copyright for hired consultants

Factual Questions
1

I’m an employee of a company and as part of my duties I produce written documents including papers, manuals, grant applications, application notes. I assume the copyright is retained by my employer and not me. Is that normally correct?

What about hired consultants hired for specific projects? If my company hires a consultant to write a specific document, who retains the copyright normally? I expect a contract can be signed that says the copyright goes to the consultant, but I would expect that “normally” the company who has done the hiring retains the copyright.

Is it typical and normal that the copyright goes to the hiring company and not the consultant?

2

IANAL, but as I recall, there’s a category “works for hire” where the one doing the hiring owns the copyright. Otherwise, Disney or any other animation studio (not to mention any movie studio using scripts) would not be able to operate. What criteria define “for hire” (other than hiring) I don’t know.

3

Yes it is normal to have this agreement in the employment contract.

Normally the company does. This is usually covered by a boilerplate agreement on the purchase order or work order.

Not usual but it can certainly happen. A mutual NDA or some such agreement to address cases like these.

4

Due to the nature of the consulting that I do I have a specific clause in my client contracts that I retain all copyrights for the work I create and that I am granting a limited liscense to my clients to use the work. The standard clause my lawyers normally use in that part of the contract give the copyright to the hiring party and I had to pay to get them to restructure it.

I would assume that the normal operation is that the person paying to have the work created owns it no matter if they are hiring a consultant or using an employee.

5

Having been on both sides of the consultant-employer relationship, the norm seems to be that standard contracts / letters of engagement that hire you to write Report X requires you to sign away all rights to the end product. If you want to retain copyright and grant them a license then its up to you to take the initiative and get their agreement for the license.

I found that one-off clients who simply want Report X so they can do Thing Y are happy to do this, but government departments, large consultancy firms and others who engage lots of consultants are very reluctant.

Partly, its the pain of having to vary the standard contract, which might mean progressing a contract variation request up a long and uninterested food chain. Partly, its their comfort in knowing its their product and they won’t have to get legal verification if one day they decide to use Report X as a template on Project Z because they really liked the way that the tables in Appendix 3 were set out, or want to re-use a chunk of text, or if Concerned Citizen requests a copy. These sorts of things become tedious and finicky to check if they were allowed by the original license, but the license creates real penalties if that checking is not done.

That said, they usually fully understand why you’d want to insist on retaining copyright and won’t be dicks about it, but the value of your product to them has to outweigh the annoyance factor.

6

Generally speaking, an employee’s work belongs to es employer. An independent contractor retains the copyright interest in es work absent a written agreement otherwise.

7

And as always, when in doubt, get it in writing and signed. Even if there is a standard principle of law that covers this, putting it explicitly in the contract makes it unambiguous and saves headaches in the long run.

8

My contract with my employer gives them the rights to all intellectual property I develop while I’m employed by them. The only exception is works totally unrelated to my job functions. Basically they get anything I invent that’s looks remotely like anything I develop at work.

But it goes further. My employer mostly sells to the government. And the government typically demands unrestricted rights to anything we deliver to them. No proprietary works, no copyrights, no patents, etc. They don’t want any hassles so they don’t get any.

So while my employer gets my IP in theory, in practice it all goes to the public domain.

9

It’s certainly quite common. I always retain copyright to all my creative works (I’m a photographer), but that typically has to be hammered out in the contract. Many/most companies are going to try to get you to sign a work-for-hire type of agreement where they retain copyright. I have not done a WFH in over 20 years. I try to find out what kind of usage rights they need, and I negotiate those for a fee, but I do not hand over my copyright.

10

The rules governing works for hire have become more strict over the past several years. Now, even if all parties agree that the product is work for hire, it may not legally be one. Even the Circuits are split over the issue. See Kauffmann v. Rochester for one example.

11

My company has at least one contract with the federal government that allows us to copyright/patent software we deliver, and allows us to use it elsewhere, but allows the government unlimited use without royalties. This is the government’s contract; we didn’t write it. IANAL but it may not be correct in your company’s case that it all goes into the public domain. I think your company needs a better lawyer.

