INTELLECTUAL PROPERTY LAW

FINAL DRAFT

Project Topic:
DOCTRINE OF WORK FOR HIRE UNDER THE
COPYRIGHT LAW: A CRITICAL SURVEY OF U.K., U.S.
AND INDIAN CASES

Submitted by
PRASHASTI PRIYA
Roll No. - 1145
7 Semester, 4th Year, B.A.LL.B. (Hons.)
th

Submitted to
Dr. Shaiwal Satyarthi
Faculty of Intellectual Property Law

CHANAKYA NATIONAL LAW UNIVERSITY,

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 ACKNOWLEDGEMENT

The projects and presentations has been one of the most appreciated areas for the holistic
development of a student. It helps a student to be more curious, to know more and to
research more.
I would like to extend my deepest thanks to Dr. Shaiwal Satyarthi who has provided me with
all the possibilities to complete the project. I would also like to extend my regards to my
friends for their aspiring guidance, invaluably constructive criticism and friendly advice
during the project work.

Prashasti Priya
7th semester
Roll No. 1145

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Table of Contents
ACKNOWLEDGEMENT...............................................................................................................2
1. INTRODUCTION.......................................................................................................................5
2. CONCEPT OF WORK FOR HIRE IN UNITED STATES........................................................7
3. CONCEPT OF WORK FOR HIRE IN UNITED KINGDOM.................................................14
4. CONCEPT OF WORK FOR HIRE IN INDIA.........................................................................18
5. CONCLUSION AND SUGGESTIONS....................................................................................23

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 1. INTRODUCTION

Doctrine of work for hire under the copyright law comes into picture when an employee who is
hired by an employer creates the work in question and the debate begins regarding whether the
copyright should be given to the employee or the employer. It has been defined under the US
Law under Sec. 101 of the US code and also in UK laws, US says that the copyright must be
given to the creator of the work. In India, work for hire is not expressly mentioned but it can be
derived from section 17 of the Copyright Act.

OBJECTIVE OF THE STUDY

The researcher is going to research the above topic with some of the objectives which is sited
below:

1. To know the concept of work for hire

HYPOTHESIS

The concept of Work for hire varies from country to country and in the case of India, it depends
on Judicial Interpretations.

RESEARCH METHODOLOGY

The researcher will be using the Doctrinal mode of research.

SOURCE OF DATA

Primary source: Copyright Act, 1957 and various case laws.

Secondary source: Textbooks and Websites

LIMITATIONS OF THE STUDY

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The researcher cannot of for non doctrinal mode of research and thus she had to be confined
within the doctrinal mode of research concept.

SCOPE OF THE STUDY

The study will include the provisions of the Copyright Act, 1957 and laws of various nations
supporting the arguments used in the research.

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 2. CONCEPT OF WORK FOR HIRE IN UNITED STATES

The United States Constitution empowers Congress to protect authors' efforts by securing to
them the exclusive rights to their intellectual labors." 1 The Copyright Clause expresses the belief
that protecting authors' rights is the best means to encourage and advance the arts. Early
legislative enactments of copyright law reflected that basic purpose.' 2 Yet, in the late 1800s
federal courts began to formulate an equitable theory of ownership that vested all copyrights in
an employer rather than in the actual "author" in the case of works made for hire.' While earlier
courts tended to narrowly construe any principle that deprived an author of copyrights without
his express consent, the courts of the new industrial age viewed the employer-employee
relationship as a manifestation of an employee's "express consent" to pass his copyrights to his
employer. 3

Congress first codified the work for hire doctrine in the Federal Copyright Act of 1909. 4 The
1909 Act defined "author" to include an employer in the case of any work made for hire. The Act
failed, however, to define the term "work for hire," or to distinguish employees from
independent contractors. As a result, courts had to develop a definition of work made for hire in
light of the 1909 Act. More precisely, courts needed to decide whether an independent contractor
could be a statutory employee for the purposes of works made for hire.

