It is common for content developers to contract for the assistance of others to help develop copyrighted works. It is very likely almost as common for those content developers to want to include language in those contracts that allows them to retain full ownership of the copyright in the resulting works. Where an assisting party is working as the employee of a developer, the resulting work is generally held automatically to be a “work made for hire” under the Copyright Act, with copyright vesting in the employer-developer. However, when there is no employer-employee relationship – with an assisting party acting instead as an independent contractor – it is common for the contract between the parties to include an express provision specifying that the resulting work is a “work made for hire.” In many cases, though that is insufficient.

In order for a work-for-hire clause in a written contract (and there must be a written contract) to be effectual, the resulting work must fall into one of nine enumerated categories in the Copyright Act: (1) contribution to a collective work; (2) part of a motion picture or other audiovisual work; (3) translations; (4) supplementary works; (5) compilations; (6) instructional texts; (7) tests; (8) answer materials for tests; or (9) an atlas. Thus, in many cases, even where both parties may believe at the outset that a work to be developed is to be the copyright asset of one party, that intent may be thwarted if it cannot be shown that the work at issue does not fit within the scope of the works that can be considered to be “made for hire” under U.S. law.

Sometimes, gray areas in the fact-pattern of a subsequent copyright dispute can be used to a plaintiff’s advantage to convince a court that the work was, for example, a supplementary work or a compilation, each of which is described with some definitional wiggle room within the statutory text. Litigation is rarely a sure thing, though, and almost never a good basis upon which to build one’s expectations for future enjoyment of a copyright. For this reason, it is vital for developers to include in their contracts with independent contractors not only an express work-for-hire clause, but also an express, contemporaneous assignment of all rights and interests in any resulting work from the independent contractor to the developer. This typically will help to avoid unpleasant surprises for the developer.

Conversely, it is equally important for contractors interested in retaining the rights to their works of authorship to carefully review the terms of a contract offered by a potential client. In close cases, or whenever it appears there is a potential for a difficult negotiations process, it is often desirable for both parties to engage the assistance of counsel to craft contract language that accurately conveys the true intent of the parties within the parameters of applicable law and precedent.