17 Jan 2012

No, unless the contractor has assigned it to you.

Merely paying someone to write a program for you does not give you the copyright in that program. At best, it may give you a license to use the code. The scope of that license, however, may not be what you think.

Software coding doesn’t meet work for hire requirements.

Many stock independent contractors include language that the work done for a company or individual is being done as a work for hire. A work for hire grants the person paying the contractor copyright in the finished product. This sounds perfect for programmers, website developers, application developers, and more.

Except works for hire have to fall under one of 9 categories. Section 101 of the Copyright Act lists these categories as follows:

1. Contributions to collective works;
2. Parts of motion pictures or other audiovisual works;
3. Translations;
4. Supplementary works;
5. Compilations;
6. Instructional texts;
7. Tests;
8. Answer materials for tests; and
9. Atlases.

Software code does not clearly fit within any of these 9 categories of works for which something may be made as a work for hire.

How can you own the copyright to the code created by your independent contractors?

The fix is simple. Your independent contractor should be required to sign a contract as part of his or her work for you. Part of this contract should be an intellectual property assignment clause.

The intellectual property assignment should include separate assignment sections for Copyrights and for Patents. The copyright section should include language:

1. Assigning the rights of the contractor to the company;
2. Stating that works that can be considered works made for hire are considered to be so;
3. Stating that any works that cannot be considered to be works made for hire are assigned to the company; and
4. Providing a scope of what work being done by the contractor falls under the assignment (in other words, not everything he codes during his contract work, for you and for others, falls under the assignment).

Verbal agreements to grant copyrights don’t work.

The only way a copyright can be transferred is through a written assignment that is signed by the person who owns the copyright and is transferring it to someone else. This is in Section 204 of the Copyright Act. (You get an added bonus if the signature is notarized.)

Any verbal agreements to transfer copyright create, at best, a license to use.

Get it in writing!

This is the key. Get it in writing, and get it signed by the contractor.

Contact us if you have an independent contractor doing work for you, but you are not sure if you own the right to what that contractor is creating.