united-states copyright contract-law software
Paid to write software, contract not signed. Who owns the software?
<p>I was hired, on a 1099 basis, to write a piece of software for a client. I created a contract to specify the work to be done and the cost. I was paid the full amount owed to me. However, the client never signed the contract, nor did I sign it. I sent him the contract about six months ago, as a first pass at a contract and figured we would haggle a bit back and forth. In the mean-time, I started work on the project and was paid in full, despite not having any sort of written agreement. </p>

<p>My question is this. Who owns the software I wrote? We were going to come to an agreement about that in the contract, but, as I said, the client never signed it and he never actually attempted to contact me during the course of my work to discuss it.</p>

<p>I know this sounds like an odd situation, that I would be paid, in full, without an agreed upon contract, but it happened.</p>

<p>This is in the United States.</p>

<p><em>The software is "work for hire" and the copyright is owned by the client, not you. This is the default rule when copyrightable work is done on this basis in the absence of an agreement to the contrary. To not be "work for hire" you would have had to have a written agreement to the contrary or would have had to written the software before you were engaged by the client and then sold it to the client as an off the shelf finished product.</em></p>

<p>[After further research I have determined that the language above is not accurate.]</p>

<p>While you didn't have a written agreement, you did have an agreement reached without committing it to a final written form signed by both parties that is sufficient to cover all of the material terms of the contract and that is a binding and fully performed agreement.</p>

<p>UPDATE: The "work for hire" issue is a bit more complex than I initially stated. Here is an <a href="https://www.americanbar.org/publications/tyl/topics/intellectual-property/copyrights_and_works_made_hire.html" rel="noreferrer">American Bar Association summary</a> of the issue in the independent contractor context (there is also a plausible argument that while the parties characterized you as an independent contractor for tax purposes that you were in fact of <em>de facto</em> temporary employee in which case it would automatically be work for hire, but I'll put that issue aside and take it at face value):</p>

<blockquote>
  <p>Under the Copyright Act (17 U.S.C. §§ 101 et seq.), a work is a “work
  made for hire” only if: (1) it is prepared by an employee within the
  scope of his employment; or (2) it is specially ordered or
  commissioned from an independent contractor pursuant to a written
  agreement and the work falls within one of nine statutorily defined
  categories. . . .</p>
  
  <p>For works created by independent contractors, only the following types
  of works are eligible to be “works made for hire”:</p>
  
  <ul>
  <li><p>a contribution to a “collective work” (a work, such as a periodical
  issue, anthology, or encyclopedia, in which a number of contributions,
  constituting separate and independent works in themselves, are
  assembled into a collective whole);</p></li>
  <li><p>a part of a motion picture or other audiovisual work;</p></li>
  <li><p>a translation;</p></li>
  <li><p>a “supplementary work” (a work prepared for publication as a secondary
  adjunct to a work by another author for the purpose of introducing,
  concluding, illustrating, explaining, revising, commenting upon, or
  assisting in the use of the other work, such as forewords, afterwords,
  pictorial illustrations, maps, charts, tables, editorial notes,
  musical arrangements, answer material for tests, bibliographies,
  appendixes, and indexes);</p></li>
  <li><p>a “compilation” (a work formed by the collection and assembling of
  preexisting materials or of data that are selected, coordinated, or
  arranged in such a way that the resulting work as a whole constitutes
  an original work of authorship);</p></li>
  <li><p>an “instructional text” (a literary, pictorial, or graphic work
  prepared for publication and with the purpose of use in systematic
  instructional activities);</p></li>
  <li><p>a test;</p></li>
  <li><p>answer material for a test; or</p></li>
  <li><p>an atlas.</p></li>
  </ul>
</blockquote>

<p>This software is clearly specially ordered or commissioned from an independent contractor. I suspect that if you looked at the course of dealings including the client's specification of what work needed to be done (probably in part by email or in some other written form) that it would meet the requirement of a written agreement even though there wasn't a document called a contract signed by both parties. But, this still begs the question of whether it falls in one of the nine statutory categories.</p>

<p>This American Bar Association source says that custom software doesn't qualify.</p>

<blockquote>
  <p><strong>The list above does not include many types of works that businesses
  frequently hire outside personnel to create, such as</strong> websites, logos,
  advertisements, photography, and <strong>custom software.</strong> For works that do
  fall within the defined categories, the business must have a written
  agreement from the author expressly stating that the work is made for
  hire for it to qualify as such.</p>
  
