16 Mar Intellectual Property Lawyer Warns, “You May Not Own the Rights to Work Created by an Independent Contractor”
As a small business owner, you may have utilized the services of an independent contractor to handle creative tasks such as writing, graphic design, and website design. Since you paid for the final product, you may have also assumed that you own the work they produced and that you could do with it whatever you would like. As an Intellectual Property lawyer, I can tell you that your assumptions in this area are likely wrong.
Unlike an employee, an independent contractor is a business owner like you, and he or she retains copyright ownership of the work they produce. If you hire an independent contractor to write for you, design your logo, develop software, or even take photos, the work is protected by copyright. Among other controls, they stay in charge of how these works can be used, changed, and how they can be distributed. This can seem counterintuitive to some people since, generally speaking, you own things that you pay for. However, in this case, you are given the right (a limited license) to use the item commissioned exactly as is, but the contractor owns the underlying copyright in the work they create for you.
If you would like to retain all rights for any work created on your behalf, you should consider a “work for hire” agreement. With a work for hire agreement, you are legally considered to be the author or writer of work created by another for your use, so you obtain the rights to do with it what you wish. It is important that you get this agreement in place before you start working with the contractor. Also know that there are limitations on the types of work that can qualify for a work for hire agreement. The following situations can be considered:
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
- As an atlas
If the work you want your independent contractor to create doesn’t fall into one of the categories above, it will not qualify as a work for hire and you do not own the copyright. It is possible, however, to enter into an agreement with the independent contractor that agrees on a transfer of all or some of the copyright rights to you; this is called an assignment.
As you can see, the arrangements between a business and an independent contractor should be managed very carefully. We’ve helped many businesses work through these agreements and we’d be happy to help you with yours. Give our Charleston and Brooklyn offices a call at (888) 666-0062 to schedule a free consultation.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.
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