Interesting Work For Hire Question
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Posted by Rich V. on February 06, 2002 at 02:46:06:
Here’s a question for the copyright experts, that I have not seen adequately addressed by the numerous copyright references I have reviewed:
How does an employer protect itself against an employee incorporating employee-owned preexisting materials in works made for hire? Let me elaborate. An employer assumes that it is getting exclusive rights to its employee’s works for hire. However, if such works for hire incorporate (and/or are derivate works of) preexisting works that the employee created before his/her employment, doesn’t the employee retain ownership of such works? In which case, the employee could still exploit his/her rights in those preexisting works, thereby negating the employer's expectations that it is getting exclusive rights to the employee's works for hire. I have seen employment agreements in which the employer requires the employee to covenant that the employee will not incorporate into any works for hire any copyrighted materials of any third party, but nothing that addresses the incorporation of preexisting works owned by the employee.
I have a similar question about independent contractor development agreements— if the agreement states that all developer work product constitutes works made for hire and/or the copyrights in the work product are assigned by the developer to the buyer, and the agreement is silent about the treatment of any preexisting materials incorporated in the work product, what are the parties’ respective rights with respect to any preexisting materials owned by the developer? I know that a good agreement will address this issue (e.g., granting license to buyer to use, etc. preexisting materials in order to allow the buyer to achieve the full benefit of its ownership rights in the work product), but many I have seen do not and wonder how copyright law answers this question.
Thanks for any responses.
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