What is a Work-for-Hire?

A lot of agreements
will contain language similar to this:

“XXX agrees that all
work performed in connection with XXX’s services and all derivatives thereof
shall constitute “works made for hire” as that term is defined under 17 U.S.C.
sec. 101 and the author and owner of the work made for hire is Y Corp.”

This can create
confusion for some people, especially for independent contractors. Does a work
for hire agreement create an employer/employee relationship? The short answer
is no. A Work made for hire determines the ownership of the work performed and
not the actual relationship of the parties.

A “work for hire” or
a “work made for hire” is a copyright term of art. The definition is spelled
out in § 101 of the Copyright code.  Works made for hire are property of the
contracting party or employer. If a company hires you as an employee, any work
you do for that company is a work for hire and is considered owned and authored
by the company. Similarly, if you are hired as an independent contractor for a
project and your contract contains a work for hire provision (like the one set
forth above), the work you do in connection with that project is deemed a work
made for hire.

The independent
contractor relationship is a bit trickier than the more straightforward
employment relationship. The definition is narrowly tailored to include: “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..
if the parties expressly agree in a written instrument that the work shall be
considered a work made for hire.”

An independent
programmer contributing to a game would probably fall under the “contribution
to a collective work” category. However, the language above means a couple of
things for the contracting party/company.  

1) The contract MUST
contain language like that stated above—i.e., it must clearly state that the
work is a work made for hire as that term is defined under 17 U.S.C. sec. 101.
This isn’t negotiable.

2) The contract
should also contain an assignment provision on the off chance that the
independent contractor’s work doesn’t fall under one of the work for hire
categories. It should also address droit morale and other author rights that
may or may not be waivable.

An assignment of
rights will look something like this:

“In any event, XXX
does hereby assign, transfer, and set over to Y Corp., its successors and
assigns, one hundred percent (100%) of XXX’s entire right, title and interest
in and to all works in connection with Z Project and all derivatives thereof (individually
and collectively herein “Works”), including without limitation any and all
so-called “moral rights” in and to Works, together with all copyright therein
throughout the world and any and all renewals and extensions of copyright
therein now known or hereafter existing under any law, rule, statute and/or
regulation now known or hereafter enacted, and including without limitation
exclusive rights to administer the Copyrights to Works. Works are the sole and
exclusive property of Y Corp free from any claim by XXX or any other person or
entity… XXX hereby waives any and all moral and author rights held by XXX in
connection to Works throughout the world to the extent that those rights are
waivable.”

For the sake of
brevity, I’ve cut that down a bit. It’s saying that XXX (the independent
contractor) is assigning/transferring all of his remaining rights in and to his
work on the project to the contracting company. It also says that he has waived
his foreign moral and author rights to the extent that they are waivable (some
are not).

Here’s a brief and
by no means all-inclusive list of things you should have in your agreement if
you are the contracting party (i.e.,
the company):

1) The words “work
for hire” or “work made for hire” and reference to sec. 101 of the Copyright
Act;

2) An assignment provision
assigning/transferring all rights in and to the desired work, including any and
all rights that may arise at some future time;

3) A waiver of any
and all moral and author’s rights to the extent that they are waivable (this is
important. Failing to include “to the extent that they are waivable” may cause
the contract to be voided in some countries);

4) A specific
description of the works deemed as “works made for hire”.

Here are some things
you want if you are an independent
contractor
:

1) A statement of
any work that is being contributed to the project that should NOT be deemed a
work for hire—for instance, if you’re bringing in specific know-how or a
program you previously wrote, that needs to be distinguished from the work you
are doing as a work made for hire. You want to include an addendum setting
forth everything you are bringing in to the project;

2) A retention of
rights for those things you are bringing to the table;

3) A clear statement
that any and all work performed outside the scope of the contracting party’s
particular project by the independent contractor is the independent contractor’s
sole and exclusive property (unless it too is subject to a work-for-hire
agreement, of course) and/or is not subject to the work made for hire
agreement. If you already know you are going to be working on something else,
you may want to consider spelling that out as well.

4) If you are
bringing in propriety know-how or your own trade secrets, you will definitely
want a NDA protecting your interests and prohibiting the misappropriation of
those trade secrets by the company. Limit the use of those trade secrets and
processes to the particular project in question, and take steps to retain the
confidentiality of those trade secrets.

 

Happy Easter!