The determination that a work was made for hire under the 1909 Act had a critical effect on
ownership rights and related issues, such as duration and renewal rights. 5 Because copyrights
initially vest in the author of a work, and the Act provided that the term "author" included an
employer in the case of a work made for hire, employers in the work for hire context became
1
U.S. CONST. art. I, § 8, cl. 8 provides Congress with the power to ". . . Promote the Progress of Science ... by
securing for limited Times to Authors ... the exclusive Right to their respective Writings .. "
2
Hearings on H.R. 4347, H.R. 5680, H.R. 6831 and H.R. 6835 Before Subcomm. No. 3 of the House Comm. on
theJudiday, 89th Cong., 1st Sess., Pt. 1 95 (1966).
3
Bleistein, 188 U.S. at 245, 248 (1903).
4
Copyright Act of March 4, 1909, 35 Stat. 1075, repealed by Pub. L. No. 94-553, 90 Stat. 2541 (1976).
5
17 U.S.C. § 24 (1947).

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initial copyright owners. The work for hire employer thereby received all rights under the
Copyright Act: ownership of the original work and any work derived from the original and
exploitation of the work in other media. In addition to the usage rights associated with initial
ownership, only the author or his family could renew the copyright. The Act provided that the
proprietor of any "work copyrighted by . . . an employer for whom such work is made for hire" 6
shall be entitled to renew and extend the copyright for an additional 28 years. Thus, under the
1909 Act, it was crucial to determine the relationship between the creator of the work and
anyone to whom he may have divested his rights in the original copyright term. If the courts
determined that a work for hire relationship was one of "employment," then the employee-
creator automatically divested himself of the renewal rights in favor of the employer or the
employer's successor in interest, absent any agreement to the contrary.7

Under the 1909 Act, the courts determined that an employer held the copyright to an employee's
work created within the "scope of his employment." 8 Relevant factors courts used in determining
whether a work was made within the scope of employment included the existence of an
employment contract, at whose instance, expense, time, and facility the work was created, 9 and
the nature and amount of compensation, if any, received by the employee for his work.10 The
standard agency inquiry, however, remained the primary test for determining the existence of an
employment relationship: did the employer have a right to direct and supervise the performance
of the work? Using the above standards, courts interpreting the 1909 Act created a rebuttable
presumption that, absent evidence of any contrary agreement between the parties, the copyright
to the completed work vested in the employer as the statutory author. 11 Basic concepts of equity
justified this presumption. Because the employer directed and supervised the production of the
work and bore the financial risks, it was only fair that the employer should reap the benefits of
the finished product.

Although the 1909 Act included "employers" in the definition of author, it did not include
commissioning parties. In Yardley v. Houghton Mifflin Co.12 the Second Circuit presumed that
6
17 U.S.C. § 24 (1947).
7
NiMMER, § 5.03[A], at 5-10
8
Picture Music, Inc. v. Bourne, Inc., 314 F. Supp. 640, 651
9
Siegel v. National Periodical Publications, Inc., 508 F.2d 909, 914
10
Murray v. Gelderman, 566 F.2d 1307
11
May v. Morganelli-Heumann and Assocs., 618 F.2d 1363
12
108 F.2d 28 (2d Cir. 1939), cert. denied, 309 U.S. 686 (1940)

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any person who commissions another to create a copyrightable work is the statutory "author."
Without reference to the concept of "work for hire," the court held that under general contract
law principles the commissioning party is presumed "to control the publication of copies.., unless
by the terms of the contract, express or implicit, the artist has reserved the copyright to himself."
This contractual assignment theory did not extend so far as to call the commissioning party the
statutory author of the work because the court merely interpreted the contract, not the statute.
Thus, the commissioning party's copyright under the assignment theory was not as extensive as
the copyright that vested in an employer under the work for hire presumption.

In Brattleboro Publishing Co. v. Winmill Publishing Corp.13 the court merged the Yardley
presumption into the work for hire doctrine. The rule that the employer is the statutory author of
a work made for hire now included the presumption that a commissioning party is the statutory
author of the commissioned work.14 Thus, in Brattleboro, the advertisers who paid a newspaper's
staff to design advertisements it later reprinted in a competitor's newspaper were the statutory
authors for purposes of determining copyright ownership. The court found that the work for hire
doctrine, by which an employer is presumed to own the copyright "whenever the employee's
work is produced at the instance and expense of his employer," applied where the parties bear the
relationship of commissioning party and independent contractor.

