By Andrea Anapolsky

The “work made for hire” doctrine is a major exception to the fundamental principle that copyright ownership vests in the person who created the work. The significance of this doctrine is that, as the copyright owner of the work, an employer will own all exclusive rights to the work and may freely commercialize the property to its fullest extent. This article examines the provisions and case law underlying the “work made for hire” doctrine and provides some practical advice for employers when hiring an independent contractor or an employee who may create an original work during the course of the parties’ relationship.

The U.S. Supreme Court first recognized the “work for hire” doctrine as early as 1903, when it held that copyright to certain advertisements created by an employee during the course of his employment belonged to his employer. (Bleistein v. Donaldson Lithography Co., 188 U.S. 239 (1903)). The courts did not truly examine the meaning of “ownership” of a work “for hire” until the Copyright Act codified this doctrine, which defines the word “author” as including “an employer in the case of works made for hire” (17 U.S.C. �� 26). Accordingly, an employer may claim to be the “author” of a work under one of two prongs: first, if the work is prepared by an employee within the scope of the employee’s employment; and second, if an independent contractor and employer agree in writing that the work created by the independent contractor shall be considered a “work made for hire”.

When determining who owns a written work, the first question to ask is whether the creator of the work falls under the employee prong or the independent contractor prong. Generally, if the creator of the work is an employee, it is presumed that the employer owns the copyright. Any unease under this prong rests on whether the creator was an actual employee of the employer. The U.S. Supreme Court resolved much of the tension underlying this issue in 1989, in Community for Creative Non-Violence (“CCNV”) v. Reid, which involved a dispute over ownership of a sculpture commissioned by a nonprofit organization. (CCNV, 490 U.S. 730 (1989)) The Court held that the artist was an independent contractor and not an employee since the sculptural works did not fall within one of the nine specific categories of “commissioned” works listed in the Copyright Act, and no written agreement between the parties existed. In reaching this conclusion, the Court examined the common law agency principles, which include: (1) the hiring party’s right to control the manner and means of creation, (2) who provided the materials and tools, (3) the skill required by the hired person, (4) the location of the work, (5) the length of the relationship between the parties, (6) how the hired party was paid, (7) who hired and paid assistants, (8) whether the work is part of the regular business of the hired party and (9) the tax treatment of the hired party. CCNV has been viewed as a major legal victory for independent contractors in that creators who produce work at the request and expense of a third party do not necessarily give up their copyrights in the process. For hiring parties, it stands as a warning that the hiring party does not automatically own the copyright just because they paid for the commissioned work.

If the creator of the work is not an employee, then three requirements of the independent contractor prong must be satisfied in order for the hiring party to own the original work. The requirements are: (1) prior to the commencement of the work, the parties must agree in writing that the work shall be considered a “work for hire”; (2) the work must have been “specially ordered” or “commissioned” by the employer; and (3) the work must fall within at least one of nine statutorily mandated categories of commissioned works listed in the Copyright Act. The nine categories include: using the work 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. (17 U.S.C. �� 101). An original must fall into one of these nine categories; otherwise a “work made for hire” provision in an agreement does not always result in a work becoming “for hire.” A novel, for example, can never be a work made for hire because it does not fall into one of these nine categories.

To avoid problems concerning copyright ownership with independent contractors, the hiring party should always reduce its intentions to writing, and include a provision in the written agreement which contains a clause stating that the work created by the independent contractor is considered a “work made for hire.” The agreement should also contain a “back up” clause which states that in the event the work does not qualify as a “work made for hire”, the employer may obtain the exclusive rights to a copyrightable work created by an independent contractor through an assignment.

Andrea Anapolsky is an associate in Weintraub Genshlea Chediak Tobin & Tobin’s Business, Securities and Commercial Transactions section. She represents both public and private companies.