Re: software development by staff

On 05/09/2000, Matthew Krigbaum <mkrigbaum[_at_]moyerbergman.com> wrote:
>
> On 05/02/2000, Stephen Fishman <sfish55[_at_]yahoo.com> wrote:
> >
> > On Mon, May 1 2000, Barbara Tran <tranb[_at_]umich.edu> wrote:
> > >
> > > Since software does not fall into any of the categories that
> > > qualify as work made for hire, would an employee who designs
> > > software for his/her employer as part of his/her job description
> > > need to sign an agreement for each project, assigning rights
> > > in each individual project to the employer? Or is a blanket
> > > agreement acceptable (where the employee accepts software
> > > development as part of the job description and assigns rights
> > > to all work developed on the job to the employer)?
> >
> > An employer automatically owns any work of authorship,
> > including software, that an employee creates as part
> > of his or her job duties. No written agreement is
> > required. A written agreement transferring ownership
> > is required only where an independent contractor is
> > hired to create a work of authorship.
>
> What if an employee develops software, or any other copyrightable
> work for that matter, wehre there is no written agreement and the
> creation of such work does not fall within their job description.
> Does the Employer still own the rights to the work? Can the employee
> use the work and/or share in any royalties or income from the work?

Sec. 101 of the Copyright Act defines a "work made for hire" as "(1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as [one of nine catagories], if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire."

So, with regard to employees, the issue is whether the work was prepared "within the scope of his or her employment." If, as you state, the work does not fall within their job description, it would probably not be a work made for hire. [I say probably, because I can conceive of a work being made within the scope of one's employment, even though it wasn't part of the job description.] But if, as you state, there is no written employment agreement, there may very well also be a dispute about what the scope of employment is.

Tyler T. Ochoa
Associate Professor
Whittier Law School
<tochoa[_at_]law.whittier.edu> Received on Wed May 10 2000 - 21:57:50 GMT