Picture Music, Inc. v. Bourne, Inc.15 affirmed the broad standard enunciated in Brattleboro. There
the court held that the parties who commissioned a songwriter to assist in the adaptation of the
song, "Who's Afraid of the Big Bad Wolf?," owned the copyright. Applying the Brattleboro
standard, the court determined that the patrons owned the copyright because "[t]hey controlled
the original song, they took the initiative in engaging [the songwriter] to adapt it, and they had
the power to accept, reject, or modify her work." The expansion of the work for hire doctrine to
commissioned works precipitated uncertainty and potential abuse in the contracting process
between independent contractors and their commissioning parties. For example, commissioning
parties could now acquire copyrights that were not contemplated at the time of contracting, and
thus not reflected in the agreed-upon price for the work, simply by exercising greater supervision

13
369 F.2d 565 (2d Cir. 1966).
14
Brattleboro, 369 F.2d at 567.
15
457 F.2d 1213 (2d Cir.), cert. denied, 409 U.S. 997 (1972)

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during the work process. This exploitation of authors was a major motivating force behind the
1976 revision of the work for hire doctrine.

The definitions of § 101 of the Copyright Act detail the circumstances which result in works
made for hire. Under U.S. law, a work is one made for hire if it is:

(1) a work prepared by an employee within the scope of his employment or

(2) a work prepared under special order or commission by an independent contractor, provided
that the parties have signed an agreement designating the work as one made for hire, and
provided that the work falls into one of nine categories enumerated in the statute. These
categories generally cover: contribution to a collective work, part of an audio-visual work,
translation, supplementary work, compilation, instructional text, atlas, test, and test answer
material.16

In the case of an independent contractor, the application of work for hire is relatively clear-cut
since the commission agreement must state explicitly in writing that the work is intended to be
one made for hire. U.S. courts have had more difficulty recognizing works made for hire that
stem from employer-employee relationships, the main issue being how to differentiate
employees from independent contractors. In 1989, the Supreme Court determined that common-
law agency principles should determine whether an individual is an employee or not for work-
made-for hire purposes in Comm. For Creative Non-Violence v. Reid 17. In applying these
common law principles, Reid enumerated nearly fifteen different factors for a court to consider.
Two years later, the Second Circuit narrowed this cumbersome test, citing the five most
significant factors for work-for-hire analysis. Aymes v. Bonelli. 18 According to the Second
Circuit, these decisive factors are (1) whether the purported employee had a right to control the
work and the manner of its creation, (2) the level of skill required to produce the work, (3) the
tax treatment of the purported employee, (4) whether or not the claimed employee received
employee benefits, and (5) whether the employer held the right to assign further projects beyond

16
In 1999, Congress added sound recordings to the work-made-for-hire category list. Intellectual Property and
Communications Omnibus Reform Act of 1999, Pub. L. 106- 113, 113 Stat. 1501 (Nov. 17, 1999).
17
490 U.S. 730 (1989)
18
980 F.2d 857, 862 (2nd Cir. 1992).

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the work in question. Id. at 862-63. The Sixth Circuit has followed suit in applying this narrower
analytical model.19

Interpretations of Copyright law, 1976

The "Non-Exclusive" Interpretation

The "non-exclusive" interpretation of the 1976 Act's definition of works made for hire
represents the conservative position that copyright law, as it pertains to works made for hire, is
essentially the same as under the 1909 Act. This interpretation holds that clause two of section
101 is not the exclusive test for determining whether commissioned work constitutes work made
for hire. Rather, a specially ordered or commissioned work outside of the nine categories of
clause two can still qualify as a work for hire under clause one if the commissioning party
exercises control over the work. The proponents of this view argue that the nine specified
categories were problem areas that required the additional safeguard of a writing signed by both
parties. They claim that as to all other categories of commissioned works, the law as it existed
prior to January 1, 1978 has not changed. Therefore, if a commissioning party actually controls
an independent contractor, the latter assumes the status of an employee under agency law and his
work is treated as a work made for hire under clause one of section 101.

The Leading Case: Aldon Accessories Ltd. v. Spiegel, Inc20

In 1984, the Second Circuit formulated a new standard for determining whether a work was
made for hire. The court in Aldon Accessories Ltd. v. Spiegel, Inc. held that an employer-
employee relationship could be found where the employee "was not a regular or formal
employee," 92 if the employer actually supervised and controlled the work production. The
Aldon Accessories standard restricts the effect of clause two to only those nine categories listed.
In Aldon Accessories, the plaintiff commissioned a company to design statuettes that Spiegel,
the defendant, subsequently copied. On appeal, the defendant argued that the district court
erroneously interpreted clause two of section 101 when it instructed thejury that A work for hire
is a work prepared by what the law calls an employee working within the scope of his
employment. What that means is, a person acting under the direction and supervision of the
19
Hi-Tech Video Prods. v. Capital Cities/ABC, Inc., 58 F.3d 1093, 1097 (6th Cir. 1995)

20
738 F.2d 548 (2d Cir.), cert. denied, 469 U.S. 982 (1984).

