Is the Copyright Act Inconsistent with the Law of Employee Invention Assignment Contracts?

* Partner, Wilson Sonsini Goodrich & Rosati, San Francisco, and Adjunct Faculty, University of California, Hastings College of the Law.

** This essay is the first in a three-part series addressing under-analyzed areas of intellectual property and employee mobility law which impact creative employees when changing jobs. Departing employees can face a tangled body of contract, tort, and statutory claims brought by former employers. Academics and practitioners have provided little commentary about some of these overlooked areas of law. This relative inattention is surprising given the important policy concerns so often at stake in mobility disputes.

[1] One powerful, if rare, example of the sort of thoroughgoing critique that is all too often lacking is found in Orly Lobel, The New Cognitive Property: Human Capital Law and the Reach of Intellectual Property, 93 Tex. L. Rev. 789, 792-93, 798-99, 801-03, 813-15 (2015) (tying the overbreadth of employee invention assignment agreements – noting, among other things, post-employment holdover clauses – to broader concerns over employer overreach and resulting harms to mobility and growth of new enterprises).

[2] Avtec Sys. v. Peiffer, 21 F.3d 568 (4th Cir. 1994).

[3] In general, and while definitions vary slightly from state to state, a trade secret is non-public business information valuable to competitors that the owner has protected with reasonable security measures. E.g., Defend Trade Secrets Act of 2016 § 2(b)(1), Pub. L. No. 114-153, 18 U.S.C. § 1839(3), 130 Stat. 376, 380.

[4] Disputes over these so-called “preparations to compete” will be the subject of the next essay in this series.

[5] Even if preparations to compete are legal, an employer can terminate an employee found to be engaging in such activities. See Fowler v. Varian Assocs., Inc., 241 Cal. Rptr. 539, 544 (Ct. App. 1987) (granting summary judgment for employer where employee brought wrongful termination claim after being fired for making preparations to leave and compete).

[6] Readers may wonder why this essay refers to employers’ trade secret rights through invention assignment agreements, rather than patent rights. After all, and as the very phrase “invention assignment” suggests, patents are what scholars and practitioners likely think of first, if not exclusively, when the subject of invention assignment arises. But this misses an important timing point: when an employee conceives a patentable invention, it first exists as intellectual property in the form of a trade secret, not a patent. If the employer chooses to pursue a patent application, that election comes after the point of initial, automatic assignment. That is why this essay points to a clash between competing copyright and trade secret rights in the same work product.

[7] While ownership of an invention would otherwise vest in the inventor, the standard rule and practice is that an employee can contract ownership away through an invention assignment agreement. See Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993); Access Cardiosystems, Inc. v. Fincke (In re Access Cardiosystems, Inc.), 340 B.R. 127, 147 (Bankr. D. Mass. 2006) (explaining rules). Thus, “an employer owns an employee’s invention if the employee is a party to an express contract to that effect.” Banks v. Unisys Corp., 228 F.3d 1357, 1359 (Fed. Cir. 2000); Grove v. Grove Valve & Regulator Co., 84 Cal. Rptr. 300, 303-04 (Ct. App. 1970) (early case finding that employer owned improvements to various inventions in enforcing terms of employee invention assignment agreement signed in 1959).

[8] Although such contracts assign ownership of rights including those governed by federal law – i.e., patents, but also trade secrets given the 2016 Defend Trade Secrets Act – their interpretation is largely, but not entirely a matter of state law. Until 2008, the interpretation was solely one of state law. See Affymetrix, Inc. v. Illumina, Inc., 446 F. Supp. 2d 292, 296 (D. Del. 2006) (applying California law; “The proper construction of assignment agreements is a matter of state contract law.”) (citing Minco, Inc. v. Combustion Eng’g, Inc., 95 F.3d 1109, 1117 (Fed. Cir. 1996)). This default rule was modified in 2008, when the Federal Circuit ruled that, at least as to the question of whether an assignment contract creates an automatic future conveyance of inventions not yet in existence – which is accomplished by the inclusion of the magic words “hereby assign” – is one of federal law. See DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1289-90 (Fed. Cir. 2008). DDB’s reasoning was based on federal courts’ powers as to “the question of standing in patent cases.” Id. See also Intellectual Ventures I LLC v. Erie. Indem. Co., 850 F.3d 1315, 1320 n.1 (Fed. Cir. 2017) (stating rule). The decision was notably silent on what law would govern the future conveyance of state law trade secret rights in an employee creation.

[9] See discussion and cases infra Section B.

