When you hire someone to create your logo, write your content, or develop your code you should have a work-made-for-hire agreement signed in advance. If not, that contractor may own the copyright in the work they performed.
What is a work made for hire
A person who creates a work (like a logo, blog post, or software code), is usually the author of that work for purposes of initial copyright ownership. See 17 U.S.C. § 201(a) (the Copyright Act provides that copyright ownership “vests initially in the author or authors of the work”). There is an exception for employees and contractors under the Copyright Act of 1976 called the “work for hire” doctrine. See 17 U.S.C. § 201(b).
Section 101 of the Copyright Act (17 U.S.C. § 101) defines a “work made for hire” in two parts:
- works prepared by an employee within the scope of their employment, or
- a work specially ordered or commissioned for use as a part of a collective work, motion picture or other audiovisual work, translation, supplementary work, etc., but only if the parties expressly agree in a written agreement that the work shall be considered a work made for hire.
Work-made-for-hire agreements must be signed in advance
For contractors, works “specially ordered or commissioned” can only be made after the execution of an express agreement between the parties. See Playboy Enters., Inc. v. Dumas, 53 F.3d 549, 558-59 (2d Cir. 1995). The Copyright Act and caselaw is clear, you must sign your work-made-for-hire agreements in advance. You cannot make them retroactive.
In Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410 (7th Cir. 1992), for instance, Judge Posner wrote that section 101(2) of the Copyright Act of 1976 requires that a written agreement precede the creation of a work. Such requirement is “designed to protect people against false claims of oral agreements” and “to make the ownership of property rights in intellectual property clear and definite, so that such property will be readily marketable.” Id. at 412. Having a written work-made-for-hire agreement precede the creation of intellectual property “serve[s] the purpose of identifying the (noncreator) owner unequivocally.” Id. at 413; see also Playboy Enters., 53 F.3d at 559 (agreeing with Judge Posner that works for hire must be signed in advance to preserve clarity, definiteness, and predictability).
If you hire a ghost writer to write for your blog, you should agree in advance in writing that the posts are works made for hire. Otherwise, that ghost writer would likely own the initial copyright as the author of those posts.
How to ensure rights are properly transferred
Even if you properly specify in your contract that a commissioned work is a “work for hire,” that may not be sufficient to ensure your ownership if the creative work doesn’t fit within one of the nine statutory categories under 17 U.S.C. § 101. It may be beneficial to include back-up clauses assigning the rights to you. Unlike a “work for hire,” however, assigned rights can be revert to the author after a term of 35 years. See 17 U.S.C. § 203.
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