Ensuring Your Company Owns the IP Created for It

When a worker creates copyrightable material for a company, the Copyright Act specifically describes the circumstances under which the work can be considered a “work-for-hire” (that is, the IP is owned by the company commissioning the work and not by the worker who made it).

The first circumstance under the Copyright Act that results in a work for hire is if the worker is an employee of the company commissioning the work AND the work is completed in the scope of the employment; the laws of agency and employment, and not merely the company’s own definition, will be used in determining whether the worker is an employee or an independent contractor (I’ve previously discussed before the legal standards for distinguishing between employees and independent contractors).

If the worker is an independent contractor instead, the work must fall into one of several categories:

– as a contribution to a collective work
– as part of a motion picture or audiovisual work
– as a translation
– as a supplementary work (work prepared for a publication as a secondary adjunct to work by another author for the purpose of illustrating, explaining, commenting upon, introducing, or concluding — e.g., forwards, afterwords, illustrations, maps, charts, tables, etc.)
– as a compliation
– as an instructional text
– as a test
– as answer material for a test
– as an atlas.

*AND* the company and the independent contractor must agree in writing that the work is work-for-hire.

If you and your worker have met the above qualifications, then the work is considered work-for-hire and no assignment of the copyright is necessary (although assignment is necessary for trademarks and patentable inventions, and agreements with workers typically also include copyright in the event the work is not deemed work for hire). However, if the work does not fall under one of the qualifications for work-for-hire, it must be the subject of an assignment agreement or clause.