QUESTION: If I hire and pay a contractor to write a computer software program for me, do I own the copyrights?
Not unless you receive a written assignment.
A programmer, artist or writer who creates a work owns the copyrights in the work unless the work qualifies as a "work made for hire", or the copyrights are assigned in writing. A "work made for hire" is defined as:
- A work prepared by an employee within the scope of his or her employment. Courts have interpreted this to mean that FICA must be withheld and paid for that employee for such person's work to constitute work made for hire; or
- A work specially ordered or commissioned for use as a contribution to a collective work as a part of a motion picture or other audio visual work, as a translation, as a supplementary work [such as an edit or revision, but you better make sure it's not more than that or include an assignment], as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a "work made for hire".
So, unless:
- the developer of the program is an employee, with FICA being withheld, and the work is created within the scope of employment,
- there is a written agreement that the work is a "work made for hire" and one of the above-specified criteria is met or
- there is a written assignment,
the copyrights will be owned by the developer - regardless of what the parties agreed to orally or how much money has been paid. In fact, the far better practice is to have written agreements even for employees. Otherwise they may argue that they did not create the work within the "scope of employment." Additionally, unless the work is a "work made for hire," the copyright should be registered in the name of the creator and the assignment should be recorded in the United States Copyright Office. The reason for registering the copyright in the name of the creator and recording the assignment is a topic for another day.
Hassett is an attorney in technology and entertainment with the Atlanta law firm of Casey Gilson Leibel P.C. If you have a question about IP law, you may email him at rob@internetlegal.com. He will endeavor to answer questions in future columns. Please let him know if he may include your name with the question.
The information provided above is provided for general educational purposes and not as legal advice. Nothing in this article is intended to create and may not be construed as creating an attorney-client relationship. Laws change continually both from the enactment of new legislation and from court rulings. Laws also vary from jurisdiction to jurisdiction. Additionally, what may seem like a minor difference in a fact pattern may make a major difference legally. Therefore no one reading this column should rely on any of the information provided for legal advice, but should always consult his or her own attorney regarding legal matters.