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hiring author, at the hiring author's instance and expense. It does not matter whether the for-hire
creator is an employee in the sense of having a regular job with the hiring author. What matters
is whether the hiring author caused the work to be made and exercised the right to direct and
supervise the creation.

Affirming the decision below, the Second Circuit found that clause two did not apply to this
situation. The court framed the issue in terms of whether the contractor was "independent" or
was so controlled and supervised by the employing party when creating the work that an
employer-employee relationship existed. In determining the status of the contractor, the court
focused on the terms "employee" and "scope of employment" in clause one. The court
determined that, because the Act did not define those terms, Congress intended courts to interpret
those terms using general agency law principles as applied in prior copyright cases. Relying on
the supervision and control test rooted in the cases interpreting the 1909 Act, the court held that
these commissioned artists were traditional employees under clause one of section 101 because
the work was made at the hiring party's instance and expense and because the hiring party
exercised the right to direct and control the creation

The Exclusive definition

The "exclusive" interpretation of the work for hire definition in the 1976 Act reinforces the
notion of compromise embodied in the Act. Under this interpretation, Congress' definition of
works made for hire fundamentally changed the copyright law pertaining to independent
contractors. The advocates of this interpretation consider clause two the exclusive test for
determining whether an independent contractor's work was for hire. Thus, the only
commissioned works that qualify for work for hire status with its attendant legal consequences
are those nine specified types of work in clause two. Moreover, those nine categories are
considered works made for hire only if accompanied by a writing signed by both parties
designating the work as for hire.

The Leading Case: Easter Seal Society v. Playboy Enterprises21

21
815 F.2d 323 (5th Cir.), rehg denied, 820 F.2d 1223 (5th Cir. 1987), cert. denied, 108 S. Ct. 1280 (1988).

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In Easter Seal Society for Crippled Children and Adults of Louisiana, Inc. v. Playboy
Enterprises, the plaintiff contracted with a public television station to videotape a Mardi Gras-
style parade to be used for the National Easter Seal Telethon. Without any idea of the buyer's
intended use, the public television station sold the plaintiff's footage to a Canadian filmmaker
who used it in the production of an adult film entitled Candy, the Stripper. Easter Seal sued
Playboy, the producer of Candy, for copyright infringement. The court determined that the public
television station who produced the original footage was not Easter Seal's "employee" within the
1976 Act's work for hire doctrine; hence, the television station owned the copyright to the
footage. In Easter Seal, the Fifth Circuit explicitly rejected Aldon Accessories' non-exclusive
interpretation of the work for hire definition. The Court held that a work is made for hire under
clause one of section 101 only if the seller is an employee within the meaning of agency law or
under clause two if the buyer and seller comply with that clause's three requirements. The court
determined that clause two reversed the 1909 Act's presumption that any person who paid
another to create a work automatically became the statutory author of that work.

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 3. CONCEPT OF WORK FOR HIRE IN UNITED KINGDOM

The United Kingdom fully recognizes work-for-hire principles. Section 11 sets forth the work-
for-hire rules that apply to works created on or after August 1, 1989:22

(1) The author of work is the first owner of any copyright in it, subject to the following
provisions.

(2) Where a literary, dramatic, musical or artistic work is made by an employee in the course of
his employment, his employer is the first owner of any copyright in the work subject to any
agreement to the contrary ....23

This section gives employers the status of authors and vests initial copyright interests in them
absent any contrary agreement. Because employers acquire their interests upon creation and the
employment relationship alone determines this interest, the British rule closely resembles the
U.S. approach. British work-for-hire interests depend on whether an employment relationship
exists. Community for Creative Non-Violence (CCNV) v. Reid, 24 the Supreme Court further
refined § 201(b)'s definition when it held that traditional agency principles will determine
whether a work is one that an employee prepared in the scope of his or her employment. The
Court indicated a need to focus on "the hiring party's right to control the manner and means by
which the product is accomplished." The Court also listed the following factors to guide the
inquiry: the skill required; the source of the instrumentalities and tools; the location of the work;
the duration of the relationship between the parties; whether the hiring party has the right to
assign additional projects to the hired party; the extent of the hired party's discretion over when
and how long to work; the method of payment; the hired party's role in hiring and paying
assistants; whether the work is part of the regular business of the hiring party; whether the hiring
party is in business; the provision of employee benefits; and the tax treatment of the hired party.

