To be protected under the federal Copyright Act, a work must be an original work of authorship, fixed in any tangible medium of expression now known or later developed, from which the work can be perceived, reproduced, or otherwise communicated, with or without the aid of a machine or device.64 The phrase, “original work of authorship” does not require “novelty, ingenuity, or aesthetic merit.”65 The work must, however, “possess at least some minimal degree of creativity.”66 Works subject to copyright include literary works, musical works, and dramatic works; pantomimes and choreographic works; pictorial, graphic and sculptural works; motion pictures and other audiovisual works; and sound recordings and architectural works. 67

The presumed owner of a copyright is the party that actually creates the work. In an employer-employee relationship, the employer is presumed to be the “author” of copyrightable works created by its employees acting within the scope of their employment.68 The employer, not the employee, owns the intellectual property that the employees create on the job.69

Only works created by an employee “within the scope of employment” automatically become the property of the employer, however. The conduct of an employee is considered within the scope of employment if: (1) it is the kind of work the employee is employed to perform; (2) the employee creates the work substantially within authorized time and space limits; and (3) the work is motivated at least in part by a purpose to serve the employer.70 Most courts require an employer to prove all three elements to establish its right to copyright ownership.

A carefully drafted written agreement between the employer and the employee should confirm that the employer owns the copyright; that is, that the employee created the work within the scope of his or her employment and that the employer is, as provided by law, considered the author. An agreement also should assign to the employer a copyright in any works created by the employee during the period of his or her employment. After receiving an executed assignment, the employer still is in a position to claim ownership of the copyright, even if the employee disputes the existence of one or more of the three elements necessary to show that the work was made “within the scope of employment.”

In an independent contractor relationship, the independent contractor is presumed to be the author of the work and the owner of the copyright unless the work was created pursuant to a written “work made for hire” agreement71 or is subsequently assigned to the employer.72 An individual who performs regular work for the same employer at the same location nonetheless may be an independent contractor rather than an employee, if, for example, the employer does not withhold income taxes or Social Security benefits from payments or declines to extend benefits such as medical insurance.73 If the individuals who create a work may be independent contractors or employees acting outside the scope of their employment, the employer must obtain an assignment of the copyright and all rights therein. To avoid any ambiguity as to ownership, an employer should routinely require all employees and independent contractors who are in a position to create copyrightable works to execute copyright assignment agreements both before and after completion of the work.

Fulfilling the requirement of a written assignment is crucial if the author is an independent contractor. The only works eligible for “work made for hire” treatment outside of the employment context are those that fall under one of nine specific categories enumerated in the federal Copyright Act as “works made for hire.”74 In those nine categories, a work may be a “work made for hire” if (and only if) the parties have expressly agreed in writing that the commissioning party (the employer), not the independent contractor, is the author.75

An employer and an independent contractor cannot by agreement transform a work into one “made for hire” unless the work falls into one of the nine statutory categories. Therefore, contractual language that states that the work of an independent contractor is a “work made for hire” may be an ineffective transfer of the copyright. In that case, the independent contractor, not the employer, may retain copyright ownership. It is less important for the employer to obtain an agreement designating the work as one “made for hire” than it is for the employer to obtain an unequivocal assignment of ownership.

CREDITS: This is an excerpt from An Employer’s Guide to Employment Issues in Minnesota, provided by the Minnesota Department of Employment and Economic Development & Linquist & Vennum P.L.L.P., Tenth Edition, 2009. Copies are available without charge from the Minnesota Department of Employment and Economic Development, Small Business Assistance Office.

This post is also part of a series of posts on how employers can protect intellectual property through non-compete and non-solicitation agreements.

64. 17 U.S.C. § 102(a) (2007).
65. H.R. Rep. No. 1476, 94th Cong.2d Sess.51 (1976).
66. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 344(1991).
67. 17 U.S.C. § 102(a) (2007).
68. 17 U.S.C. § 101 (2007).
69. 17 U.S.C. § 204(a) (2007).
70. PFS Distrib. Co. v. Raduechel, 332 F. Supp.2d 1236, 1248 (S.D. Iowa 2004).
71. Kirk v. Harker, 188 F.3d 1005, 1007-08 (8th Cir. 1999).
72. 17 U.S.C. § 101 (2007).
73. Id.
74. 17 U.S.C. § 101 (2007).
75. 17 U.S.C. § 204(a) (2007).