Misconception about “Work Made for Hire” and Legal Risks

Attorney Le Quang Vinh - Bross & Partners

Email: vinh@bross.vn

“Work made for hire” means the copyright does not belong to the author

Copyright is basically understood as the exclusive right to make copies and control original works such as written works, newspapers, films, architectures, software, fine arts, etc., that are protected by copyright law for a limited period (usually 50 years after the author's death). The C symbol in the circle ©, which often appears in publications, is a public warning sign about copyrighted works. However, the law does not require that a © symbol be present on the work to be entitled to copyright protection.

The Cornell Law School defines that copyright is the exclusive legal right to reproduce, publish, sell, or distribute the matter and form of something while the Harvard University assumes that copyright is the lawful right of an author, artist, composer, or other creator to control the use of his or her work by others.[1]

Often, only the author or those who are licensees from the original author are legally entitled to claim copyright. However, there is an exception to this rule being "work made for hire", whereby in case of a "made for hire" work then only employer (an individual or organization) shall be deemed as authorship even though the creation of that work was made by the employee. "Work made for hire", also known as “work for hire” or “WFH”, is derived from the US Supreme Court ruling of 1989 in the Community for Creative Non-Violence v. Case. Reid.[2]

Section 101 of the United States Copyright Act of 1976 (title 17 of the U.S. Code) provides for that a work made for hire means a work prepared by an employee within the scope of his or her employment. In addition, a work specially ordered or commissioned for use as a contribution to a collective work, a compilation, a translation, or a part of a motion picture or other audiovisual work, etc. is regarded as a work made for hire on the condition that the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

Misconception about “Work Made for Hire” and Legal Risks

Many Vietnamese enterprises, when signing a contract with an individual or organization for the creation of a work, often mistakenly believe that because the law stipulates that organizations and individuals enter into contracts with authors creating a work so they have the right to enjoy the entire copyright to that work as they are the copyright owner of that work. As a result, they would think that any person appointed by them can be named as the author instead of the actual author. However, a "commissioned work" exists in the form of an enterprise that assigns tasks to an author who is its employee, or an enterprise that contracts with the creator of the work to create a work is not a “work made for hire” within the meaning of Article 101 of the US Copyright Act 1976.[3]

Misunderstanding that a “commissioned work” is a “work made for hire” and vice versa can lead to multiple legal risks. One of them is the possibility that a genuine author could sue for moral rights infringement, ie. right to name to a work or the right to credit (attribution) in accordance with Section 19 of Vietnamese IP Law.

Please keep in mind that no legal concept "work made for hire" under the law of Vietnam. The so-called "commissioned work" in the form of an organization or individual entering into a contract with an author to create an artistic work, or in the form of an organization or individual assigning the task to the author who is employed by that individual or organizations, is different from the concept "work made for hire" in US copyright law because moral rights (except for publication rights) are neither alienable nor transferrable as well as an author of a work cannot be a legal person under the copyright legislation of Vietnam.

Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has experience in resolving complicated IP disputes including trademarks, copyrights, patents, plant varieties.

Please contact: Vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.