Under the Work for Hire doctrine, when an employee creates copyrightable work as part of their regular duties, the copyright rights belong to the employer. This can be changed by an agreement between the employer and employee.

            Employers sometimes have an agreement with an employee where the employee assigns their rights in anything they create to the employer. A law which took effect in New York late last year limits the enforceability of such broad agreements. 

            Under this law, employers cannot require an employee to assign inventions which are made on the employee’s own time and do not use an employer’s equipment, supplies, facilities or trade secret information, unless the inventions:

• Relate to the employer's business or actual or anticipated research and development; or
• Result from work performed by the employee for the employer.

             The legislative history indicates that the term “inventions” was intended to broadly cover all intellectual property.

            New York joins eleven other states which have similar laws.

            We recommend that employers review existing agreements to determine whether they comply with this law.