Legal Question in Intellectual Property in New York

Re: ''Work for Hire''

The principle of "work made for hire" (sometimes shortened to "work for hire") applies when an employee generates a copyrightable work of authorship within the scope of employment (as well as certain other situations not relevant to this discussion). In that event, the employer automatically owns the copyright and may file a copyright application as the author.

The U.S. Supreme Court, in the case of Community for Creative Non-Violence v. Reid, held that the principle does not apply between an independent contractor and his client. The independent contractor automatically owns the copyright, even if he has delivered the work (in that case, a huge sculpture) to the client and has been paid for the tangible embodiment, the sculpture.

I once litigated in federal court a dispute between a photographer and a magazine publisher. The author sought compensation when his photographs were re-published in advertisements. The publisher contended that the photos were works for hire and thus that it had the right to republish the photos. The appellate court held that the photographs were not works for hire and so the copyrights were owned by the photographer.

The law as to what happens when someone generates a creative work can be confusing. It sounds like your customer is confused. Your scenario demonstrates that it's wise to get the deal expressed in writing upfront.

If push comes to shove, it would be appropriate for you to consult confidentially a lawyer with experience in intellectual property to advise of your rights and responsibilities in this situation.