Copyrights, Independent Contractors & the Work Made for Hire Doctrine

In a previous post, I explained the work made for hire doctrine of the Copyright Act as it applies to employees.  In this post, I’ll generally explain the most troubling, confusing subject — how the doctrine applies to independent contractors.

As I’ve said, I hate this convoluted, confusing doctrine.  This is the type of law that keeps lawyers in business.  This complex concept is difficult to understand and you must refer to the case law for guidance.  What is actually covered by this section keeps shifting as judges decide new cases.

Basically, if you want the work made for hire doctrine to apply to the work that you commission to have created, you must have a written agreement with the independent contractor and it must be a specific type of work recognized by the Copyright Act.

And the agreement should still have a default assignment clause just in case the doctrine really doesn’t apply so that the copyrights are assigned to you.

Under the Copyright Act, ownership rights to copyrights automatically vest in the author of the work — not the person or entity who paid for the creation of the work— unless an exception like the work made for hire doctrine applies.

If the work made for hire doctrine applies, then the intellectual property rights shift to another entity or person and they are technically considered the “author.”

Section 101 of the Copyright Act defines a “work made for hire””

A “work made for hire” is —

(1) a work prepared by an employee within the scope of his or her employment; or

(2) 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. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities. (emphasis added)

If the author of a specially commissioned work is not an employee but an independent contractor under common agency law, then section 2 of the work made for hire doctrine may apply.

Section 2 may only apply if 1) the parties expressly agree in writing that the work is a work made for hire; and 2) the work fits one of the nine categories enumerated by the statute.

Determining whether a work fits in a statutory category is confusing.

Careful lawyers never rely on the work made for hire doctrine alone.  They always put in a just-in-case clause in the written agreement with an independent contractor that assigns the copyrights to the entity who pays.

The bottom line is that you need a carefully worded contract if you want to own the copyrights to the work you pay a non-employee (like a website or logo designer) to create.