INTELLECTUAL PROPERTY RIGHTS WHEN USING AN INDEPENDENT CONTRACTOR
Generally the creator of an original work of authorship will have exclusive rights over the use of his or her creation. Original works of authorship include things such as a website‚ text‚ a computer program‚ photographs‚ graphics‚ etc. The issue of who has the right to use‚ sell‚ and distribute an original work of authorship can become complicated when a company hires an independent contractor to create a work on its behalf.
Most business owners believe that if they pay someone to create a work then the business owner owns it. While this may be true if the person creating the work is an employee working within the scope of his or her employment‚ this is generally not true if the person is an independent contractor. In the most typical independent contractor situation‚ the person creating the work owns the work and the business owner has a license to use it. The creator of the work may even retain exclusive rights to copy and distribute his or her creation. To avoid any confusion‚ business owners should have independent contractors sign a written agreement which makes it clear that the business owner owns the work. Known as a Work for Hire agreement‚ this type of contract is often the best way to establish rights to the work and it should be signed before the work is created.
Works that qualify as works-for-hire are only those that are created within the scope of an employee’s job or if they are part of a specific list of nine types of works including (1) a contribution to a collective work; (2) a translation; (3) a supplementary work; (4) a compilation; (5) an instructional text; (6) a test; (7) answer material for a test; (8) an atlas; and (9) a part of a motion picture or other audiovisual work. These 9 categories only apply if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.
When a work does not fall into one of the 9 specific categories and it is not clearly created within the scope of employment‚ it will not qualify as a work-for-hire and the associated authorship rights will not pass to the company that hired the contractor. In such cases‚ the business will have to create a written agreement in which the independent contractor transfers some or all of his or her authorship rights.
Intellectual property rights are often extremely valuable and so businesses should be sure that ownership is made clear at the outset. In the event that rights are not made clear‚ legal issues can and often do arise. Please feel free to contact us if you have an issue related to the use of an independent contractor.