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Computer software as a work made for hire

As discussed in an earlier post, normally copyright automatically vests with the person who created the work, the author. However, under the work made for hire doctrine, copyright ownership flows to the employer or the person for whom the work is prepared because they are considered to be the author.

As applied in an employer-employee situation, there is no debate that computer software can be a work made for hire. See 17 U.S.C. 101 (definition of "work made for hire" section (1)). However, as applied in the independent contractor situation, the situation appears less definite. To qualify as a work made for hire, three elements must be met. See 17 U.S.C. 101 (definition of "work made for hire" section (2)).

First, the work "must be specially ordered or commissioned". This is a low bar as a work is specially commissioned when one person asks another to prepare a copyrighted work to benefit the requesting party. See Stanacard, LLC v. Rubard, LLC, Case No. 1:12-cv-0517-CM, at 14 (S.D.N.Y. February 3, 2016) (hosted on Mega.co.nz); Siniouguine v. Mediachase Ltd., Case No. CV 11-6113-JFW (AGRx) (C.D. Cal. June 11, 2012); Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549, 562-63 (2d Cir. 1995).

Second, the parties must have expressedly agreed in a signed writing that the work shall be considered a work made for hire. The wrinkle to this element is that the agreement must be made before the creation of the work. See Stanacard, at 15-16 (SDNY 2016).

Third, the work must fall within one of nine peculiar types of works. The work must be:

(i) a contribution to a collective work [which is a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole],

(ii) a part of a motion picture or other audiovisual work,

(iii) a translation,

(iv) a supplementary work [which is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes],

(v) a compilation [which is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship],

(vi) an instructional text [which is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities],

(vii) a test,

(viii) answer material for a test, or

(ix) an atlas.

On first blush, computer software would not appear to fit within any of these nine works because computer software typically is considered a literary work, and literary works are not listed. However, upon further examination, computer software arguably could fall within three of these types of works.

First, computer software could be considered an audiovisual work. The Copyright Office states that "if motion picture authorship or audiovisual material predominate", then computer software could be registered as an audiovisual work. See U.S. Copyright Office Circular 61, at 2; Breadmore v. Jacobson, Case No. 4:13-CV-361, at __ (S.D. TX July 14, 2014) (finding that the computer software application in question was entitled to protection as an audiovisual work).

Second, computer software could be considered a compilation. Courts have found computer software made by an independent contractor to be a compilation for purposes of the work made for hire doctrine. See Stanacard at 14-15, Siniouguine, and Logicam Inclusive, Inc. v. W.P. Stewart & Co., Case No. 04-civ-0604 (CSH) (S.D.N.Y. August 9, 2004). In Siniouguine, the court stated

Programs meet the requirements for "compilations" because they include an original selection, arrangement and organization of nonliteral elements in their code. Such nonliteral elements of a computer program are a "compilation insofar as the concepts of selection, arrangement and organization . . . are included in the analysis of a computer program's structure.

However, it should be noted that copyright protection afforded to compilations is "thin" as it "extends only to the expression contained in the selection, arrangement or sequence of the program's structural elements that are not otherwise independently protectable." Harbor Software, Inc. v. Applied Systems, Inc., 925. F.Supp. 1042, 1047-48 (S.D.N.Y. 1996).

Third, computer software could be considered a contribution to a collective work. Courts also have found computer software made by an independent contractor to be a contribution to a collective work for purposes of the work made for hire doctrine. See Stanacard at 15, Siniouguine, and iXL Inc. v. AdOutlet.com Inc., Case No. 01 C 0763 (N.D. Ill March 29, 2001). In iXL, the court found that "the source code written for each section of the AdOutlet web site constitutes a separate, independent work and is a contribution to the collective whole — that is, the web site." Following iXL, the court in Stanacard found that the independent contractor

created and combined a number of different computer programs to create [Plaintiff's] new software system. This new system was comprised of various elements including an open source framework, compression software, a multi-protocol library written by [the independent contractor's associate], a "referral" program, anti-fraud software, routing algorithms, and code for an entirely new [Plaintiff] website.... The system as a whole is properly deemed a compilation of computer programs.

Stanacard at 15. Moreover, given the nature of computer programming today, a program is no longer a single monolithic block of code. Rather, a program is an assemblage of many smaller pieces of code. Thus, reinforcing the notion that software should be considered a contribution to a collective work.


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