To continue on from the last posts theme I wanted to talk about work for hire provisions and agreements within your independent contractor package as a whole.
But, before we get into the topic I want to put a disclaimer on this one aside from my normal this is not legal advice line. This topic is very different for people living in and employing workers from the beautiful state of California. I won’t get into details on this post, but what you need to know is this. If you hire someone as an independent contractor but you intend to keep the rights to any intellectual property they create, you cannot use a “work for hire” provision in your agreements. By classifying the work and the IP as a work for hire, you have now taken this worker out of the realm of independent contractor and into the realm of full blown employee. And, if you know anything about CA law, there is a lot of it. And a whole heck of a lot more to consider when you have an actual employee and not just an independent contractor. So, if you have questions on that feel free to email me at Shannon@montgomerypllc.com. I didn’t get licensed in CA for nothing.
What is a work for hire?
Back to the basics. What is a work for hire, and why would you designate something an independent contractor does as such?
The work for hire doctrine was created to give employers the rights to intellectual property that an employee or independent contractor (IC) would typically have the rights to ie the employee/IC created it. For purposes of this article we aren’t going to discuss an employee/employer relationship because usually if you can show that the work was a work for hire, you don’t need a writing indicating that it was.
But, for an IC you must have a writing indicating that the work is a work for hire in order to retain the intellectual property rights in it.
What qualifies as a work made for hire?
There are 9 relatively straightforward categories that if an IC is paid to create for an employer, are considered work for hire and the default copyright rules can be contractually changed. Those categories are:
- A contribution to a collective work. (think magazine)
- A part of a movie or other audiovisual work.
- A translation.
- A supplementary work such as a foreword, bibliography, appendix, index etc.
- A compilation such as a database or an anthology (or anything from category 1)
- An instructional text.
- A test.
- Any answer material for a test.
- An atlas
If you’re hiring an IC to create any of the above types of works, you will need an agreement in place with a clause specifically indicating that the work they are doing is a “work for hire.” And yes, there is specific language that you need in this one so reach out to an attorney for help in drafting your independent contractor and work for hire agreement.
What if my project isn’t one of those 9?
Don’t fret. If you are hiring someone to create something for you on an IC basis and you’re worried about that person retaining the intellectual property rights to that project there is one other thing you will want to include in your work for hire agreement.
In the legal profession, we see this with a lot of software companies because as you can see it is hard to argue that software would fit into one of the above 9 categories. That said what any good lawyer will do is to draft a provision of the work for hire contract indicating that the IC assigns all rights and interest in the work they are hired to create. This is called an assignment clause and will sound something like “Contractor assigns all right, title and interest, including all copyrights, patents and any other intellectual property rights, in and to the work product contractor creates for XYZ company under the terms of this agreement.” An assignment clause should be part of your work for hire agreement, and independent contractor package, to ensure that the work done by your contractor will remain the property of your business.
If this is your first time to my website you probably haven’t noticed that I am a huge advocate for having all of the proper agreements in place when working with independent contractors. Go back and read my previous articles (put the links here) about the topic and you will see why I feel this way. That said, a work for hire provision is extremely important when you are working with contractors on anything. Your intellectual property is so very valuable to your company and brand, and you need to protect that in various ways and from various angles. This provision will do that for you, and you will be able to work closely with IC’s as you continue to build, grow, and protect your empire.
If you have questions or need help drafting an independent contractor agreement with a work for hire provision please feel free to email me at Shannon@montgomerypllc.com.
Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic.