A Reason Why Your Contractual Agreement Shouldn't Be a “Work for Hire”

You could certainly argue that writing software as part of a team is "a contribution to a collective work".

What surprises me is how many startups are not even aware of at least including a "work for hire" clause when bring on software developers.

My old law partner liked to harp on this point as well, and it is a valid one. However, as a matter of practice most well-drafted work-for-hire agreements also contain a backup assignment clause something like "to the extent the work is not a work-for-hire, I hereby assign the copyright". "Work-for-hire" is one of the many misnomers you find in commercial contracts, along with "intellectual property".

Sure, but even then if contributed code is part of a collective work, the copyright act still requires a work for hire agreement.

Section 101 says: A “work made for hire” is—

(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 as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

https://www.copyright.gov/title17/92chap1.html#101

>A highly recommended practice is to institute a clause which covers a variety of scenarios of assignment of the copyright for all work produced.

This is what I've done for years with my Service Agreement. IP transfer officially occurs on full payment, and rights are assigned to Client if Product would not be considered a work made for hire under applicable law. Though if I'm not paid, I send a written warning after N past due. If still don't get paid N days past said notice, I reserve the right to equitable relief, send a cease to desist, and if I still don't get paid I can go to court and get an injunction to stop Client from using it. There is some language that clearly provides a grace period to the Client to use it while awaiting invoices, etc.

IP transfer is the most leverage you have as a freelance software consultant. It's the one thing you should have clearly defined in a Services Agreement, and you shouldn't waffle on.

I agree, a "work for hire" is MINIMUM. Author makes a good point that even more is required.