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San Diego Businesses: What is the Work-Made-for-Hire Doctrine?
The doctrine of “work-made-for-hire” relates to copyrights. In general, the legal rights that exist by virtue of copyright law lodge and vest in the author or authors of any creative work and those rights vest at the moment of creation. See Copyright Act, 17 U.S.C. § 201(a). However, the “work-made-for-hire” doctrine creates a couple of circumstances in which the copyrights automatically lodge and vest with the EMPLOYER or the person/entity that hired the artist/creator to create the work in question. The Copyright Act is yet another reason to be careful distinguishing between an “employee” and an “independent contractor.” Here is a quick primer on the work-made-for-hire doctrine.
Copyrights in San Diego: Work-Made-for-Hire Copyright Act Definitions
The federal Copyright Act, 17 U.S.C. § 101 defines a “work made for hire” in two ways. First, a “work made for hire” is any “… work prepared by an employee within the scope of his or her employment.” That definition is not as easy as it sounds since tricky legal questions exist about what is an “employee” and what is “within the scope” of employment.
Second, § 101 defines a “work made for hire” as
“… 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.”
Again, this definition is not as easy as it sounds largely because the list is not exhaustive. Three requirements are needed: A creative work must be “specifically ordered or commissioned”; there must be a written agreement signed by both parties before the work begins; and the creative work must fit one of the nine enumerated categories. If an independent contractor creates a work, even under a work-for-hire contract, but the work is not in one of the nine categories, the copyright vests with the independent contractor. And, one of the most important categories missing from the list is “literary work” like a novel or musical or software program.
Copyrights in San Diego: California Law With Respect to Work-Made-for-Hire
Be aware that under California Labor Code, §3351.5(c), for purposes of workers’ compensation, an “employee” is defined as
“[a]ny person while engaged by contract for the creation of a specially ordered or commissioned work of authorship in which the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire, as defined in Section 101 of Title 17 of the United States Code, and the ordering or commissioning party obtains ownership of all the rights comprised in the copyright in the work.”
This provision probably only matters if your San Diego business does not already have worker’s compensation insurance. If your business does not have employees and, therefore, does not have workers’ compensation insurance coverage, it may be better to avoid a work-made-for-hire agreement and simply have the artist/creator sign an assignment of his/her copyright to your business. An assignment is an alternative method of obtaining copyright ownership.
Copyrights in San Diego: Ensuring Your Company Owns Work-Made-for-Hire
The best way to avoid pitfalls with respect to work-made-for-hire is to have proper, sufficient, and solid contracts and assignments of copyrights and other intellectual property and, of course, consult beforehand with a good San Diego corporate attorney.
Contact San Diego Corporate Law Today
If you would like more information, contact attorney Michael Leonard, Esq., of San Diego Corporate Law. Mr. Leonard can be reached at (858) 483-9200 or via email.
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