Chapter 16:ACQUIRING IP RIGHTS: WORK MADE FOR HIRE AGREEMENT

CHAPTER 16

Acquiring IP Rights: Work Made for Hire Agreement

A WORK MADE FOR HIRE AGREEMENT alters the relationship of an employer and a freelance creator to allow the employer, not the creator, to acquire the IP rights in the creation. This agreement is required only if the creator is operating on a freelance basis for the employer. In such a case, the creator would be the owner of the IP rights under law, unless the parties agree otherwise in writing. If the creator is an employee, works created within the scope of the employment are presumed to be works made for hire without agreement between the parties, although the parties may change the ownership rights by express written agreement. For discussion of the technical term “work made for hire,” see Chapter 1.

Work Made for Hire Agreement

USE OF FORM The following form is placed in a letter format because this arrangement is often made informally through the mail without the parties ever meeting face to face. This type of contract is most commonly used for creations that are protected by copyright, and this form additionally focuses on creation of a manuscript for illustrative purposes. However, with slight modification it could instead apply to other types of works that can be protected by copyright, and even to other types of creations, including patents and marks.

WORK MADE FOR HIRE AGREEMENT

[company name and address] [telephone, fax, and e-mail] [date] [name and address of creator]

DEAR [Sir/Madam]:

THANK YOU AGAIN FOR AGREEING TO PREPARE THE MANUSCRIPT, AS DEFINED IN THE FOLLOWING TERMS. WE CLARIFY AND EMPHASIZE AGAIN THAT YOU ARE PREPARING THE MANUSCRIPT AS AN INDEPENDENT CONTRACTOR AND THAT THE MANUSCRIPT IS ONE MADE FOR HIRE, WHICH MEANS YOU ARE RELINQUISHING ALL RIGHTS IN THE COPYRIGHT TO OUR COMPANY.

ACCORDINGLY, THIS LETTER CONSTITUTES THE ENTIRE AGREEMENT BETWEEN OUR COMPANY AND YOU FOR YOUR PREPARATION OF THE MANUSCRIPT ON THE FOLLOWING TERMS AND CONDITIONS:

1. TOPIC, FORM, AND SIZE YOU AGREE TO PREPARE [title of manuscript], CONSISTING OF APPROXIMATELY [number] WORDS, WHICH IS EXPECTED TO YIELD APPROXIMATELY [number] PUBLISHED PAGES (“THE MANUSCRIPT”). 2. COMPENSATION FOR PERFORMANCE UNDER THIS AGREEMENT, OUR COMPANY AGREES TO PAY YOU [amount] WITHIN [number] [days/weeks] OF ACCEPTANCE OF THE MANUSCRIPT, AND IN ANY EVENT NO LATER THAN [number] [days/weeks] AFTER THE DATE WHEN THE MANUSCRIPT HAS BEEN SUBMITTED TO THE COMPANY.

3. WRITING SCHEDULE YOU AGREE TO SUBMIT THE FINAL MANUSCRIPT TO THE COMPANY ON OR BEFORE [date]. 4. PRODUCTION OF MANUSCRIPT YOU WILL PREPARE AND PRESENT THE MANUSCRIPT IN AN ELECTRONIC FORM THAT IS COMPATIBLE WITH THE COMPANY’S SOFTWARE PROGRAMS, AS SPECIFIED IN WRITTEN INSTRUCTIONS PROVIDED TO YOU BY THE COMPANY. YOU NOW ACKNOWLEDGES RECEIPT OF THESE INSTRUCTIONS.

5. COMPANY’S ACTIONS REGARDING THE MANUSCRIPT THE COMPANY HAS THE RIGHT TO EDIT THE MANUSCRIPT IN ANY MANNER THAT THE COMPANY DEEMS FIT, INCLUDING WITHOUT LIMIT REWRITING, ADDING TO, DELETING FROM, CONDENSING, AND REORGANIZING. THE COMPANY HAS THE RIGHT TO REQUEST REASONABLE REVISIONS TO THE MANUSCRIPT TO CONFORM TO THE COMPANY’S SUBMISSION REQUIREMENTS PROVIDED TO YOU AT THE TIME OF CONTRACTING. YOU AGREE TO MAKE THE CHANGES, ADDITIONS, AND DELETIONS IN THE MANUSCRIPT THAT THE COMPANY MAY REQUEST FOR THIS REASON. YOU NOW ACKNOWLEDGE RECEIPT OF THE COMPANY’S SUBMISSION REQUIREMENTS.

