Where an IC is hired to create intellectual property—for example, writings, music, software programs, designs or inventions—you should include a provision controlling the arrangement. Unless you include a specific provision about the assignment or transfer of intellectual property rights to you by an IC, you can never be sure that you will own the work you pay the IC to create.
You can use the following clause by which the IC assigns to you his or her rights in any intellectual property he or she creates on your behalf. Alternatively, you can use a work-made-for-hire agreement. By using such an agreement, you are considered the author of any copyrightable work the IC creates.
Caution Work for Hire Is Risky in California
It is not a good idea to use work-for-hire agreements in California because it may cause the worker to be considered your employee for state law purposes. (See Intellectual Property Ownership for more on this issue.)
Suggested Language
Intellectual Property Ownership
Contractor assigns to Client all patent, copyright and trade secret rights in anything created or developed by Contractor for Client under this Agreement. Contractor shall help prepare any documents Client considers necessary to secure any copyright, patent or other intellectual property rights at no charge to Client. However, Client shall reimburse Contractor for reasonable out-of-pocket expenses.
Having paid the IC to create intellectual property for you, you probably won’t want the IC to use the material for others without your permission and will probably want to include the following paragraph. However, this is always subject to negotiation.
Optional Language
Intellectual Property Ownership
Contractor agrees not to use any of the intellectual property mentioned above for the benefit of any other party without Client’s prior written permission.