Business owners often just assume that they own all intellectual property rights (e.g., copyright, trademark, etc.) in and to materials created by their employees and independent contractors. This assumption may be only partially correct.
The law indeed presumes that employers own all materials created by their employees within the scope of their employment. The burden to prove otherwise is upon each employee.
But the converse is true with respect to independent contractors; they are presumed to own the intellectual property, despite having been engaged to perform services. Therefore, it is very important that you secure written agreements with your contractors, which contain two things:
(1) The written agreement must expressly provide that the contractor’s services are “works-made-for-hire,” pursuant to The Copyright Act of 1976 (“Act”), and all materials and other tangible results of those services are owned solely by the commissioning party. However, if the contract verbiage stops there, ownership may nonetheless revert to the contractor in some cases.
(2) The Act provides for limited scenarios wherein the work will be legally recognized as a “work-made-for-hire,” and those scenarios commonly don’t include the situation at hand. Moreover, this is so regardless of contractual language otherwise. So it is imperative that the contract also contain pertinent assignment language (e.g., “If for any reason the work is deemed to not be a “work-made-for-hire,” the contractor hereby irrevocably assigns the copyright and all other intellectual and proprietary rights in and to the work to the company for all purposes, in perpetuity”).
Here is a sample ownership paragraph:
OWNERSHIP
______________ is and shall be the sole and exclusive owner of all right, title and interest in and to the Materials, all materials furnished by ____________, all materials created, developed or otherwise submitted by Contractor and persons engaged by Contractor, whether directly or indirectly, whether commenced prior to or undertaken during the course of this Agreement, including, but not limited to, all ideas, concepts, creations, characters, characterizations or other elements, materials, literary, musical or intellectual properties and the results and proceeds thereof, and the product and physical embodiment of such services whether or not actually utilized in the Materials (collectively, the “Properties”). The Properties shall be works-for-hire for the benefit of ________________. In the event that a determination is made that the Materials, any of the other Properties, or any portions thereof, do not constitute a “work-for-hire,” then the Materials and such other Properties, including all copyrights and renewals and extensions thereof in the Materials and such other Properties, are hereby deemed to be and are assigned and transferred to ________________, in perpetuity, without reservation, condition or limitation. Contractor shall execute such other assignments or instruments as _________________ may from time to time deem reasonably necessary or desirable to evidence, maintain, protect, enforce or defend ________________’s right, title and interest in and to the Materials and any other Properties. Upon any failure of Contractor to do so within a reasonable period after written notification from ______________________, Contractor hereby appoints ________________ as its attorney-in-fact for such sole purpose (it being acknowledged that such appointment is irrevocable and coupled with an interest) with full power of substitution and delegation. Additionally, Contractor specifically waives any and all “artist’s rights,” rights of “Droit Morale,” “Moral Rights of Contractors” and any similar rights or principles of law it may now or later have pursuant to any laws or in any jurisdiction throughout the universe, in all languages, in or to the Materials or any other Properties and the results and proceeds of the Services rendered by Contractor hereunder.
Note that this post is a general overview for your information only. You should always seek counsel from a qualified attorney of your choosing in each instance.
© 2012 Russ Riddle. All rights reserved.
