Under United States Copyright law, the general rule is that the person who actually creates a copyrightable work is the legal author or creator and, therefore, owner of the copyright in that work. The doctrine of work for hire (often shortened to the acronym WFH) is an exception to that general assumption. If a work is “made for hire,” it is the party that employs or properly engages the author(s) or creator(s) that is considered the legal author from the point of creation and, therefore, the owner of that copyrightable original work. In fact, if a work is made for hire, the employer or other person for whom the work was prepared is assumed to be the owner of the copyright unless both parties involved have signed a written agreement to the contrary.
To be considered a work for hire, the work must fall squarely within one of the exceptions outlined in the Copyright Act. There are two work for hire scenarios recognized under the Copyright Act:
a) a work prepared by an employee within the scope of his or her employment;
b) 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. (17 U.S.C. § 101)
The first scenario in (a) above is the more straightforward of the two, and applies when the work is created by an employee, not an independent contractor. Moreover, as is clear from the wording of the Act itself, preparation of the work must be within the course and scope of that person’s employment. For example, if an architect is employed by an architecture firm to create drawings and plans for office buildings, the employer will be the owner of the office building drawings created by that architect because that is what she is employed to do. However, if that same architect writes a children’s book in her spare time, that work would likely not be considered a work for hire because it is outside of the course and scope of the employment. After all, she is employed as an architect, not a children’s book author. The U.S. Supreme Court has determined that a work created by an independent contractor cannot be a work for hire under the first scenario in (a) above, and will only be considered a WFH if it meets the requirements of part (b) above.
The second work for hire scenario recognized under the Copyright Act, in (b) above, is where a work is created by an independent contractor, not an employee. In this scenario, for the original creation to be considered a work made for hire, one must examine the situation in three parts. First, the work must fall within one of the following nine defined categories of works: (1) a contribution to a collective work, (2) a part of a motion picture or other audiovisual work, (3) a translation, (4) a supplementary work, (5) a compilation, (6) an instructional text, (7) a test, (8) answer material for a test, or (9) an atlas. Second, the work must have been specially ordered or commissioned by the claimed owner. And, third, and very importantly, there must be a written agreement signed by the parties before the work is created, specifying that the work is a work made for hire by use of the phrase “work for hire” or “work made for hire.”
If all of the above criteria are not met under the independent contractor branch of work for hire, a work will not be considered a work for hire and all rights in the work will remain with the individual author(s) or creator(s), and not the hiring party.
Furthermore, as alluded to above, retroactive work for hire is not permitted. Thus, if the parties in an independent contractor relationship intend a work to be “for hire,” they must enter into a written work for hire agreement before the work begins. This is often something that is not considered, and the only way to remedy it is to have the author or creator assign the work to the hiring person/entity after the fact – something that the author or creator may not be willing to do.
Typically, a written work for hire agreement will identify the parties, including identification of the hiring party and the party creating the work, state that the work is specially commissioned by the hiring party and will be created specifically for that party, identify which of the nine statutory categories of works the anticipated creation fits within, and will include other common contractual provisions, such as the compensation to be paid to the contractor for creating and delivering the work to the hiring party. Additionally, a good work for hire agreement will contain some “back up” provisions to take effect if, for some reason, a court later determines that the work is not properly categorized as a work for hire. For instance, to account for this possibility, a work for hire agreement should, in addition to the language noted above, include language providing that if it is later determined that the engagement was not a proper work for hire relationship, the creator agrees to assign the copyright to the created work to the hiring party and, further, if that assignment is later determined to be ineffectual, the creator agrees to provide the hiring party an exclusive, worldwide, royalty-free license in perpetuity to use that work.
The above only scratches the surface of the work for hire doctrine. Work for hire law is complex, and requires consideration of labor and employment law, agency law principles, intellectual property law, including copyright law, and contract law. If you are an employer or other hiring party who engages others to create original works, or an employee or independent contractor who creates artistic works for someone else, you should familiarize yourself with the nuances of the work for hire doctrine.