[10] Hercules Glue Co., Ltd. v. Littooy, 76 P.2d 700, 701 (Cal. Dist. Ct. App. 1938) (enforcing employee invention assignment contract in favor of employer: “By the terms of this contract, appellant agreed that he would devote his entire time, knowledge, skill, best efforts, and services to the work of respondent as it might direct; that all patents, processes, or formulas, pertaining to spreader, which he invented, developed or perfected during his original and present employment, should be the property of respondent, and that he would, on demand, execute any assignments, transfers or other instruments necessary to perfect respondent’s title thereto. He further agreed that he would not, during its life or subsequently, divulge to any person, or use for his own benefit, any secret processes or formulas invented, developed, or perfected by him or respondent between October 1, 1924, and the termination of the agreement.”). Other early cases involving written contacts include: Kober v. United States, 170 F.2d 590, 592, 594 (4th Cir. 1948) (finding that an employment agreement with a U.S. government employer providing for “the complete assignment” of inventions made by the employee was a “reasonable agreement entered into for a lawful and proper purpose” and holding that inventions made by an engineer subject to this agreement therefore belonged to the government-employer); Crown Cork & Seal Co., v. Fankhanel, 49 F. Supp. 611, 613, 615 (D. Md. 1943) (construing and finding enforceable an invention assignment agreement that required the employee to assign rights over to the employer for “[a]ll inventions and discoveries which I make while in the employ of said Company, along the lines of its general work, constituting improvements both in its then existing products and methods of manufacture, or otherwise, shall become its exclusive property,” and holding that the employment agreement was valid and enforceable).

[11] See Cal. Lab. Code §§ 2870-2872 (West 1979); Del. Code. Ann. tit. 19, § 805 (1984); 765 Ill. Comp. Stat. 1060 / 2 (1983); Kan. Stat. Ann. 44-130 (West 1986); Minn. Stat. Ann. § 181.78 (West 1977); N.C. Gen. Stat. §§ 66-57.1-.2 (1981); Utah Code. Ann. § 34-39-3 (West 1989); Wash. Rev. Code Ann. §§ 49.44.140, .150 (West 1979). Based on this author’s experience, companies often mimic the structure of these state statutes in employment agreements, even for employees residing in other states. As a result, these eight statutes have great influence beyond their home jurisdictions.

[12] See Cal. Lab. Code §§ 2870-72 (West 1979).

[13] Id. § 2870. The “results from” clause is unclear, but its interpretation has not yet been the subject of a published decision.

[14] Id. § 2871.

[15] Wash. Rev. Code Ann. § 49.44.150 (West 1979).

[16] See id.; Lab. § 2872.

[17] See Nev. Rev. Stat. Ann. § 600.500 (West 2001).

[18] Id.

[19] See Mary LaFrance, Nevada’s Employee Inventions Statute: Novel, Nonobvious, and Patently Wrong, 3 Nev. L.J. 88 (2002) (well-done dissection of the then-new state statute, noting its departure from the common law, contrast with other state statutes, and contrast with the work for hire rules; predicting the statute would not, as apparently intended, encourage the growth of technology companies in Nevada).

[20] There is a cottage industry of notes and law review articles positing that if employees were given greater compensation for, or some ownership stake in, inventions created for the employer in the workplace, innovation would increase. See Shlomit Yanisky Ravid, Rethinking Innovation and Productivity Within the Workplace Amidst Economic Uncertainty, 24 Fordham Intell. Prop. Media & Ent. L.J. 143 (2013) (arguing that employees would have a greater incentive to invent if they retained a greater interest in – and received financial compensation for – workplace inventions); Ann Bartow, Inventors of the World, Unite! A Call for Collective Action by Employee-Inventors, 37 Santa Clara L. Rev., 673, 677 (1997) (advocating that employees refuse to sign invention assignment agreements and instead try to own workplace inventions themselves); Evelyn D. Pisegna-Cook, Ownership Rights of Employee Inventions: The Role of Preinvention Assignment Agreements and State Statutes, 2 U. Balt. Intell. Prop. L.J. 163, 185 (1994) (general survey of common law and state statutes; concluding by advocating additional compensation for employee-inventors and greater adoption of statutes to regulate invention assignment contracts); Steven Cherensky, Note, A Penny for Their Thoughts: Employee-Inventors, Preinvention Assignment Agreements, Property, and Personhood, 81 Cal. L. Rev. 595 (1993) (in an argument premised on a Hegelian-inflected notion of personhood and property rights, advocating a greater property allocation to employees for workplace inventions); Henrik D. Parker, Note, Reform for Rights of Employed Inventors, 57 S. Cal. L. Rev. 603, 624-25 (1984) (arguing that compensation schemes for workplace inventions would increase innovation); William P. Hovell, Note, Patent Ownership: An Employer’s Rights to His Employee’s Invention, 58 Notre Dame L. Rev. 863, 887-88 (1983) (advocating that employee-patent inventors receive a “reverse shop right” “to use any patent assigned to his employer”). All are speculative, and some rest on seemingly needless concepts of Hegelian personhood and the like. As much as I tend to favor departing employees, this line of articles is frustrating. Many seem to imagine that workplace inventions are created by a sole inventor rather than by teams, none contemplate the quagmires that could result in bickering over who owns what within the office, and the philosophical reference points seem arbitrary.

