Copyright Explained: What Does ‘Within The Scope Of Employment’ Mean?

July 5, 2024

In an earlier post, we discussed how the copyright concept known as “Work Made For Hire” is often misunderstood and, in practice, it’s much narrower than many companies assume. You can read the earlier post here for additional context. Below, we’ll delve a little deeper and discuss when an employee may be deemed to have developed a copyrighted work ‘within the scope of his or her employment’.  

What Does ‘Within the Scope of His or Her Employment’ Mean in Copyright Law? 

Courts will determine whether an employee developed a copyrighted work “within the scope of his or her employment” based on the specific facts of the case. However, courts will often consider factors such as:  

  • The nature of the creator’s job duties, and whether the work was created as part of the creator’s regular job duties during regular working hours. 
  • The nature and length of the creator’s relationship with the hiring party, including whether the hiring party could assign other projects, or direct the creator when and how long to work. 
  • Whether the creator has their own business and could hire and pay their own assistants to help with the project 
  • How the creator was paid, including whether the hiring party paid employee benefits and withheld taxes from the creator’s pay. 
  • Work location and whether the hiring party provided the space, equipment, materials, or company knowledge bank to create the work. 

Some cases are clearer, for example, if a software developer writes a software program for the company as part of her regular job duties, during her regular working hours, as a salaried employee who receives employee benefits from the company. In this case, the software program that the software developer created is a work made for hire, and the  copyright in the software program belongs to the company.  

However, the situation can become unclear when employees use the skills they leverage at work in their personal time. Consider an accountant who develops a personal finance app using his home computer while on his lunch break at work. If developing personal finance software is not part of the accountant’s regular duties for his employer, and the work was done on his own time (during his unpaid lunch break) using his own personal computer, and the employer has no oversight of the accountant’s creation of the app, then the copyright in the app likely belongs to the accountant. The accountant may have used his general accountancy knowledge in creating the app, but the copyright in this side-project likely does not belong to the company.  

In addition, it is important to remember that the “work made for hire” law only applies to copyright. It does not apply to patents or trade secrets. Thus, in cases where employees develop new and useful inventions or valuable trade secrets, even within the scope of their regular job duties, a company still must take steps to ensure they own such IP. 

Protecting Your Company’s Intellectual Property 

The mechanisms you use to protect your corporate IP will vary depending on the nature of the intellectual property at issue.  

  • For patentable inventions, employees must expressly assign their invention rights to the company using an invention assignment document. 
  • Copyright requires a written assignment of rights from contractors. In the case of works that qualify as works made for hire, the company will automatically own the work. However, as we highlighted above, the ownership of employee-created works can become a grey area when employees create things on their own time or using their own equipment.  
  • Trade secrets should be assigned in writing, and companies should also use non-disclosure agreements and best practices for controlling access to and disclosure of trade secrets. Read more about protecting trade secrets here.  
  • Trademarks generally belong to the entity that uses the mark in commerce to identify its goods and services, so trademarks will usually belong to the company. However, to whatever extent an employee or contractor can be said to have created a trademark, it is a best practice to include it with the other forms of IP above in an assignment clause.  

Protecting Your Business with Employee/Contractor Agreements 

Your employee agreements and contractor agreements should include the following IP protections:  

  • Ownership of Inventions and Creations: Stipulate that any inventions, works of authorship, or other IP created within the scope of work performed for your company belong to the company, and include a clear assignment of all such IP from the employee or contractor to the company. 
  • Non-Disclosure Agreement (NDA): Protect confidential information by requiring employees and contractors to sign an NDA that protects trade secrets and other confidential and proprietary information. 

To further safeguard your intellectual property, consider these practices: 

  • Sign Agreements Before Work Starts: It can get complicated trying to implement protections later, and it’s not always as effective. So, it’s best to have employees and contractors sign their employee agreement or contractor agreement (which includes the above protections) before starting work. 
  • Trade Secret Protocols: Restrict access, clearly mark confidential materials, and implement robust NDAs. 
  • Tailor the agreement to your business. It can be tempting to download a free template to protect your IP (particularly if you’re bootstrapping or in the early seed rounds). However, the specific clauses you need may depend on your industry, the employee’s role, and your business needs and goals.  

If you need help managing your IP, reach out. We have recently expanded our IP expertise, and we would love to work with you.  


The materials available at this website are for informational purposes only and not for the purpose of providing legal advice. You should contact your attorney to obtain advice with respect to any particular issue or problem. Use of and access to this website or any of the e-mail links contained within the site do not create an attorney-client relationship between CGL and the user or browser. The opinions expressed at or through this site are the opinions of the individual author and may not reflect the opinions of the firm or any individual attorney.

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