Creative Works At Work: How To Retain IP Ownership
If your employer assigns you the task of producing a creative work, such as a photograph or a collage for advertising purposes, do not automatically assume you will own the intellectual property (IP) rights or even receive credit for it.
The employer usually owns the IP rights to anything made in the “ordinary course of employment.” This is known as the work-for-hire doctrine. As with most legal concepts, the doctrine defines the "ordinary course of employment" in a very precise manner, reducing it into factors to be considered together. One factor is whether or not the work is produced during company time or with company resources. Another factor is whether either party takes action to indicate ownership of the intellectual party. Finally, a third inquiry is whether the work is included in the employee’s job description. Projects that are within the employee’s job description are likely considered works-for-hire.
However, you can still retain IP ownership over property created in the ordinary course of employment by executing a written agreement with the employer. Negotiate with your employer so that the terms of the agreement are clear and all parties involved are aware of expectations and responsibilities. Retaining such rights is important because IP licensing can be highly profitable.
If you have thought about engaging in creative endeavors for your employer, consider whether the product is going to be a work-for-hire. If you are unsure about your rights, or wish to retain certain rights with the ability to license, contact me for advice regarding negotiations and drafting the written agreement.