I consider all of these fully answered by Robert P. Merges, The Law and Economics of Employee Inventions, 13 Harv. J.L. & Tech. 1, 14-18 (1999) (arguing that the current employer-ownership regime is best calibrated to avoid problems such as disruptive employee “holdups”: “The employees could hold up the firm for the full value of its investment.”). Merges notes the seemingly obvious problems that would arise in scenarios where employees share in ownership of inventions made for the employer’s benefit. This essay is by contrast focused on outside-the-workplace creations by employees planning their next venture which have no connection, or only some tenuous connection, to their present employer’s business.

[21] Articles which address topics other than whether assigning workplace inventions to the employer is equitable include: Parker A. Howell, Whose Invention is it Anyway? Employee Invention-Assignment Agreements and Their Limits, 8 Wash. J.L. Tech. & Arts 79 (2012) (practitioner-oriented overview of state statutes and a sampling of case law); Joshua L. Simmons, Inventions Made for Hire, 2 N.Y.U. J. Intell. Prop. & Ent. L. 1, 49 (2012) (arguing that the law of employee-patent assignments contains too many procedural stumbling blocks and advocating that patent law be amended to match the work for hire terms of the Copyright Act); Donald J. Ying, A Comparative Study of the Treatment of Employee Inventions, Pre-Invention Assignment Agreements, and Software Rights, 10 U. Pa. J. Bus. & Emp. L. 763 (2008) (survey of invention assignment laws in the United States and other countries); Michael R. Mattioli, The Impact of Open Source on Pre-Invention Assignment Contracts, 9 U. Pa. J. Lab. & Emp. L. 207, 228-34 (2006) (article on what might happen if an employee creates a patentable invention while contributing to an open source project).

[22] See generally Solomons v. United States, 137 U.S. 342, 346 (1890) (“[W]hatever invention [an inventor] may thus conceive and perfect is his individual property.”); Gayler v. Wilder, 51 U.S. 477, 478–93 (1851) (“But the discoverer of a new and useful improvement is vested by law with an inchoate right to its exclusive use, which he may perfect and make absolute by proceeding in the manner which the law requires.” The case involved an assignment by the inventor to a businessperson.).

[23] “[U]nless there is an agreement to the contrary, an employer does not have rights in an invention ‘which is the original conception of the employee alone.’” Bd. of Trs. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., 563 U.S. 776, 786 (2011) (quoting United States v. Dubilier Condenser Corp., 289 U.S. 178, 189 (1933)). “In most circumstances, an inventor must expressly grant his rights in an invention to his employer if the employer is to obtain those rights” because “the respective rights and obligations of employer and employee, touching an invention conceived by the latter, spring from the contract of employment.” Id. at 786. (quoting Dubilier, 289 U.S. at 187). Thus, the Court has “rejected the idea that mere employment is sufficient to vest title to an employee’s invention in the employer.” Id. at 789. However, there is an exception for employment situations where the employee has “only produced that which he was employed to invent.” Dubilier, 289 U.S. at 187. This “hired to invent” exception exists because the employee’s invention “is the precise subject of the contract of employment. A term of the agreement necessarily is that what he paid to produce belongs to his paymaster.” Id. at 187. “On the other hand, if the employment be general, albeit it cover a field of labor and effort in the performance of which the employee conceived the invention for which he obtained a patent, the contract is not so broadly construed as to require an assignment of the patent.” Id. The Supreme Court first applied the hired to invent exception in a 1924 case, Standard Parts Co. v. Peck. In that case, the defendant was employed under a contract to “devote his time to the development of a process and machinery for the production of the front spring now used on the product of the Ford Motor Company.” Standard Parts Co. v. Peck, 264 U.S. 52, 59 (1924). After inventing the specific process and machinery contemplated by his employment contract, the defendant secured a patent on the aforementioned technology which he refused to convey to the plaintiff. Finding that the invention of the specific patent at issue was the “object and effect” of the defendant’s employment contract, and that in inventing the technology at issue, the defendant was “doing nothing more than he was engaged to do and paid for doing,” the Court held that the patent belonged to the plaintiff. Id. at 59-60.