12

It’s more that we have a poor negotiating position–we are extremely limited in who we can sell to. Our customers said “these are the new rules, play by them or go home”. It’s not completely negative though, our competitors have the same clauses. And it means we can use the nuts and bolts of their work product just as well as they can use ours.

13

The Copyright Office’s flyer on works made for hire – https://www.copyright.gov/circs/circ09.pdf

14

When I was hiring free-lancers, we had two standard agreements. For writers, we claimed all ownership of interviews, notes, preliminary drafts, etc., as well as copyright. For photographers, we agreed that they retained ownership of the negatives, and specifically granted them the right to reproduce the materials for their own collections, and for their own marketing materials (But not for sale for profit.)

I never had to negotiate a contract for original music, thank goodness.

15

The specific bit that would apply to the OP is:

Since the OP specified that the duties include writing, etc. then this covers it.

But … there are always gray areas. As a college professor, my writings were mine. So I could produce class notes, research papers, text books and I had control over them. (If one of those was produced using grant money there might be restrictions. E.g., an NSF supported research paper would usually need some sort of public availability.) For a long while same with patentable ideas. Then the schools started formalizing things so that they’d get in on the patent, if they wanted to.

  • Complete aside: I noticed an interesting artifact in c&p this. I got “Defintion” instead. There’s clearly an “i” in the text. Well, an “fi” ligature. That getting dropped to an “f” is surprising at first.
16

ftg raises a point I’ve thought about. As a teacher, suppose I develop a curriculum to use with my students. I’m paid to teach students, not to develop curriculum for the district so who owns the copyright?

17

I think it does a disservice to edit out the rest of (b), which is, in complete:

Because it makes very clear that not every work specially ordered or commissioned for use is a work made for hire. Only some things are.

18

I guess then it’s up to a judge to decide whether curriculum development was within the scope of your work. This is how lawyers can afford to join country clubs. Not a lawyer, but I’m going to guess - did they ask you to create a curriculum (as opposed to simple lesson plans)? Or did you look at the existing curriculum and say to yourself “this is crap. I will make my own.” How much did your management direct you? etc. etc.

19

Were I to guess, I would say that a court would likely find that developing a curriculum to use in your classes would be within the scope of your duties as a teacher. However, I would further surmise that authoring a book that proposes, describes, and expounds upon a curriculum would not be within the scope of your duties as a teacher, especially if you did the writing on your own time and using your own resources.

20

One of the problems with who owns the material produced by a prof for teaching a class is the fact that people move around.

So a prof starts at school A. Takes some existing material. Adds some stuff to it. Moves to school B. Continues to use and add to it. Moves to school C.

If school B suddenly tells the prof they can’t use the material since B owns it, and sends a threatening letter to school C to make sure they enforce it (because that’s what lawyers do- send threatening letters to everyone).

Now it’s a mess. Maybe the prof asks A for help to prove that it is mostly stuff from that time period. And A decides they need to send out letters to everyone. And on and on.

Schools suing other schools is to be avoided.

So they don’t really want to kick this hornet’s nest.

OTOH, they really want a copy of all course notes, assignments, exams, etc. for the next person who will teach it. It’s a quid pro quo. We don’t exclusively claim it and you won’t either.

Similarly, patentable ideas might have been developed over the years at more than one school. So they only got really serious about latching onto those once the stakes got high enough to endure the hornets. Computer Science was one of the key fields in making them realize the money involved. We and the Biologists and such say “You’re welcome.”

The last school I worked at rolled out a required form regarding patents. Even for existing faculty. “Don’t sign it? Well, we can’t fire tenured people but then we can not pay you, kick you out of your office and, worst of all, take your parking space.”

It was horrible. You submitted your idea to their IP lawyers. They had a year to decide what to do: file on your behalf and take half or let you have it. Um, this was bad before but now it’s a first to file system. You do not wait one day to decide to file or not.

(And I mistyped “Defintion” instead of “Defnition”!)