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A Reason Why Your Contractual Agreement Shouldn't Be a “Work for Hire”
- BatFastard 10y agoYou could certainly argue that writing software as part of a team is "a contribution to a collective work". What surprises me is how many startups are not even aware of at least including a "work for hire" clause when bring on software developers.
- matthewmcg 10y agoSure, but even then if contributed code is part of a collective work, the copyright act still requires a work for hire agreement. Section 101 says: A “work made for hire” is— (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 a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. https://www.copyright.gov/title17/92chap1.html#101 https://www.copyright.gov/title17/92chap1.html#101
- BatFastard 10y agoI agree, a "work for hire" is MINIMUM. Author makes a good point that even more is required.
- droithomme 10y agoYeah, that is indeed the legal definition in the US of a work-for-hire. As is pointed out though, for non-employees (contractors) there's an enumerated list of categories that that can be applied to. Writing software isn't in there. Although software and a web site designs might be considered an audiovisual work in some cases. Games and multimedia software are clearly audiovisual works. Accounting software, maybe not. Backend scripts, probably not. The second clause of the definition should probably be updated by Congress to reflect modern realities. However, as it has not been updated, an explicit copyright transfer is needed, or some form of licensing agreement. A lot of specialists for hire will insist on a license instead of an outright copyright transfers because they sure are not going to give away their core work permanently to one party, short of a buy out. With either a copyright transfer or licensing contract it doesn't need to be a work for hire, that issue is irrelevant, the contract is written to cover what you actually need.
- raverbashing 10y agoIt should be "one of its requirements" in the text
- zekevermillion 10y agoMy old law partner liked to harp on this point as well, and it is a valid one. However, as a matter of practice most well-drafted work-for-hire agreements also contain a backup assignment clause something like "to the extent the work is not a work-for-hire, I hereby assign the copyright". "Work-for-hire" is one of the many misnomers you find in commercial contracts, along with "intellectual property".
- late2part 10y agoCitation needed - why must they fall in one of these categories? The deliverables must fall within one of nine limited categories of works
- DrJokepu 10y ago17 USC 101
- daenney 10y agoIt's literally in the same sentence you're quoting: > Per 17 USC 101, the deliverables must fall within one of nine limited categories of works. Though I'll grant you that 17 USC 101 might not be blatantly obvious, a quick Google search will reveal https://www.law.cornell.edu/uscode/text/17/101 https://www.law.cornell.edu/uscode/text/17/101 as a source for further information.
- late2part 10y agoYour point is valid. Mea culpa. What isn't obvious to me is that the produced work is only protected by copyright, not trade secret property. But my wonder is immaterial to the practical issue as most code is copyrighted; and any arguments I would make about trade secrets or patents would be easily refutable without a long debate. Apologies and mea culpa.
- MrFoof 10y ago>A highly recommended practice is to institute a clause which covers a variety of scenarios of assignment of the copyright for all work produced. This is what I've done for years with my Service Agreement. IP transfer officially occurs on full payment, and rights are assigned to Client if Product would not be considered a work made for hire under applicable law. Though if I'm not paid, I send a written warning after N past due. If still don't get paid N days past said notice, I reserve the right to equitable relief, send a cease to desist, and if I still don't get paid I can go to court and get an injunction to stop Client from using it. There is some language that clearly provides a grace period to the Client to use it while awaiting invoices, etc. IP transfer is the most leverage you have as a freelance software consultant. It's the one thing you should have clearly defined in a Services Agreement, and you shouldn't waffle on.
- faitswulff 10y agoHow would you recommend drafting something similar? Did you work with a lawyer to produce your Services Agreement?
- wernercd 10y agoConsult a lawyer. Someone versed in it. Obligatory: Fuck You, Pay Me https://www.youtube.com/watch?v=6h3RJhoqgK8 https://www.youtube.com/watch?v=6h3RJhoqgK8
- zx2c4 10y agoCare to share your service agreement? Sounds like you've come up with a good formula.
- rebelde 10y agoCan somebody point me to a model contract that does what we all want it to do? There must be some good ones out there that we can use.
- aaron-suarez 10y agoNot sure if this covers your needs, but I liked it: https://gist.github.com/malarkey/4031110 https://gist.github.com/malarkey/4031110
- rch 10y agoI'd be curious to see any standard service agreements that people are allowed to share. Those I have seen are pretty weak - no mention of change request procedures for cases where customers could try to 'annex' IP, for instance.
