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I have been reading about programmers' (authors) rights/ownership of IP based on whether a contract specified (and both sides agreed) whether or not the work performed was a work for hire. In cases where there was uncertainty about the work for hire status of a contract, courts have held that since the programmer was (a) not a regular employee, (b) FICA was not collected, or (c) the programmer "could not be assigned to other projects" by the contracting company were enough to lead the court to decide that the programmer was the owner of the IP that was developed.

The question is, if a programmer was able to execute a contract that stated the work is not a work for hire, and there was nevertheless the typical blanket statement in the contract that the contracting company owns all IP and the programmer essentially has no rights, etc., would the programmer be able to claim ownership of any IP developed because the contract was not a work for hire? (Assume the environment is federal (US) and not state-dependent.)

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A provision in the contract that the IP is not a work-made-for-hire (WFH) might be effective. But just because something is not a WFH does not mean that the programmer owns the copyright. There are several ways for the purchaser (client) to wind up owning the copyright(s) involved.

  1. If the work qualifies as a WFH, either because the creator is in fact an employee and the creation is within the scope of employment, or because there is a contract explicitly saying so, under US copyright law (17 USC 101) the employer/client is legally the author, and the creator never owns the copyright.

  2. If the work does not qualify as a WFH, but there is a valid contract provision saying that the client owns "all IP", then the creator is the author, but has assigned the copyright as part of the deal. The legal effect is the same as if the author had later separately sold the copyright to the client. The author's life is used to measure the duration of copyright (not the 95 years for corporate authorship). The author may retain the right to assert authorship. But the client owns the copyright.

  3. If the client, in a separate later transaction, explicitly buys the copyright, the client will thereafter own it. The legal effect is essentially the same as 2 above.

If the programmer wants to retain the copyright, it is not enough to include a provision saying that the work is not a WFH. There should ideally be a provision saying that the author (programmer) will retain the copyright(s). At least there should not be a provision saying that the client will own "all IP".

When the programmer agrees to a contract with a "client owns all IP" provision, the programmer is, in effect, selling the copyright as part of the deal. When there are two apparently conflicting provisions in a contract, courts normally try to find a way to honor both. In the case described in the question, this would most likely mean determining that the work was not a WFH, but that the copyright had been transferred by the author to the client.

By the way, all copyright law in the US is now Federal, and does not vary from state to state. State law may affect when a person is considered a bona-fide employee, but once that decision is made, the copyright law (17 USC) takes over. An employment contract can specify that the employee retains copyrights, but this is almost never done. Works created by a bona-fide employee, in the course of the employment, are almost always treated as WFH.

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"Work made for hire" is a legally defined term in 17 U.S. Code § 101. So when the rest of the contract describes a work arrangement which fulfills in that definition, then simply claiming that it's "not a work for hire" doesn't make it so. You can't sell a painted horse as a zebra just by calling it a zebra.

However, when both parties agree to who should own the copyright of the work, then there is a far simpler way to do that. The "work for hire" rule only covers cases where no other agreement regarding the copyright status was made. If the parties want to clarify that the contractor retains the copyright to the work, then they can simply state so in the contract by adding a copyright transfer clause. When the contract has clauses which explicitly settle the question of copyright, then the implicit rules from whether or not it's a work for hire don't matter anymore.

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    Not quite correct. There are 2 ways for a work to be a WFH, 1) By employment; 2) by explicit contract. Changing the contract obviously changes 2. An employment contract can overcome 1. If the creator is not a valid employee 1) dos not apply. But a "client will own all IP" provision will act as a transfer of copyright, although not as a WFH agreement. The legal effects are different, although both leave the client with the copyright. Feb 9 '21 at 15:37
  • @DavidSiegel the explicit contract option seems to be limited in scope such that it would not include a computer program.
    – phoog
    Feb 9 '21 at 21:46
  • @Phoog The contract option for a WFH is limiter by purpose, not medium. A computer program might well serve as an instructional text, a supplementary work, or one of the other limited purposes. But even when a work is clearly not a WFH,the copyright may still be assigned by contrast, and a provision that the work not be considered a WFH will not prevent that. An explicit transfer or retention provision (whichever is wanted) is clearer and more effective. Feb 9 '21 at 21:58

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