To determine whether such a relationship exits, the British offer their own version of CCNV.
They focus on "whether the work forms an integral part of the business." This analysis depends

22
The 1956 version of the United Kingdom's Copyright Act applies to works created before August I, 1989. The
work-for-hire rules under this earlier act are identical to Ireland's current rules. See discussion supra part II.B.2.a.
23
United Kingdom Copyright, Designs and Patent Act 1988.
24
490 U.S. 730, 750-51 (1989).

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on: whether the typical attributes of employment are present: whether regular sums are paid as
wage or salary; whether income tax deductions are made on the "pay-as-you-earn" basis used for
employees; whether there is a joint contribution to a pension scheme; whether national insurance
contributions are paid by both parties as for an employee.25

Assuming some or all of these attributes are present, an employer will acquire the copyright
interest in the work. Even if the employment relationship does not satisfy this test, an employer
could nonetheless acquire a copyright interest unimpaired by moral right. Unlike most EC
countries, the United Kingdom permits moral right waivers. Section 87(1) provides that "[i]t is
not an infringement of any of the [moral] rights conferred by this Chapter to do any act to which
the person entitled has consented."26

Like U.S. courts, those in the U.K. consider a variety of factors to determine employment versus
contract labor, including the presence of employee tax and benefits treatment, although the
primary test is “whether the work undertaken forms an integral part of the business.” 27 Works
made for hire are subject to the freedom of contract in the U.K. As noted, independent
contractors may freely assign their authorship to the commissioning party. Likewise, employers
may agree to permit employees to retain the copyrights in certain works even when they are
created in the course of employment. British courts have also been inclined to imply the
existence of such agreements in both types of case where the facts warrant.

Waivers remove doubts that can taint exploitation of works that otherwise qualify as works-for-
hire, such as commissioned works and works created within an ongoing non-employment
relationship. Waivers are especially useful in relation to commissioned works since such works
are not generally within the British concept of an employment relationship. By securing both a
copyright transfer and a moral right waiver, a principal could exploit the work without concerns
that an independent contractor would assert her moral right in protest. Likewise, because waivers
"may relate to existing or future works," 28 persons in ongoing relationships can negotiate for
waivers at the outset. This kind of option produces simplicity in contracting and certainty over
25
William R. Cornish, United Kingdom, in INTERNATIONAL COPYRIGHT LAW AND PRACTICE, (Paul
Edward Geller et al. eds., 1991). at 31
26
United Kingdom CDPA, § 87(1).
27
Lionel Bently, United Kingdom, in 2 INTERNATIONAL COPYRIGHT LAW AND PRACTICE UK-56 (Paul
Edward Geller ed., 15th ed. 2003).
28
United Kingdom CDPA, § 87(2).

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the long-run since both the payor and the creator know the limits of their rights from the
beginning. In the final analysis, the British moral right waiver is the only way to accomodate the
moral right interest the Berne Union compels and the common law tradition of allowing
unfettered copyright exploitation. This system also placates U.S. work-for-hire holders as it
allows them to market their works without fear of limitation.

However, the EC nations differs within themselves regarding the concept of Copyright laws. The
first problem is that the Member States differ over how copyright ownership in works-for-hire
may arise. At one extreme, Belgium, Denmark, Germany, Greece, and Luxembourg only allow
creators to have the initial ownership interest and require employers to contract for copyright
licenses or transfers. Somewhere towards the center, France requires principals to contract with
independent contractors, but employers need not contract with employees. Similarly, Italy and
Spain permit copyright ownership to flow directly to the employer in some circumstances, 29 but
not in others.239 At the other extreme, Ireland, the Netherlands, and the United Kingdom nearly
always vest copyright ownership in employers and principals upon creation. 30 In essence, no
single copyright ownership rule prevails in the EC for works-for-hire.