- CalChris 10y agoCooley has these. https://www.cooleygo.com/documents/ https://www.cooleygo.com/documents/ Adding Wilmer Hale, Orrick and Founders' Workbench https://launch.wilmerhale.com/build/document-generator/ https://launch.wilmerhale.com/build/document-generator/ https://www.orrick.com/Total-Access/Tool-Kit/Start-Up-Forms https://www.orrick.com/Total-Access/Tool-Kit/Start-Up-Forms http://www.foundersworkbench.com/ http://www.foundersworkbench.com/ I think Clerky does this as well. Documents just want to be free. https://techcrunch.com/2015/01/10/documents-just-want-to-be-free/ https://techcrunch.com/2015/01/10/documents-just-want-to-be-...
- rch 10y agoMy impression is that Cooley tends to be more company-favorable. Those docs are to help a startup get to the point where they can afford to hire Cooley.
- omginternets 10y agoI don't know a great deal about law, but http://www.contractstandards.com/ http://www.contractstandards.com/ has been very helpful to me.
- steveeq1 10y agoOk, wait. I am somewhat confused by this article. It is from my (non-lawyer) understanding that intellectual property ownership generally default to the creator. This happens even in "independent contractor" type of relationships, from my understanding. In the case of an employee/employer relationship, on the other hand, IP generally lies on the employer. So if it's a work-for-hire relationship, IP automatically goes to the potential employer?
- dagss 10y agoAt least in my country the IP goes to the author, full stop. In employment contracts you then specifically transfer the IP to the employer.
- joshuak 10y agoThough I'm not a lawyer, I have direct experience with this having successfully sued a client over IP related issues. Under California law all IP produced by an employee during their employment, that is within the domain of the employer's work product and regardless of where that work was produced, is by default owned by the employer. All IP produced by a independent contractor is owned by the independent contractor, you pay for their time not for their work product. 'Work for hire' clauses are used to simply and effectively move an independent contractor into the same category as employee with respects to the IP they produce. It does not do the same with respect to the independent contractor's compensation, or rights as employees. Generally the 'work for hire' clause itself is entirely inflexible, it is other areas of the agreement that must be addressed to protect payment. Hollywood, for example, is run almost entirely under work for hire agreements and could not function without it.
- DannyBee 10y ago" that is within the domain of the employer's work product and regardless of where that work was produced, is by default owned by the employer." It's broader than that, actually.
- briandear 10y ago
- arvidkahl 10y agoWhile it may not fall under the precise definitions, I like to think that the source code I produce is both a translation (from an abstract concept language into a machine-executable/-readable language) AND an instructional text (for the machine to parse and execute). From the perspective of a machine, that makes a surprising amount of sense.
- Thrillington 10y agoSure, but the law is generally interpreted from the perspective of the humans
- sean_hogle 10y agoThere are at least four US District court decisions that stand for the proposition that software qualifies as a work for hire as either a "contribution to a collective work" or a "compilation": iXL Inc. v. Adoutlet (N.D. Ill. March 29, 2001); Logicom Inclusive, Inc. v. W.P. Stewart & Co. (S.D.N.Y. August 9, 2004); Siniouguine v. Mediachase Ltd. (C.D. Cal. June 11, 2012); and Stanacard, LLC v. Rubard, LLC (S.D.N.Y. February 3, 2016). So far no appellate court has ruled on the issue AFAIK.
- jhummel 10y agoHas anyone seen any clauses within an independent contractor agreement, which would allow the retention of certain pieces of the finished work? For instance, I write a class/component/plugin/etc. that I want to use in several projects to increase productivity. Is there a standard way to carve out and retain those pieces of code?
- deleted 10y ago[deleted]
- gleenn 10y agoI don't know if there is a standard way to do it, bit that's the arrangement we have with almost all our clients. There are clauses about basically not taking IP, just reusable code for our own purposes. Clients with existing codebases are harder to sell but new projects almost never mind. You can tell the client this significantly benefits them because then they might also get "free" code from our other clients. It's like a microcosm of open source.
- msolujic 10y agoJoel Spolsky recently wrote on this topic, with focus on full time employment https://www.joelonsoftware.com/2016/12/09/developers-side-projects/ https://www.joelonsoftware.com/2016/12/09/developers-side-pr... "... If you hire a photographer to take pictures for your wedding, you own the copies of the pictures that you get, but the photographer still owns the copyright and has the legal monopoly on making more copies of those pictures. Surprise! Same applies to code."
- jocoda 10y agoDRY (Don't Repeat Yourself) is one of the prime commandments of software development. The problem I see with transferring IP/copyright on a 'work for hire' basis, is that certainly in my case a substantial portion of the codebase is often code that is being reused for good reason. Losing control of that code now effectively prevents the same code from being reused this elsewhere without getting into further messy contractual details. Personally I refuse to do work for hire - instead the client gets unrestricted right to use code as desired but does not own copyright. Thoughts?