The concept of work made for hire is an exception to the general principle where a person owns all the copyrights in the work that he or she creates. Work made for hire refers to the work created by an employee as part of his or her job. Also is considered work made for hire every work created on behalf of a client, when all the parties agrees explicitly to it in writing and both the creator and the commissioner signs the agreement. This is also known as Corporate Authorship, alluding to the situation where the employer is considered the legal author of the work.
In Chile this subject is treated in the Industrial Propriety Law (Ley de Propiedad Industrial Nº 19.039) and in general the principle is the same, but there is some clarifications to be made.
For something to be considered work made for hire (or “Invenciones en Servicio” as the law treats them) it is necessary that the work for which the person was hire, is one of inventive or creative nature. If this is the case, all the copyrights will be own exclusively by the employer. This rule will not apply when all the parties agreed explicitly on the contrary. The same applies for a working contract or for any service contract.
It is necessary to say that in the Chilean Legislation the work contract doesn’t need to be a written contract to have legal existence, but in almost all of the cases it will be put in written.
Now, the employee that is hire for doing any kind of work, which is not inventive or creative, will be the exclusive owner of all the copyrights for the inventions that he creates, and suitable to apply for registration of the inventions, even during the duration of the work relation. However, if the knowledge and the means that evidently help to create the invention where provided by the employee, the copyrights and the rights to register will be own by the company, in which case the employee should grant a compensation to the employee, subject to an agreement between the parties.
The same will happen in the service contract, when the creation or invention is different of what was mandated, and has been evidently benefited from the knowledge or means provides by the principal. Some special rules will apply for the employees and independent contractors of university and research centers.
All the rights of the employee over this matter cannot be waived before the registration of the invention.
The Industrial Property Court, established in the same Law, will resolve any controversy aroused from this matter.
Santiago Henriquez C., Lawyer
Picture: Paula Porto (CC0)