Work Made for Hire and Intellectual Property

The Supreme Court identified several factors to consider in determining whether a relationship is an employment relationship, including:

  • The “skill required
  • The source of the instrumentalities and tools
  • The location of the work
  • 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 when and how long to work
  • The method of payment
  • The hired party’s role in hiring and paying assistants
  • Whether the work is part of the regular business of the hiring party
  • Whether the hiring party is in business; the provision of employee benefits and
  • The tax treatment of the hired party.”

Generally, the more the engagement looks like a classic employment relationship, the more likely the WMHD will have application, but, even so, employers generally tend to include  a work made for hire provision in their employment contracts and employment manuals, as a hedge against a finding down the road by a tribunal that the employee should be considered an independent contractor. In such a situation.

However, not only would the employment contract have to contain an express Work Made for Hire provision, but the employer would also have to show that the engagement fits into one of the nine work made for hire categories outlined above.

The Take Away:

The WMHD affords some protection under Federal law for employers in connection with the creation of copyrightable works by reposing in them the rights of authorship if certain conditions are met. But the WMHD has its limitations and should not be relied upon by employers as the exclusive basis for protecting their intellectual property assets.

Rather, more comprehensive language may need to be included in hiring contracts mandating a broad transfer of rights from the hired party to the employer.

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Protecting Your Intellectual Property