Contracts for the commission of a work should contain a provision spelling out which party owns the rights to the work produced. The creator should strive to keep rights in the work, while the entity commissioning the work should aim to obtain rights in the work. Typically, “work made for hire” clauses are utilized in these agreements to explicitly detail authorship of the work.
Work made for hire clauses shift authorship from the artist or employee to the commissioning entity or employer. If the creator is not an employee, then the work must fall into statutorily outlined categories of works in order to trigger the work made for hire doctrine. This Copyright Office circular provides guidance over which works qualify, and instances where an independent contractor (creator) will be deemed an employee, and therefore trigger the work made for hire doctrine.
If a work is made for hire, then the owner of the work is the employer or the entity commissioning the work. The employee or artist can get around this default presumption with an clause explicitly stating that the work is not made for hire.
Work Made for Hire in California
In California, a unique challenge arises when the creator is an independent contractor. An independent contractor who enters into an agreement with a work made for hire clause triggers California Employment Law provisions, which can create significant headaches for the commissioning party.
Essentially, California looks at the work made for hire language and deems such an agreement to create an employer/employee relationship which subjects the “employer” to California employer requirements, including worker’s compensation and tax withholding and payment provisions. A commissioning entity should, therefore, be wary of work made for hire language in an agreement, as it will—perhaps unknowingly—subject the entity to employer obligations. Failure to meet these requirements can lead to significant costs and penalties.
A commissioning entity in this case should employ other means to obtain rights in the work produced. This can be as simple as a license granting rights in the work to the commissioning entity. Regardless of the method the commissioning entity uses to get around the work made for hire doctrine, the entity must also ensure it does not create an employer/employee relationship with the artist, as this will also trigger the employer requirements.
If you have any questions about your agreement’s provisions contact me here.