6. TERMINATION OF AGREEMENT BY THE COMPANY IN ITS REASONABLE DISCRETION, THE COMPANY MAY REJECT ANY MANUSCRIPT THAT IT CONSIDERS IS OF DEFICIENT QUALITY OR FAILS TO MEET THE MANUSCRIPT SUBMISSION REQUIREMENTS PROVIDED TO YOU AT THE TIME OF CONTRACTING. ON REJECTING THE MANUSCRIPT, THE COMPANY MAY TERMINATE THIS AGREEMENT. IF THE MANUSCRIPT IS RETURNED FOR FURTHER WORK AND YOU FAIL TO REVISE IT SO THAT IT BECOMES ACCEPTABLE TO THE COMPANY, THE COMPANY MAY TERMINATE THIS AGREEMENT. IF THIS AGREEMENT IS TERMINATED, THE COMPANY SHALL RETURN YOUR UNPUBLISHED MATERIALS. IN SUCH EVENT, THE PARTIES SHALL BE RELEASED AND DISCHARGED FROM ANY CLAIMS GROWING OUT OF THIS AGREEMENT.

7. COPYRIGHT YOU UNDERSTAND AND AGREE THAT THIS MANUSCRIPT IS A “WORK MADE FOR HIRE” AND THAT THE COMPANY OWNS ALL RIGHT, TITLE, AND INTEREST IN THE MANUSCRIPT, INCLUDING THE COPYRIGHT. FURTHERMORE, IN THE EVENT THAT THIS MANUSCRIPT SHOULD BE FOUND BY A COURT OF LAW OR OTHERWISE NOT TO CONSTITUTE A WORK MADE FOR HIRE, YOU NOW ASSIGN AND TRANSFER TO THE COMPANY, ITS SUCCESSORS, AND ASSIGNS, ALL RIGHT, TITLE, AND INTEREST IN AND TO THE MANUSCRIPT AND ANY SUBSEQUENT UPKEEP, INCLUDING THE COPYRIGHT THEREIN AND ALL EXCLUSIVE COPYRIGHTS THROUGHOUT THE WORLD, FOR SUCH TERM AS IS NOW OR HEREAFTER AUTHORIZED BY LAW. THE COMPANY SHALL HAVE THE RIGHT, AS YOUR ASSIGNEE AND TRANSFEREE, TO SECURE COPYRIGHT REGISTRATION AND RENEWALS, IF ANY, IN ITS NAME. YOU MAY NOT REPRINT ANY MATERIAL FROM THE MANUSCRIPT, NOR GIVE PERMISSION TO ANYONE ELSE TO REPRINT THE MATERIAL, WITHOUT THE COMPANY’S PRIOR WRITTEN CONSENT. IF THIS AGREEMENT IS TERMINATED BEFORE THE DATE THE MANUSCRIPT IS PUBLISHED, THE COMPANY SHALL REASSIGN THE COPYRIGHT TO YOU.

