Re: a question about software and the work for hire doctrine

On 04/20/99, Helen Dunne <hdunne[_at_]mov.vic.gov.au> wrote:
>
> I am not familiar with the term 'work-made-for-hire'. It is perhaps
> associated with US copyright law. If you or anyone else has the time
> could I please have a definition or background to this phrase?

In U.S. law, "work made for hire" defines the situations in which an employer or commissioning party owns the copyright in a work created by another (the employee or contractor).

17 U.S.C. sec. 201(b) says: "In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties expressly agree otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright."

17 U.S.C. sec. 101 defines two categories of works made for hire: one for employees and one for independent contractors. [In CCNV v. Reid, the U.S. Supreme Court held that the two categories were mutually exclusive, and that whether someone was an employee or a contractor was to be determined under general principles of agency law.] The two categories are:

"(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 [nine types of works are listed here], if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire."

Under category (2), it is NOT sufficient that there is a written instrument specifying that the work is a work made for hire. Category (2) ONLY applies if the work ALSO falls within one of the nine specified types: "as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work [such as a foreward, afterward, or annotations, etc.], as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas." Software is not on the list, so software can be a "work made for hire" ONLY if it happens to also fall within one of the nine types. In my experience, software companies routinely seem to disregard this inconvenient fact.

What does it matter, you ask, since the parties can agree in a signed written instrument to change the initial ownership anyway? The reason it matters is that "work made for hire" status affects MORE than initial ownership. It also affects the duration of the copyright (works made for hire have a different duration under U.S. law); and it affects whether the author of a work may terminate any transfers to another party (including the initial transfer in the signed written agreement) at a later time. [No termination is allowed for works made for hire; but termination is allowed for other works.] Software has such a short economic life that it is difficult to imagine termination will cause much trouble; but in other contexts, I predict a small rash of termination litigation beginning in 2013 (when sec. 203 termination can first be exercised).

Tyler T. Ochoa
Associate Professor
Whittier Law School
<tochoa[_at_]law.whittier.edu> Received on Wed Apr 21 1999 - 23:04:26 GMT