Website considered "work for hire" if produced by non-employee?

[bonopro]

Do website design and layout fall under the definition of 'work for hire' if it was produced by an outside contractor? I produced a significant amount of design work for a company and have not received adequate compensation for the work — I've been paid roughly 1/10 of the market value, based on our original contract.

They are demanding all of the assets, despite the lack of fair market compensation. My initial research tells me that they may not have claim to the work based on the "work made for hire" clause in my contract. Below is the pertinent section:

2. Ownership; Rights; Proprietary Information; Publicity.

a. Company shall own all right, title and interest (including patent rights, copyrights, trade secret rights, mask work rights, trademark rights, sui generis database rights and all other intellectual property rights of any sort throughout the world) relating to any and all inventions (whether or not patentable), works of authorship, mask works, designations, designs, know-how, ideas and information made or conceived or reduced to practice, in whole or in part, by or for or on behalf of Consultant during the term of this Agreement that relate to the subject matter of or arise out of or in connection with the Services or any Proprietary Information (as defined below) (collectively, “Inventions”) and Consultant will promptly disclose and provide all Inventions to Company. All Inventions are work made for hire to the extent allowed by law and, in addition, Consultant hereby makes all assignments necessary to accomplish the foregoing ownership; provided that no assignment is made that extends beyond what would be allowed under applicable law if Consultant was an employee of Company. Consultant shall assist Company, at Company’s expense, to further evidence, record and perfect such assignments, and to perfect, obtain, maintain, enforce and defend any rights assigned. Consultant hereby irrevocably designates and appoints Company as its agents and attorneys-in- fact, coupled with an interest, to act for and on Consultant’s behalf to execute and file any document and to do all other lawfully permitted acts to further the foregoing with the same legal force and effect as if executed by Consultant and all other creators or owners of the applicable Invention.

I am not and was not EVER an employee of this company. I'm trying to figure out if there are any options I have for obtaining fair compensation for this work.

Thanks!

 

[quincy]

Works made for hire can either be works created by an employee within the scope of his employment OR certain works that are created under a written contract that specifies that the work created is a work made for hire and rights to the work belong to the party who commissioned the work.

Works that are not created by an employee for his employer within the scope of the employee's employment, but instead are created as a commissioned work by an outside party for this employer, must fit within one of nine categories of work outlined in the Copyright Act, 17 US Code, Section 101, in order to be considered a work made for hire. In addition, this work made for hire must be agreed to by the parties with a written and signed contract that designates the work as a work made for hire.

Whether the website design and layout, with its intended uses, falls within one of these nine categories and can therefore be considered a work made for hire, is something you may wish to discuss with an attorney in your area who can review the matter personally. In addition, while copyright protection is available for parts of a website or Web page, this copyright protection is not generally afforded the website or Web page's design and layout. These would or could be protected under trademark laws, however.

If the website design and layout, or parts thereof, can be considered copyright-protectable works from one of the nine categories, then whether you retain rights or not will depend on the specifics of the written contract you signed.

This contract with all of its terms and conditions was, I assume, read by you before signing. By signing the contract, you agreed to all terms and conditions, including the amount of compensation offered for the works you created. The excerpt from the contract you signed and included here indicates that you signed all of your rights to the works created over to the Company in exchange for the compensation also agreed to in the contract.

You, by the way, are not called an employee in this contract. In the clause it states that you and the Company are held to the same laws in regard to intellectual property ownership that would apply if you were an employee of the company. In other words, through this contract the Company is stating that it has no greater rights in the works than they would if you were an employee of the Company creating the work within the scope of your employment, but also that the Company has no lesser rights than they would if you were an employee.

Again, review with an attorney the contract in its entirety. I personally do not see where that one clause helps you retain any rights in the rights-protectable parts of the website design and layout you created. It appears to me that you have sufficiently released all of your rights in the works to the Company in exchange for whatever compensation was agreed to in this contract. Any additional compensation you may desire, based on the current estimated market value of the work, would require talks with the Company to see if they will compensate you further.

My advice to you is to check with an IP attorney in your area to see, first, if the copyrightable parts of the website design and layout do indeed fall within one of the nine categories outlined in the Copyright Act, which would allow for the works to be considered works made for hire, and to further determine what rights are governed by trademark law. If the design and layout fall within one of the categories and/or are covered by trademark laws, have the attorney go over the contract in its entirety to see if it is ironclad and has sufficiently released all of your rights in the work for the amount you were paid.

Good luck.