The second problem is that the Member States disagree over who may be the author of a work-
for-hire. This issue is significant since only an author can claim moral right. As a general rule, all
EC Member States consider the natural person who created a work as the work's author. In
relation to authors of works made for hire, however, two distinct approaches emerge. These
approaches break down according to the civil and common law traditions. On the one hand, the
civil law countries, except for the Netherlands, adhere to the general rule almost without
exception.31 On the other hand, Ireland, the Netherlands, and the United Kingdom deviate from
the general rule and recognize employers and principals as authors of works made for hire.

The third problem arises from the divergent moral right treatments existing within the EC. The
discrepancies characterizing moral right proceed directly from the problem of determining
authorship in works made for hire. That is, the same civil law countries that strictly follow the
"creator as author" rule also forbid moral right transfer and waiver. The identical common law
29
Italian Copyright Law, at arts. 38, 45, 88
30
Ireland Copyright Act, supra note IS, §§ 10(2)-10(4)
31
The limited exception in civil law countries gives producers of cinematographic works limited authorship status.
In addition, France recently diverged from the general rule to give computer software employers rights of authorship
with respect to their employees.

15
countries (and the Netherlands) that part from the "creator as author" rule also permit moral right
transfer or waiver. Because these latter countries' work-for-hire and moral right regimes most
closely resemble the U.S. system, U.S. work-for-hire copyright holders can expect the same
treatment under these countries' laws as they would receive in the United States.

16
 4. CONCEPT OF WORK FOR HIRE IN INDIA

The importance of copyright was recognized only after the invention of printing press, which
enabled the large production of books in large quantity practicable. In India the first legislation
of its kind, the Indian Copyright Act, was passed in 1914, which was mainly based on the United
Kingdom Copyright Act, 1911. During the five decades modern and advance means of
communications like broadcasting, litho-photography, television etc., have made roads in the
Indian economy. So there was the need of new more powerful law, which can protect the rights
of copyright owners or original creators. So new Act was enacted by the parliament of India,
which was based on the Berne convention and universal copyright declaration.
This Act is known as the copyright Act, 1957, which is suitably amended again in the 1999
according to the prevailing situation in the India and around the world. In the field of copyright,
India as a signatory to the Berne Convention and the International Copyright Order, 1958, which
is now replaced by the International Copyright Order of 1991. It provides the same protection to
nationals of member States as its own nationals.

The States so covered are the Berne Convention signatories, the Universal Copyright Convention
countries and the Phonograms Convention countries. Patents and trademarks registered outside
the country are protected against infringement in India if they have acquired international
reputation and goodwill. The courts often extend the principles of unfair competition or passing
off to stop infringement.

According to Section 17 of the Copyrights Act, 1957 the first owner of copyright is defined
as under:
Subject to the provisions of this Act, the author of a work shall be the owner of copyright therein.
Section 17 statutorily recognizes the author of the work to be the first owner of the copyright.
The author is defined under the Act for various works, which come under the law of copyright.32 

Section 2(d) defines author, it says "Author" means,-

(1) In relation to a literary or dramatic work, the author of the work;

17
(2) In relation to a music work, the composer;

(3) In relation to artistic work other than a photograph, the artist;

(4) In relation to photograph, the person taking the photograph, the artist;

(5) In relation to a cinematograph film or sound recording, the producer; and 

(6) In relation to any literary, dramatic, musical or artistic work which is computer- generated,the
person who causes the work to be created.

However, this provision is subject to certain exceptions.

For instance Section17 (a) provides that where a work is made by the author in the course of his
employment by the proprietor of a newspaper, magazine or a periodical under a contract of
service or apprenticeship for the purpose of publication in a newspaper, magazine or periodical,
the said proprietor, in the absence of any agreement to the contrary will be the first owner of the
copyright in the work in so far as it relates to the publication of the work in any newspaper,
magazine or similar periodical or to the publication of the work for the purpose of being so
published. Except in such cases, the author will be the first owner of the copyright in the work.
In Thomas v. Manorama,33 it was held that in the case of termination of the employment, the
employee is entitled to the ownership of copyright in the works created subsequently and the
former employer has no copyright over the subsequent work so created. 