8. AVOIDANCE OF INFRINGEMENT THE COMPANY’S POLICY IS THAT ALL MATERIALS THAT IT PUBLISHES MUST BE THE RESULT OF THE INDEPENDENT INTELLECTUAL EFFORTS OF THE AUTHORS. THE COPYING AND USE OF THE PUBLISHED MATERIALS OF OTHER AUTHORS, EVEN IF SUCH COPYING OR USE IS NOT LEGALLY ACTIONABLE, SHOULD BE DONE ONLY IN PURSUIT OF SUCH INDEPENDENT INTELLECTUAL EFFORT AND WITH PROPER ATTRIBUTION TO THE ORIGINAL SOURCES. EXCEPT FOR ORIGINAL MATERIAL CREATED BY YOU OR YOUR SUBCONTRACTING CONTRIBUTORS, THE MANUSCRIPT SHALL NOT CONTAIN ANY MATERIAL PROTECTED UNDER UNITED STATES COPYRIGHT LAW OR ANY OTHER LAW OF SIMILAR PURPOSE EXCEPT TO THE EXTENT OF “FAIR USE” AS THAT CONCEPT IS DEFINED IN SUCH LAWS, UNLESS YOU HAVE OBTAINED WRITTEN CONSENT TO REPRINT FROM THE PUBLISHER AND OWNER OF THE OTHERWISE PROTECTED MATERIAL AND SUPPLIED THAT CONSENT TO THE COMPANY WITH THE MANUSCRIPT. YOU MUST IDENTIFY ALL MATERIAL IN THE MANUSCRIPT FOR WHICH THE COPYRIGHT IS OWNED OR CLAIMED BY SUCH PUBLISHER AND OWNER. YOU SHALL BE SOLELY RESPONSIBLE FOR DETERMINING WHETHER THE MANUSCRIPT SATISFIES THE “FAIR USE” EXCEPTION. NOTWITHSTANDING THE FOREGOING, THE COMPANY MAY REFUSE TO PUBLISH ANY MATERIAL THAT IN ITS OWN JUDGMENT DOES NOT CONSTITUTE “FAIR USE.”

9. CONFIDENTIALITY YOU AGREE THAT ANY INFORMATION PROVIDED BY THE COMPANY RELATING TO ITS PUBLICATION PLANS AND PROCESSES AND MARKETING PLANS AND PROJECTIONS FOR THE MANUSCRIPT IS PROVIDED IN CONFIDENCE, AND YOU AGREE NOT TO DISCLOSE SUCH INFORMATION WITHOUT THE COMPANY’S AUTHORIZATION, EXCEPT IN CONFIDENCE TO COCONTRIBUTORS AS NECESSARY IN THE PERFORMANCE OF YOUR OBLIGATIONS UNDER THIS AGREEMENT.

10. CONTRIBUTOR STATUS IN MAKING AND PERFORMING THIS AGREEMENT, THE PARTIES ACT AND SHALL ACT AT ALL TIMES AS INDEPENDENT CONTRACTORS, AND AT NO TIME SHALL EITHER PARTY MAKE ANY COMMITMENTS OR INCUR ANY CHARGES OR EXPENSES FOR OR IN THE NAME OF THE OTHER PARTY. YOU UNDERSTAND AND AGREE THAT YOU ARE NOT AN EMPLOYEE OF THE COMPANY AND ARE NOT ENTITLED TO PARTICIPATE IN ANY PENSION PLAN, UNEMPLOYMENT INSURANCE, BONUS, WORKER’S COMPENSATION INSURANCE, STOCK OR SIMILAR BENEFITS THAT THE COMPANY PROVIDES FOR ITS EMPLOYEES. YOU SHALL BE RESPONSIBLE FOR PERFORMING THE WORK UNDER THIS AGREEMENT IN A SKILLFUL MANNER AND SHALL BE LIABLE FOR THE CONSEQUENCES OF YOUR OWN ACTS AND/OR OMISSIONS, IF ANY. FURTHER, YOU SHALL BE RESPONSIBLE FOR ALL PAYMENTS OF INCOME TAXES, WITHHOLDING TAXES, AND OTHER TAXES, PENALTIES AND/OR OTHER SIMILAR CONTRIBUTIONS THAT HAVE ARISEN OR MAY ARISE OUT OF YOUR SERVICES UNDER THIS AGREEMENT.

11. CONFLICTING INTERESTS OF THE CONTRIBUTOR YOU WARRANT THAT YOU HAVE DISCLOSED TO THE COMPANY ANY SUBSTANTIALLY SIMILAR COMMERCIAL WRITING PROJECT PERFORMED OR AGREED TO BE PERFORMED BY YOU FOR ANOTHER PUBLISHER OR PERSON. YOU ARE NOT PRECLUDED FROM ENGAGING IN ANY SUCH WRITING PROJECT FOR ANOTHER PUBLISHER OR PERSON, AND YOU ARE FREE TO CONTRACT FOR SIMILAR SERVICES TO BE PERFORMED FOR OTHER PARTIES.