For other early cases, see Houghton v. United States, 23 F.2d 386, 389 (4th Cir. 1928) (Surgeon General appointed government employees to a board whose purpose was to develop a safer fumigant, and thus the defendant “did merely that which he was being paid his salary to do,” so there could be “no doubt” that his invention belonged to the government.); Magnetic Mfg. Co. v. Dings Magnetic Separator Co., 16 F.2d 739, 741 (7th Cir. 1926) (on contested facts, finding that employee was hired to invent from his own conduct, where he had promptly assigned two prior inventions, and thus owed an assignment duty even as to an invention that related to only a peripheral part of his employment duties). An employer might overcome hired-to-invent issues where a manager came up with the invention, and the employee claiming ownership was merely the one who reduced it to practice. In one early California case, the court distinguished between an employer who had the “general idea of a machine” and an employee who implemented the idea – even though the employee was the signatory on the patent application – in granting ownership to the employer in an improvement for movie studio lighting. Famous Players-Lasky Corp. v. Ewing, 194 P. 65, 66 (Cal. Dist. Ct. App. 1920).

[24] See, e.g., Fish v. Air-O-Fan Prods. Corp., 285 F.2d 208, 210-11 (9th Cir. 1960) (finding implied in fact assignment contract where evidence showed employee was hired to invent); Consol. Vultee Aircraft Corp. v. Maurice A. Garbell, Inc., 204 F.2d 946, 949 (9th Cir. 1953) (although employee had conceived invention before joining employer, he had used employer’s resources to perfect it, and thus employer had shop right to manufacture, use, and sell “airplanes embodying” the invention); Aero Bolt & Screw Co. v. Iaia, 5 Cal. Rptr. 53, 58 (Cal. Ct. App. 1960) (employee retained ownership of invention with no shop right for employer where, among other things, trial court found that employee “on his own time, and at his own expense, designed and developed the [invention]; that he paid all of the development costs out of his own pocket”); Zahler v. Columbia Pictures Corp., 4 Cal. Rptr. 612, 617 (Ct. App. 1960) (where employee was hired to create background music, court applied a version of the hired-to-invent doctrine to grant employer performance rights; “Where an employee creates something as part of his duties under his employment, the thing created is the property of his employer.”); Banner Metals, Inc. v. Lockwood, 3 Cal. Rptr. 421, 428-33 (Ct. App. 1960) (where salesperson had only an oral employment contract, court found that employer did not own the employee’s invention through the hired-to-invent-doctrine and also did not have a shop right in the invention, because the employee had created it on his own time and, on contested facts, had not used the employer’s materials); Quaker State Oil Ref. Co. v. Talbot, 174 A. 99, 101-04 (Pa. 1934) (employee was hired to invent under oral contract, but employer did not obtain shop right to employer’s pre-existing work that was not created with use of employer’s resources).