Section 17(b) provides that where a photograph is taken or a painting or a portrait drawn, or an
engraving or a cinematograph film made, for valuable consideration at the instance of any
person, such person, in the absence of any agreement to the contrary, shall, be the first owner of
the copyright therein. In Chidambare v. Renga,34 where a person rests under an obligation to do

33
AIR 1989 Ker 49
34
1966 AIR 193, 1966 SCR (1) 168

18
something, and in discharge of such obligation, he transfer a certain interests, such transfer is for
valuable consideration.

ection 17 (c) provides that in the case of work made in course of the author's employment under
a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the
employer shall, in the absence of any agreement to the contrary, be the first owner of the
copyright therein. An author may create a work independently, or he may create a work under a
contract of service or contract for service. Where a man employs another to do work for him
under his control, so that he can direct the time when the work shall be done the means to be
adopted to bring about the end, and the method in which the work shall be arrived on, then the
contract is contract of service. If, on the other hand, a man employs another to do certain work
but leaves it to that other to decide how that work shall be done. What step shall be taken to
produce that desired effect, and then it is a contract for service. In Beloff v. Pressdram,35 it was
held that the true test is whether on the one hand the employee is employed is part of business
and his work is integral part of the business, or whether his work is not integrated into the
business but is only accessory to it or the work done by him in business on his own account. In
the former case it is a contract of service and in the latter a contract for service.

Thus, the current status in India can be summend up in few points

The author of a work is usually the ‘first owner’ of such work. In certain circumstances, Section
17 of the Copyright Act determines who may be regarded as the ‘first owner’ of a copyrighted
work. The concept of ‘first owner’ under Indian copyright law is quite important and may be
determined as follows:

 In the case of a literary, dramatic or artistic work (which includes a photograph, painting
or a portrait) created during the course of employment or, under a contract of service or
apprenticeship, for the purpose of publication in a newspaper, magazine or similar
periodical, the proprietor of such a publication shall, in the absence of a contract to the
contrary, be the first owner of copyright. However, such ownership shall vest with the
proprietor of the publication only for the limited purpose of publishing the work or a

35
[1973] FSR 33

19
 reproduction of the work in a publication and, for all other purposes, the copyright shall
vest with the author of the work.
 If a photograph, painting or portrait has not been made for the purposes of publication in
a periodical but has been made for any other purpose, then in the absence of a contract to
the contrary, the copyright in such work shall vest with the person at whose instance the
work was created.36
 In the case of a cinematograph film, in the absence of a contract to the contrary, the
copyright in the cinematograph film shall vest with the producer of the film i.e. the
person at whose instance the film was made for a valuable consideration.37
 In case of a work made during the course of employment or under a contract of service or
apprenticeship, (to which the instances given under serial no. 1 do not apply), the
employer shall, in the absence of a contract to the contrary shall be the first owner of
copyright.38
 In case of a government work, in the absence of a contract to the contrary, the copyright
in the work shall vest with the government.39

The concept of ‘Work for Hire’ though not expressly covered under the Copyright Act, it is
implied under Section 17 whereby, the copyright in any work created on commissioned
basis, shall vest with the person creating such work. In order to vest the copyright with the
person commissioning the work, an assignment in writing shall be necessary.

Work for hire and film production

In 1977, the Supreme Court of India in the case of ‘Indian Performing Right Society Ltd. Vs.
Eastern Indian Motion Pictures Association and Ors.’40 clarified that the producer would be
the first owner of a work made for hire under Section 17. A specific paragraph in the case is
reproduced hereunder:

18. This takes us to the core of the question, whether the producer of a cinematograph film
can defeat the right of the composer of music or lyricist by engaging him. The key to the
36
Proviso (a) and (b) to Section 17 of the Copyright Act.
37
. Proviso (b) to Section 17 of the Copyright Act.
38
Proviso (c) to Section 17 of the Copyright Act.
39
Proviso (d) to Section 17 of the Copyright Act.
40
AIR1977SC1443.

