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>Tip: Work Made for Hire vs. Get the Assignment

>One of the more common missteps involving intellectual property is the concept of a work made for hire. This concept is defined in the U.S. Copyright Act and there is a lot of case law over the years regarding it.

Many people believe that “if Company A paid for Person B to develop The Thing, then Company A owns The Thing”… like all things lawyer, the answer is “maybe.” If Person B was an employee of Company A and it was part of Person’s B to develop The Thing, then The thing is a work made for hire.

There is a second concept for work made for hire…

…that is spelled out in the statute, but it requires many other extra hoops for The Thing to qualify as a work made for hire. However, as you can see, not every instance qualifies as a work made for hire. And, if The Thing does not qualify as a work made for hire, then Company A will have paid it, but won’t have any rights to it.

So, if you are Company A, you cannot afford to assume that everything is a work made for hire. Make sure that your form employee (and contractor) agreements have a full-blown assignment to the company. Make sure that the assignment is a present (as opposed to future) assignment… but I’ll blog on that another day.

Andy Ehmke focuses his practice on intellectual property portfolio issues facing companies in the software, computer, video game and mobile device industries. Prior to joining Haynes and Boone, Andy was an information systems manager and consultant, and also worked as a programmer designing object-oriented programs for hand-held computing devices.

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June 2009