12. EDITORIAL ASSISTANTS AND CONTRIBUTORS AS AN INDEPENDENT CONTRACTOR, YOU MAY ENGAGE AT YOUR OWN EXPENSE ANY ASSISTANTS AND CONTRIBUTORS AS MAY BE DESIRED. IN NO EVENT WILL SUCH ASSISTANTS AND CONTRIBUTORS BE DEEMED TO HAVE BEEN EMPLOYED BY THE COMPANY, UNLESS OTHERWISE AGREED TO BY THE COMPANY IN WRITING.

13. MATERIALS, TOOLS, AND EQUIPMENT YOU SHALL FURNISH AT YOUR EXPENSE ALL MATERIALS, TOOLS, AND EQUIPMENT NEEDED BY YOU TO CARRY OUT THE WORK TO BE PERFORMED UNDER THIS AGREEMENT, EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN WRITING. THE ACCEPTANCE OR USE BY YOU OF ANY MATERIALS FURNISHED, LOANED, OR RENTED TO YOU BY THE COMPANY SHALL BE CONSTRUED TO MEAN THAT YOU ACCEPT FULL RESPONSIBILITY FOR THE LOSS OF OR DAMAGE TO SUCH MATERIALS AND FOR THE MAINTENANCE THEREOF.

14. ASSIGNMENT OF RIGHTS THE COMPANY MAY ASSIGN ANY OF ITS RIGHTS ARISING UNDER THIS AGREEMENT WITHOUT PRIOR NOTICE TO YOU AND WITHOUT YOUR CONSENT; HOWEVER, THE COMPANY SHALL NOT BE RELEASED FROM ANY OF ITS OBLIGATIONS UNDER THIS AGREEMENT WITHOUT YOUR SPECIFIC CONSENT. THIS AGREEMENT IS PERSONAL TO YOU, AND RIGHTS HEREUNDER GRANTED TO YOU ARE NOT ASSIGNABLE, NOR MAY THE OBLIGATIONS IMPOSED BE DELEGATED WITHOUT THE PRIOR WRITTEN CONSENT OF THE COMPANY. EXCEPT AS PROVIDED IN THE PRECEDING SENTENCE, THIS AGREEMENT SHALL INURE TO THE BENEFIT OF YOUR HEIRS, EXECUTORS, ADMINISTRATORS, AND ASSIGNS AND THE SUBSIDIARIES, SUCCESSORS, AND ASSIGNS OF THE COMPANY. 15. RETENTION OF MANUSCRIPT YOU MUST RETAIN AT LEAST ONE COPY OF THE MANUSCRIPT FINALLY SUBMITTED TO THE COMPANY FOR 60 DAYS AFTER DELIVERY OF THE MANUSCRIPT, OR UNTIL THE COMPANY AUTHORIZES DESTRUCTION, WHICHEVER OCCURS FIRST. 16. GOVERNING LAW THIS AGREEMENT SHALL BE CONSTRUED AS ENTERED INTO IN AND GOVERNED BY THE LAWS OF THE [state/province, country]. 17. EFFECTIVE DATE THIS AGREEMENT IS MADE EFFECTIVE AS OF THE DATE FIRST WRITTEN ABOVE.

IF THIS AGREEMENT IS SATISFACTORY TO YOU, PLEASE SIGN WHERE INDICATED BELOW AND THE CONTRACT WILL THEN BE BINDING. PLEASE SIGN BOTH COPIES, RETAIN ONE FOR YOUR OWN RECORDS, AND RETURN THE OTHER TO US. WE LOOK FORWARD TO WORKING WITH YOU.

SINCERELY YOURS, [Company Name] [signature] [typed name] [title]

I UNDERSTAND AND AGREE TO THE TERMS OF THIS CONTRACT.

[signature] [typed name]