  <p>Although the agreement and course of dealings between a business and
  an independent contractor may give rise to an implied license for the
  business to use the works created by the contractor, it is highly
  preferable to avoid relying on an implied license. Any business that
  engages a non-employee to create a work and intends to own the
  copyright to such work should have a written agreement with the author
  expressly stating that the work is made for hire (if it falls within
  one of the eligible categories). If the work is not eligible to be a
  work made for hire, and for good measure even if it is, the written
  agreement should include a provision assigning the copyrights to the
  business. An example of such a provision is: “To the extent that the
  Work Product is not recognized as a ‘work made for hire’ as a matter
  of law, the Contractor hereby assigns to the Company any and all
  copyrights in and to the Work Product.” By including such a copyright
  assignment clause, a business will be able to obtain the copyrights it
  expects, even if the work does not qualify as a “work made for hire.”</p>
</blockquote>

<p>The <a href="https://www.copyright.gov/circs/circ09.pdf" rel="noreferrer">copyright office's official publication</a> on the subject provides a statutory citation (<a href="https://www.copyright.gov/title17/92chap1.html" rel="noreferrer">17 USC 101</a>), and doesn't contradict the ABA presentation, although it is less detailed and specific on the legal issues. This section of the United States Code is a series of definitions. The relevant one states:</p>

<blockquote>
  <p>A “work made for hire” is—</p>
  
  <p>(1) a work prepared by an employee within the scope of his or her
  employment; or</p>
  
  <p>(2) a work specially ordered or commissioned for use as a contribution
  to a collective work, as a part of a motion picture or other
  audiovisual work, as a translation, as a supplementary work, as a
  compilation, as an instructional text, as a test, as answer material
  for a test, or as an atlas, if the parties expressly agree in a
  written instrument signed by them that the work shall be considered a
  work made for hire. For the purpose of the foregoing sentence, a
  “supplementary work” is a work prepared for publication as a secondary
  adjunct to a work by another author for the purpose of introducing,
  concluding, illustrating, explaining, revising, commenting upon, or
  assisting in the use of the other work, such as forewords, afterwords,
  pictorial illustrations, maps, charts, tables, editorial notes,
  musical arrangements, answer material for tests, bibliographies,
  appendixes, and indexes, and an “instructional text” is a literary,
  pictorial, or graphic work prepared for publication and with the
  purpose of use in systematic instructional activities.</p>
  
  <p>In determining whether any work is eligible to be considered a work
  made for hire under paragraph (2), neither the amendment contained in
  section 1011(d) of the Intellectual Property and Communications
  Omnibus Reform Act of 1999, as enacted by section 1000(a)(9) of Public
  Law 106-113, nor the deletion of the words added by that amendment—</p>
  
  <p>(A) shall be considered or otherwise given any legal significance, or</p>
  
  <p>(B) shall be interpreted to indicate congressional approval or
  disapproval of, or acquiescence in, any judicial determination, by the
  courts or the Copyright Office. Paragraph (2) shall be interpreted as
  if both section 2(a)(1) of the Work Made for Hire and Copyright
  Corrections Act of 2000 and section 1011(d) of the Intellectual
  Property and Communications Omnibus Reform Act of 1999, as enacted by
  section 1000(a)(9) of Public Law 106-113, were never enacted, and
  without regard to any inaction or awareness by the Congress at any
  time of any judicial determinations.</p>
</blockquote>

<p>The contract is binding even though it was never signed. Your offer was in the form of the written contract: they accepted it by conduct (accepting the software and paying your bill).</p>

<p>The copyright belongs to whoever the contract says it belongs to. If the contract is silent and if you are an independent contractor not performing work for hire then that's you. They would have a perpetual license to use it.</p>

<p>Under US copyright law you would still own the copyright of your works unless they can prove you gave them a written and signed transfer of your copyright, as you were the "legal author" (as it was not a "work made for hire") and thus automatically owned the copyright. 17 USC §§ 201, 204.</p>

<p>As discussed by others, the US law on copyright ownership of "works made for hire" is far more restrictive on clients' ownership than what might seem natural expectations when hiring an independent contractor.</p>
