Monday, May 16, 2011

Should I Sign Work for Hire Clause?

Dear Rich: I'm a developer and I work as an independent contractor. Can I get your thoughts on a "work for hire" clause that a client wants me to add to my IC agreement.
Work for Hire. The deliverables (including any underlying technology) created pursuant to this Agreement shall be deemed a “work made for hire” as that term is defined under Section 101 of the U.S. Copyright Act, and the Company shall be considered the person for whom the work was prepared for the purpose of determining authorship of any copyright in the deliverables. If for any reason the deliverables are determined not to be a “work made for hire” under U.S. law or the law of any other jurisdiction, Developer hereby assigns and agrees to execute such written instruments and do such other acts as may be necessary in the opinion of the Company to assign, to the Company, without additional compensation, all of Developer’s right title and interest in and to the deliverables.
Ah, yes, the old "either/or" clause, popularized after a 1989 case in which a sculptor disavowed a work made for hire agreement. Companies didn't like the uncertainty of independent contractor (IC) status and this clause became de rigueur: the IC agrees that it is a work made for hire, and if for some reason, it isn't, the IC assigns ownership. Either way, the person who signs this is giving up all rights in the thing created.
What about the technology? One thing we're wondering about is giving up on the underlying technology incorporated within your deliverables. You may develop software tools or other programs that may have many uses in your work. Is there a way that you can carve out ownership of such technology? Or perhaps, can you and the company share nonexclusive rights?
Marwencol. We gave up searching in Google Images for "work for hire"  and decided to display the poster for our most recent favorite documentary. That got us thinking about a comment somebody made that they didn't know if the fantasy world of Marwencol was a form of therapy or an escape mechanism. Was Colonel Hogencamp treating his problems or evading them? If we weren't so concerned about our precious and ever-precarious blog metrics, we'd have an opinion on that.
[Note: There's a follow-up to this post here.]