質問
Good evening, everybody!
I am working with a team of IT and Marketing specialists on an app-development project, which we intend to monetize and turn into a successful venture. We do not have the luck to count a lawyer among our members so I am very interested in this "Ask an Expert" feature.
Soon we will start farming out some of the work to third-party contractors. I would like to know: If I hire someone to work for me on a clearly defined project, do I automatically own the Intellectual Property that is created by the contractor? I assume it is probably not that simple, so what kind of steps do I have to take?
Thank you very much!
回答: 3 公開 & 1 非公開
Hi
The US patent attorneys on this portal will be able to give more detailed advice but to answer generally - No, you don't automatically own the IP.
I don't know where your third-party contractors will be based but in many territories, a distinction is made between employees and non-employees. IP created by employees in the “course of business” usually belongs to the employer. For anyone who is not an employee, you need a contract in place not only assigning (transferring) IP to you but describing exactly what is being transferred. This is because the developer may want to license rather than transfer certain elements of IP to you. For instance, a developer working with other clients as part of their own business may need to retain the source code they already use because transferring exclusive use to you would in effect put them out of business once they move on from your project.
You say you hope to turn this into a successful venture, I would strongly advise you don’t scrimp on your legal advice, try to find and negotiate a fee with a good attorney who works in this particular field.
Write into the contract that it is a "work for hire". By law, authors own copyright to works so it needs to be overriden, so also be clear what happens with partial work or in case of non-payment on your side. Also depending on code there may be prior elements such as OpenSource license emcumbrances.
As an initial matter, at least part of your venture's budget should account for legal services. Generalized opinions on websites like IPNexus and Avvo are helpful, but truly useable advice is very fact specific and should be elicited through private correspondence with an attorney.
That being said, the other contributors raise important points: (i) you very likely will not own the work created by the third-party ICs; and (ii) you need some contractual language in place. "Work for hire" is, like many IP-related terms, a bit abused and misunderstood. A "work made for hire" is defined in 17 U.S.C. s 101 and most often the definition will not apply to what one might hire an IC to do. Language invoking the term is invariably incorporated into an IC agreement's IP provision(s), but more important than calling something a "work for hire" (when it usually is not) is to have catch-all language contractually assigning all IP rights in whatever is being created to you, the client.
Software development-related IC agreement do not have to be monstrous and with some judicious searching, you should be able to find a local IP attorney who can evaluate your situation and provide a flat-fee quote.
Disclaimer:
This communication: (i) is not a substitute for professional legal advice; (ii) does not create any attorney-client relationship; and (iii) is not a solicitation to offer legal advice. There is no duty to keep any confidential information you disclose in this forum confidential or refrain from providing representation adverse to your interests. You should seek the advice of a licensed attorney in an appropriate jurisdiction before taking any action that may affect your rights.
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