united-states contract-law intellectual-property
If a contract states &quot;Not a Works for Hire&quot; does the author (programmer) own the IP?
<p>I have been reading about programmers' (authors) rights/ownership of IP based on whether a contract specified (and both sides agreed) whether or not the work performed was a work for hire.  In cases where there was uncertainty about the work for hire status of a contract, courts have held that since the programmer was (a) not a regular employee, (b) FICA was not collected, or (c) the programmer &quot;could not be assigned to other projects&quot; by the contracting company were enough to lead the court to decide that the programmer was the owner of the IP that was developed.</p>
<p>The question is, if a programmer was able to execute a contract that stated the work is not a work for hire, and there was nevertheless the typical blanket statement in the contract that the contracting company owns all IP and the programmer essentially has no rights, etc., would the programmer be able to claim ownership of any IP developed because the contract was not a work for hire?  (Assume the environment is federal (US) and not state-dependent.)</p>

<p>A provision in the contract that the IP is not a work-made-for-hire (WFH) might be effective. But just because something is not a WFH does not mean that the programmer owns the copyright. There are several ways for the purchaser (client) to wind up owning the copyright(s) involved.</p>
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<li><p>If the work qualifies as a WFH, either because the creator is in fact an employee and the creation is within the scope of employment, or because there is a contract explicitly saying so, under US copyright law (17 USC 101) the employer/client is legally the author, and the creator never owns the copyright.</p>
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<li><p>If the work does not qualify as a WFH, but there is a valid contract provision saying that the client owns &quot;all IP&quot;, then the creator is the author, but has <strong>assigned</strong> the copyright as part of the deal. The legal effect is the same as if the author had later separately sold the copyright to the client. The author's life is used to measure the duration of copyright (not the 95 years for corporate authorship). The author may retain the right to assert authorship. But the client owns the copyright.</p>
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<li><p>If the client, in a separate later transaction, explicitly buys the copyright, the client will thereafter own it. The legal effect is essentially the same as 2 above.</p>
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<p>If the programmer wants to retain the copyright, it is not enough to include a provision saying that the work is not a WFH. There should ideally be a provision saying that the author (programmer) will retain the copyright(s). At least there should <strong>not</strong> be a provision saying that the client will own &quot;all IP&quot;.</p>
<p>When the programmer agrees to a contract with a &quot;client owns all IP&quot; provision, the programmer is, in effect, selling the copyright as part of the deal. When there are two apparently conflicting provisions in a contract, courts normally try to find a way to honor both.  In the case described in the question, this would most likely mean determining that the work was not a WFH, but that the copyright had been transferred by the author to the client.</p>
<p>By the way, all copyright law in the US is now Federal, and does not vary from state to state. State law may affect when a person is considered a <em>bona-fide</em> employee, but once that decision is made, the copyright law (17 USC) takes over.  An employment contract can specify that the employee retains copyrights, but this is almost never done. Works created by a <em>bona-fide</em> employee, in the course of the employment, are almost always treated as WFH.</p>
