hours or work, the method of payment to the hired party, the hired party’s role in hiring and paying assistants, whether the work is the regular business of the hiring party, whether the hiring party is inbusiness, whether employee benefits are provided to the hired party and the tax treatment of the hired party. None of these factors is dispositive in itself; all must be considered.
If this analysis leads to the conclusion that the hired party/creator is not an employee of the hiring party, then the second step of the analysis must be undertaken in order to determine if the work was created for hire. Two factors must both be present: there must be a writing signed in advance of creation which states that the work to be created will be a work made for hire, and the work must fit within one of the nine specific categories set forth in the Copyright Act (which includes, among other things, works created as part of a motion picture or other audiovisual work, a contribution to a collective work, and a translation).
If either is not satisfied, i.e., if a signed writing is not obtained in advance of creation, or if a signed writing is obtained but the work does not fit within one of the enumerated areas, the work will not be a work made for hire. This is true even if the parties contractually state that the work to be created will be a work for hire, and treat it as such.
In sum, if you want to hire an independent contractor to create a work which you want to own, and the work does not fit within one of the categories set forth in the Copyright Law, all you can do is contractually provide that the author assigns all of his or her interest in the work to you. You should also provide that the author will execute any documents required to give effect to this assignment. You are well advised to provide for this in the alternative even if you believe the work will be made for hire.
Randy Friedberg is of Counsel with White and Williams in New York City and has over 20 years of experience in the protection, licensing and enforcement of intellectual property rights.
Randy Friedberg
Randy Friedberg has over 25 years experience in counseling clients, with particular focus on the protection, licensing and enforcement of intellectual property rights. His practice encompasses trademark and copyright law, unfair competition, trade secrets, advertising matters, internet and cyber matters, rights of privacy and publicity, and entertainment law, as well as general corporate and litigation matters. Randy represents clients in a variety of industries for corporate work and litigation before a wide range of state and federal courts, in the United States Patent and Trademark Office and before the Trademark Trial and Appeal Board.