Understanding the work made for hire doctrine under the Copyright Act of 1976 is key for effective intellectual property management. The default ownership rule under the Copyright Act provides ownership to the author (i.e., creator) of the work. But the act creates an exception to this rule for a "work made for hire" agreement in which the employer, or the hiring party for whom a specially commissioned work was created, is deemed the author and therefore the owner of the work. Part 1 of this article focuses on the requirements under the employer analysis, while next month Part 2 will focus on specially commissioned works and conclude with some important implications.

Employee-Employer Analysis

For an employee's work to be a work made for hire under the act, the employee must work at the organization at the time of the work's creation, and the work must be made within the employee's scope of employment. But because the act does not define "employee" or "scope of employment," U.S. courts have filled the interpretive gap.

Employee

In the 1980s the U.S. Supreme Court ruled that under the work made for hire analysis, courts must determine whether a person was an employee through agency law. And in general, the common law of agency looks to the principal's (i.e., purported employer's) control or right to control the manner and means of the agent's (i.e., purported employee's) performance. To assist with this analysis, the Court provided a list of non-dispositive factors:

• Whether employment benefits were given to the purported employee, their tax treatment, and the level of skill required
• Whether the right to give other assignments existed
• Whether the work was part of the regular business of the purported employer, the location of the work, etc.

Scope of Employment

If the creator of the work is found to be an employee, the next step is to determine whether the work was created in the scope of employment. Agency law generally requires three conditions to be met for a work to be created within the scope of employment:

• The creation of the work is the type of work the employee was hired to perform (e.g., within their job description)
• The work was created substantially within the job's authorized space and time (e.g., at the employer's premise during business hours)
• The work was created (at least partially) to serve the employer (e.g., query whether the employer benefited from the work)

No Writing Requirement

A benefit of falling under the act's employer analysis is that a writing is not necessary to qualify as a work made for hire. Nevertheless, it's best practice to include a work made for hire provision in employment agreements. For additional assurance on ownership, it's also advantageous to include an alternate assignment clause. That is, a contract provision stating that in the event a work is not deemed a work made for hire (e.g., the work was created outside the scope of employment), all ownership interest in the copyright is "hereby assigned" to the employer.

Part 2 of this article will focus on specially commissioned works and conclude with some important implications.