What Is The Work For Hire Doctrine?

Imagine this: Your business needs a new logo. Perhaps a cute character, say, a rabbit that everybody will identify with your company product or brand would be great.

You go to your executive vice president who happens to be an amateur graphic artist. He creates a great looking rabbit. So good, the rabbit is everywhere. People love the little guy. He’s appearing on clothes and shirts, and now you think that maybe you could make some money licensing the character out for money.

But is that rabbit really your company’s character? You didn’t create it—your vice president did. He wants a cut of the action. He designed it, conceived of it, and created it. He tells you it’s his, and you need to pay him if you want to purchase the character. Who is right?

Work for Hire

This is the heart of what is known as the work for hire doctrine. The doctrine generally says that when someone creates intellectual property (IP), especially copyrights, as part of his or her job duties, the work belongs to the employer—not the employee who created the work.

But it’s not so simple. This assumes the person who created the IP was an employee, and not an independent contractor. Courts don’t care what you call someone. Courts instead will ask the following questions:

1. Where was the work created-home or at work? Who provided the equipment that created the character or IP?
2. How much and to what extent does the employer control the person who created the IP? Does the employer set the schedule, tell the other person what to do and when to do it, the way a traditional employer would towards an employee?
3. If the employee paid regularly, or does he or she have taxes withheld?

The answer to these questions will determine whether someone is an employee, or a contractor.

If the creator of the IP is a contractor, work for hire gets a little more difficult. For an employer to own the IP created by someone else, the employer would have to show that the IP was commissioned specifically for certain categories of work defined in copyright laws. Additionally, there must be a written agreement that says that the creation is work for hire.

Absent either of those, if a contractor creates your IP, you may not own the IP—the contractor could own it.

Employees

For someone salaried, who is employed for you and only you at at your discretion, it may be more likely that the person is an employee, in which case you don’t need a written agreement that says the work is being made as a work for hire—although it’s still good practice to get that in writing, to make sure that if that employee leaves, gets disgruntled, or wants a share of profits, that you as the employer have legal grounds to say no.

Call the West Palm Beach business litigation lawyers at Pike & Lustig for help protecting your intellectual property.

Resource:

copyright.gov/circs/circ09.pdf