Tuesday, October 2, 2012

Pre-Creation Assignments and Works Made For Hire

Dear Rich: Our non-profit company engages a large number of translators to create versions of US-sourced written and audio materials in other languages. While some of them work under work for hire provisions, others, who do the work voluntarily do not, because no hiring (payment) is involved. Is it possible to have a volunteer contract worker (as opposed to an employee) sign a copyright assignment prior to the work being created? Or, if there’s a pre-work contract, can you only obligate the contract worker to assign the copyright once the work is completed? Let's step back for a second and re-consider your situation.
  • Employees. Employees (not independent contractors), don't require any paperwork. The employer acquires copyright in all creations completed within the scope of employment.
  • Independent Contractors. Independent contractors would be bound by work made for hire provisions in their contracts. That's acceptable because a "translation" is one of the acceptable work made for hire categories.
  • Volunteers. Volunteers do not receive a payment. However, that doesn't mean that some consideration is not passing to these folks. "Consideration" is the answer to the question as to why someone is performing a task. And as long as you can point to some consideration for volunteers -- for example, interns acquiring work experience, translators acquiring job references or a portfolio -- you can use a work for hire agreement with the volunteers. You can state "for consideration, the sufficiency of which is acknowledged," in the agreement (although if both parties sign, that's not necessary (scroll down) in a majority of states).
Assignment or work made for hire. It's best to have consideration of some form whether seeking a work made for hire or assignment. Assignments that have no consideration are sometimes considered gifts (or "donative") and in some cases may be revocable. However, as noted above, consideration is not necessarily money, and often -- if the parties agree that consideration has been exchanged -- courts will not inquire into the value or quality of that consideration. In light of that, you may wish to consider having your attorney draft a work made for hire agreement for volunteers that states that if the work made for hire provisions are not valid for some reason, the volunteer agrees to assign copyright. We discussed these "either/or" agreements in a previous entry.
Can you make a pre-work assignment? Technically, the translator has no copyright to transfer until the work is finished or "fixed." That's when the copyright first manifests itself. Some agreements bypass this issue by having the person promise to assign the work and to grant a power of attorney for such purposes. For example, pre-invention assignment agreements typically include copyrights and these agreements have routinely been found to be valid.

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