How to Avoid Losing Your Rights to the “Work for Hire Doctrine”

Lauren Rucinski, Kean Miller LLP

You have just received a commission, congratulations! The client forwards you a contract to sign that states that the work is a “work made for hire.” What does “work made for hire” mean? And, if you sign it, will you lose all of the rights to your work? The answer is a little trickier than you may think.

Under the default rule, copyright vests in the person that created the work: you, the artist. However, the “work for hire doctrine” changes this default rule, giving the client full ownership of your work and leaving you with no copyright from the get-go.1 This means that the client can do whatever it wants with your work: publish it, adapt it, or even resell it to others. You may not even have non-commercial control over the work, for example, to show it in your portfolio (but it is common practice to allow that type of use and may even be covered under the “fair use” defense). Although this seems like a harsh consequence, the work for hire doctrine is quite limited in its reach.

There are two ways (or modes) that the work for hire doctrine may apply: (1) if the artist is an employee of the client or (2) if the artist is a contractor or freelancer, but the work meets one of nine set situations and the parties agree in writing. The first mode seems simple enough: is the artist an employee of the client. However, the line between an employee and a contractor is murky at best. The law has laid out certain factors that help define the difference between a contractor and an employee. Some factors that lean more toward the artist being an employee, and, therefore giving the copyright in the work to the client include:

· the client supplied the artist’s tools,

· the artist performed his/her work at the client’s workplace,

· the client controlled when or how long the artist worked,

· the artist was paid an hourly rage (rather than a flat fee),

· the client had a role in hiring and paying the artist’s assistants,

· the work is part of the client’s regular business, and

· the client treated the artist as an employee for tax or benefits purposes.

No one of these factors will automatically kick a commissioned work into the work for hire category, but courts will look at them as a whole and make a determination.

The second way the work for hire doctrine can apply to a commissioned work is more straightforward. The work must be specially ordered or commissioned and fall into one of the following nine categories:

1. Contribution to a collective work

2. Part of a motion picture or other audiovisual work

3. Translation

4. Supplementary work

5. Compilation

6. Instructional text

7. Test

8. Answer material for a test

9. Atlas

If you aren’t making one of these nine, your work will not fall under the work for hire doctrine under the second mode. If you are making one of the nine types of works, you and the client must agree in writing that the work is considered a work made for hire. So even if your work falls into one of the nine categories, if there is no agreement signed stating that the work is a work made for hire, then it is not a work made for hire.

So your work is not considered a work made for hire: you may still want to transfer some or all of the rights in your work to your client. An assignment of the copyright in the work from the artist to the client will give the client control over the work. In that case, the client can do what it pleases with the work and the artist has very limited ability to do anything about it. An assignment may be the right avenue for works like a company logo or for a ghostwriter on a novel. But if the artist would like to retain ownership over the work, a license agreement is better suited than an assignment. A license allows the artist to retain the copyright of the work while allowing the client certain rights to the work. For example, a license can provide for a one time use, a right to reproduce the work, a use in a certain manner, or any conditions the parties desire.

If you see the words “work made for hire” in your contract or think that perhaps some of the employee factors apply to you, do not panic. A discussion with the client on the goals and outcome of the project and an agreed upon license agreement can sure-up both parties’ rights in the commissioned work.

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