When Is Software a Work for Hire?

A recent California case provides a good illustration of different possible grounds for finding that software is a work made for hire under the Copyright Act.  Siniouguine v.  Mediachase Ltd., CV 11-6113-JFW (AGRx) (C.D. Cal. June 11, 2012).  Among other things, the court held that the software was “specially commissioned” and qualified as a work made for hire as “contributions to a collective work" and "compilations.”

Siniouguine, the plaintiff, had been employed by Mediachase, the defendant.  He had signed an employment agreement under which his work product was “a 'work-made-for-hire' specially ordered or commissioned by” Mediachase.  The plaintiff subsequently assisted in creating a calendar application and an e-commerce application, referred to as “the Programs.”  After the plaintiff sued Mediachase for copyright infringement and a declaration of copyright ownership, Mediachase brought a plethora of counterclaims, and argued that it owned the copyrights, either by assignment or as works made for hire.

The US Copyright Act defines a “work made for hire” as either a “(1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use” in one of nine enumerated categories “if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.”  17 USC § 101(2).

Here, there was a written agreement under which the Programs were to be treated as a work made for hire.  Within that prerequisite established, the court held that the Programs were specially commissioned, and thus qualified as works made for hire under 17 USC § 101(2) “because they are both 'contributions to a collective work' and 'compilations.'”  The court reasoned that the Programs were “'contributions to a collective work' because they are separate and independently protectable works that are intended to be combined with customers' own programming and content to create a collective whole, namely a fully functioning commercial website.”  Further, the Programs were “'compilations' because they include an original selection, arrangement and organization of nonliteral elements in their code.”

Alternatively, weighing factors set forth by the Supreme Court and the Ninth Circuit, it was easy to conclude that the plaintiff had been an employee.  Moreover, his work on the Programs was within the scope of his employment.  Thus, the plaintiff's employment status provided an independent basis for invoking the work for hire doctrine.

In addition, under the employment agreement the plaintiff was obligated to assign copyright ownership.  Thus, even if the Programs had not been a work made for hire, copyright ownership nonetheless would have vested in Mediachase.

In sum, this case illustrates three different ways that an employer can obtain software copyright: via an assignment, as a work made for hire by an employee, or as a “specially commissioned” work for hire  falling into one of the categories enumerated in 17 USC § 101(2).  Moreover, these modes could apply to someone whose employment status is uncertain, or even to an independent contractor.  Certainly an independent contractor can make an assignment of a copyright, or can make “specially commissioned” works that qualify as contributions to collective work or compilations.  And in some instances, as cases cited by the Siniouguine court suggest, the line between an employee and independent contractor is gray.