Sean M. O'Connor, Hired to Invent vs. Works Made for Hire: Resolving the Inconsistency Among Rights of Corporate Personhood, Authorship, and Inventorship, 35 Seattle. U. L. Rev. 1227 (2012), https://digitalcommons.law.uw.edu/faculty-articles/203
Seattle University Law Review
corporate personhood, patents, works made for hire
This Essay focuses on the interrelation of three legal doctrines that affect the allocation of ownership and attribution of products of the human mind. The first, corporate personhood, grants corporations rights of personhood similar to those of natural persons. The second, the work-made-for-hire doctrine (WMFH) under copyright law, allocates ownership and attribution for copyrightable works to the employer of the natural-person author—even where that employer is a nonnatural, legal person such as a corporation. And the third, shop rights and the hired-to-invent exception, permits courts to grant equitable licenses or assignments to employers for their employees’ inventions.
These three doctrines have very different backgrounds and rationales. Yet, they are increasingly brought to bear simultaneously in innovative firms where creative works are developed that include copyrightable and patentable elements. The inconsistency in these doctrines and their application, even when written agreements between creators and corporate persons exist, is leading to uncertainty and litigation. This problem is likely to get only worse as corporations develop more “convergence” products that contain copyrightable and patentable elements, such as video games and smartphone applications.
Accordingly, this Essay argues that Congress should amend both the Copyright Act and the Patent Act to harmonize the ownership and attribution allocation rules, while expressly preempting shop rights and the hired-to-invent exception under state common law. This harmonization would center on allocating ownership of inventions and works of authorship to corporations, while still allocating attribution inalienably to inventors and authors. In this way, firms would get the ownership rights they need to justify investment in the inventions and works, as well as to facilitate orderly development, manufacturing, and distribution of products embodying the inventions and works. At the same time, creators would be able to retain attribution rights crucial for their professional development and credentials.
The Essay briefly reviews corporate personhood in Part II. It then outlines the background context and current state of the law governing authorship in Part III and inventorship in Part IV. Finally, Part V proposes that: (1) the WMFH provision in the Copyright Act be amended to grant inalienable attribution rights to the natural-person creators of copyrightable works; and (2) the Patent Act be amended to add a WMFH provision for patentable inventions that expressly preempts shop rights and the hired-to-invent exception under state common law, while also granting inalienable attribution rights to natural-person inventors of patentable inventions.