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solution of this question lies in provisos (b) and (c) to Section 17 of the Act reproduced
above which put the matter beyond doubt. According to the first of these provisos viz.
proviso (b) when a cinematograph film producer commissions a composer of music or a
lyricist for reward or valuable consideration for the purpose of making his cinematograph
film, or composing music or lyric therefore i.e. the sounds for incorporation or absorption in
the sound track associated with the film, which as already indicated, are included in a
cinematograph film, he becomes the first owner of the copyright therein and no copyright
subsists in the composer of the lyric or music so composed unless there is a contract to the
contrary between the composer of the lyric or music on the one hand and the producer of the
cinematograph film on the other. The same result follows according to aforesaid proviso (c)
if the composer of music or lyric is employed under a contract of service or apprenticeship to
compose the work. It is, therefore, crystal clear that the rights of a music composer or lyricist
can be defeated by the producer of a cinematograph film in the manner laid down in provisos
(b) and (c) of Section 17 of the Act. We are fortified in this view by the decision in
Wallerstein v. Herbert. (1867) 16 L.T. 453 relied upon by Mr. Sachin Chaudhary where it
was held that the music ‘composed for reward by the plain tiff in pursuance of his
engagement to give effect to certain situations in the drama entitled “Lady Andley’s Secret”,
which was to be put on the stage was not an independent composition but was merely an
accessory to and a part and parcel of the drama and the plaintiff did not have any right in the
music.”

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 5. CONCLUSION AND SUGGESTIONS

Work for hire is not a codified law in any if the countries. Despite the fact that most of the
countries examined above lack a definitive copyright classification of works made for hire, the
overall approach to such works is rather similar. All three countries acknowledge at least on a
limited basis copyright in an employer when the employee creates the work within the scope of
his employment. France is the least accommodating in this regard, allowing for such treatment
only in specific instances such as collaborative works, audiovisual works, and computer
software. For the remaining countries, the primary difference is that most civil law countries (the
notable exception here being Japan) deem the grant to the employer as an implied transfer which
reserves moral rights in the creation to the original author, while Japan and the common law
states vest full authorship in the employer.

Under the Copyright Act, for major economies with minor modifications, “work made for hire”
is the work done by an employee within the scope of employment and the employer has right
over it. In case of an independent contractor, the employer will not have any rights over the
work. So, it is better for the employer to enter into an agreement to have claims over the
intellectual property rights.

The “scope of employment” limitation means that the employer is only entitled to rights over the
works that the employee produces under the scope of the employer. For example, if you are a
fashion designer by day and a song writer by night, your employer is entitled to rights of your
designs but not your songs.

Unless there is a written agreement with independent contractors, hired to produce written
content, designs, logos, etc to addresses the issue in their case, contractors will own their
creations even if a company paid the contractor to produce the copyrighted work.

Here’s a list of the types of work done by independent contractors that can be considered work-
for-hire:

1. a contribution to a collective work;

2. a part of a motion picture or other audiovisual work;

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 3. a translation;

4. a supplementary work;

5. a compilation;

6. an instructional text;

7. a test;

8. answer material for a test; or

9. an atlas

For work not falling into one of the nine work-for-hire categories mentioned above, some or all
of the rights must be explicitly assigned by a copyright to the company through an agreement.
And for these nine work-for-hire categories the contractors own their creations as mentioned
before.

Ideally the employers should execute an employment contract or better sign an assignment of
invention agreement with the employees to secure rights over intellectual property developed by
the employee. In any scenario, the employee will always retain the right to be named as the
inventor, unless expressly renounced by him/her.

The employer should enter into a written transfer and confidentiality agreement with the
employee, to secure the internally developed software, reports, or important materials before the
employee goes to another job. The agreement should contain the details of any work created
during employee’s tenure with the company or utilizing company’s resources, which now
belongs to the employer. In case of an independent contractor, the employer should execute a
confidentiality agreement with the individual and the company he or she is employed by,
regarding the newly developed work.

This is how, the concept of work for hire could be regularized.

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BIBLIOGRAPHY

Books:

Krishna Hariani & Anirudh Hariani, Analyzing “Work for Hire” in Copyright Law :
Transcending Jurisdictional
Disparity, 51 IDEA, 491 (2011).
R.G. Anand v. Delux Films & Others , AIR 1978 SC 1613

Websites

http://www.sjol.co.uk/issue-6/a-european-invasion-the-effect-of-infopaq-on-the-labour-skill-and-
judgement-criterion-of-work for hire-within-uk-copyright-law

http://www.uoltj.ca/articles/vol1.1-2/2003-2004.1.1-2.uoltj.Drassinower.105-123.pdf

Journals

Shuchi Mehta, An Analysis of the Doctrines: ‘Sweat Of The Brow’ & ‘Modicum Of Creativity’
Vis À Vis Originality in Copyright Law http://www.indialaw.in/766/ (last updated June 1, 2015)

Adarsh Ramanujan, Prateek Bhattacharya & Esheetaa Gupta, Infringement Analysis in

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