You may have encountered the language “work for hire” in a contract before. If you are a provider of services such as website design, graphic design, photography, branding, etc., then you surely have encountered this language. It is very common find a mention of “work for hire” in types of agreements where you are hiring someone, not an employee, to create something specifically for you. If you are commissioned or hired to create something and you see the words “work for hire” in a contract, you need to know what that means because you could be giving away rights that you did not intend. And if you are the party commissioning certain services, you need to know how to use “work for hire” to your advantage.
An exception to copyright law
Copyright law protects works that are created from the time they are created in a fixed form. Books, sound recordings, software programs, and photographs are just a few items that are protected with copyrights. Typically, the author/creator is the copyright owner upon completion of the work. A huge exception to this rule is – “works made for hire.” If something is created under a work for hire agreement, the copyright and all rights to the work are the property of the party who commissioned the work.
Work for hire is a very misunderstood and often misused term, even for attorneys. It is defined in the US Copyright Act (title 17 US Code) as:
a. a work prepared by an employee within the scope of his or her employment
b. a work specially ordered or commissioned for use
1. as a contribution to a collective work,
2. as a part of a motion picture or other audiovisual work,
3. as a translation,
4. as a supplementary work,
5. as a compilation,
6. as an instructional text,
7. as a test,
8. as answer material for a test, or
9. 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.
Part (a) is not going to be discussed here as much, as it is more straightforward. If an employee creates something pursuant to their employment, it is typically considered a work for hire.
The most common works for hire that I see deal with works created by independent contractors, website designers, graphic artists, etc. Meaning, companies or individuals who are commissioned to create something specific. Thus, a work for hire must fall under one of these specific items.
But what does it mean if something is categorized as a work for hire?
If something is created under a work for hire agreement, the copyright and all rights to the work are the property of the party who commissioned the work. But, oftentimes, people either think they have a work for hire and they do not, or they are simply unaware of the concept of works for hire and do not own the property created.
First and foremost, a work for hire needs to be agreed-to in a written agreement prior to the commencement of the work. This agreement needs to specifically state that it is a work for hire in order to avoid any doubt. This first hurdle is oftentimes not satisfied. I have seen countless agreements, especially website design agreements and logo creation contracts, where there is no mention of work for hire, or other mention regarding ownership (or worse yet, no contract at all). This can create a lot of issues later on.
Second, even if an agreement is called a work for hire, it still needs to fall under one of the nine (9) items above. It is important to look at these items prior to agreeing to a work for hire as many people, attorneys included, incorrectly assume that anything can be classified as a work for hire. That is not the case. The nine items are not entirely inclusive. Specifically, there is a question over websites and whether or not they can be classified as works for hire.
It is usually considered that websites fall under either “a contribution to a larger work” or “a compilation.” There is still some question as to this, but I feel pretty confident that a website would be considered a work for hire if it were to be litigated (assuming a proper work fore hire agreement was in place), especially if some of the content is provided to the website designer by the party commissioning the website. So even if you have a question whether something would be considered a work for hire, it is still advisable for the party commissioning the work to include the work for hire language in the agreement in most cases.
It is always advisable to consult with an attorney when signing an agreement like this, whether you are the party commissioning the work or creating the work. Failure to understand work for hire could result in the ownership of the copyrights not being as desired by either party.
How can I protect myself and my company?
It is always a good idea to include a catch-all in case the work does not actually constitute a work for hire. Therefore I typically include an assignment of the copyright of all of the works created under the agreement to the company. This guarantees that even if the work is ultimately not considered a work for hire, the company still has the rights, hopefully exclusive, to use the work in perpetuity.
So, do not just assume that the work you commissioned is a work for hire or that you own the copyright. And if you previously entered into a contract that you thought was a work for hire but it was not, be aware that the rights may not have been transferred as intended. Please contact us if you have any questions about your rights under a previous agreement, or you are looking to enter into a new agreement for something desired to be a work for hire. Failure to understand these concepts can result in many unintended, long-term consequences.
Do you have concerns about a “work for hire” contract? Consult with an Intellectual Property Attorney today to discuss all the issues.