[25] See Peregrine Semiconductor Corp. v. RF Micro Devices, Inc., No. 3:12-CV-0911-H (WMC), 2014 U.S. Dist. LEXIS 2668, at *13 (S.D. Cal. Jan. 8, 2014) (where former employer sued former employee who transferred patent rights to a third party, and where employer could not prove it had a signed employment agreement, hired to invent doctrine did not favor employer on motion for preliminary injunction where it did not appear employee was hired for specific inventions at issue); Gen. Elec. Co. v. Wilkins, No. CV F 10-0674 LJO JLT, 2012 U.S. Dist. LEXIS 124642, at *59-60 (E.D. Cal. Aug. 31, 2012) (finding trial issues of fact on a hired-to-invent dispute where employee had not signed the company’s invention assignment agreement, but was a patent co-inventor); McClain v. State, 269 S.W.3d 191, 198-99 (Tex. App. 2008) (prosecution failed to show that defendant was hired to invent, such that improvements he made to “set up sheets” belonged to him, with a shop right to his employer); Pedersen v. Akona, 429 F. Supp. 2d 1130, 1143 (D. Minn. 2006) (in absence of invention assignment contract, finding that employer owned patent because employee was hired to invent); Scott Sys., Inc. v. Scott, 996 P.2d 775, 779 (Col. App. 2000) (reversing summary judgment where there were triable issues of fact as to whether individual was hired to invent or not with respect to certain inventions); Teets v. Chromalloy Gas Turbine Corp., 83 F.3d 403, 408 (Fed. Cir. 1996) (using the terminology of an implied-in-fact contract, but engaging in same analysis as hired to invent cases, reversing trial court and finding implied employee assignment obligation for invention where employee worked at company’s direction and used its resources); Liggett Grp., Inc. v. Sunas, 437 S.E.2d 674, 678-80 (N.C. Ct. App. 1993) (reversing grant of summary judgment in favor of employer and finding triable issues of fact as to whether employee with no invention assignment contract was hired to invent in connection with tobacco-related patent); California E. Lab., Inc. v. Gould, 896 F.2d 400, 402-03 (9th Cir. 1990) (defining shop right concept and finding that right transferred to successor entity); Aetna-Standard Eng’g Co. v. Rowland, 493 A.2d 1375, 1381-82 (Pa. Super. Ct. 1985) (employee with no written contract was not hired to invent and thus owned no assignment duty to employer of invention, but employer had shop right license because its resources were used in development); Mechmetals Corp. v. Telex Comput. Prods., Inc., 709 F.2d 1287, 1292-94 (9th Cir. 1983) (finding no shop right where company CEO had worked with two others to create invention, and company paid for materials and machine time CEO used when working on invention; existence of that contract and CEO’s status militated against finding shop right); Vigitron, Inc. v. Ferguson, 419 A.2d 1115, 1117-18 (N.H. 1980) (employer owned invention because employee was hired to invent).

[26] An invention assignment agreement with the phrase “hereby assign” (or similar language) operates to automatically vest a covered invention with the employer at the moment it is created by the employee. No further action – that is, no formal act of assignment by the employee – is required for the automatic invention assignment to be effective. See Roche, 563 U.S. at 785-93 (noting historical rule that employee-inventors maintain ownership of their inventions absent an agreement with the employer; university did not own invention where agreement contained “will assign” language, separate agreement with private company had “hereby assign” language, and Bayh-Dole Act did not change the ordinary rules of employee invention assignment contracts); Advanced Video Techs. LLC v. HTC Corp., 879 F.3d 1314, 1317-18 (Fed. Cir 2018) (invention assignment agreement failed where it stated only that employee “will assign” rights, which is not a present conveyance of future conceptions); St. Clair Intellectual Prop. Consultants, Inc. v. Palm, Inc., No. 06-404-JJF-LPS, 2009 U.S. Dist. LEXIS 37512, *34-35 (D. Del. May 4, 2009) (finding that language in invention assignment agreements did not create a present conveyance of future rights); Freedom Wireless, Inc. v. Boston Comm. Grp., Inc., 220 F. Supp. 2d 16, 19 (D. Mass. 2002) (“In order for a pre-invention assignment contract to create a present assignment of an expectant interest in an invention that automatically vests by operation of law into an actual assignment upon conception, the contract must contain words of present conveyance and must require ‘no further act once an invention [comes] into being.’” (citation omitted) (contrasting contracts that use phrases like “does hereby grant” and “hereby does assign” with a contract that required the inventor to disclose the invention and perform acts necessary to establish ownership); Imatec, Ltd. v. Apple Comput., Inc., 81 F. Supp. 2d 471, 482 (S.D.N.Y. 2000) (“‘I agree to assign and hereby do assign’ . . . constituted a present assignment . . . of future inventions.”); Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1580 (Fed. Cir. 1991) (consulting agreement with phrase “will be assigned” “does not rise to the level of a present assignment of an existing invention, effective to transfer all legal and equitable rights therein”); Filmtec Corp. v. Allied-Signal, Inc., 939 F.2d 1568, 1573 (Fed. Cir. 1991) (invention assignment contract that used the phrase “agrees to grant and does hereby grant” was not merely an agreement to grant future rights, but expressly granted “rights in any future invention”); Treu v. Garrett Corp., 70 Cal. Rptr. 284, 287 (Ct. App. 1968) (where inventor had an assignment clause with his employer, the inventor’s ownership “was a fleeting thing which he had bargained away even before it became a reality . . . the instant the improvement was invented it became the exclusive property of [employer] . . . [plaintiff] had and could have no interest in the invention.”).

[27] See, e.g., Preston v. Marathon Oil Co., 277 P.3d 81, 87-88 (Wyo. 2012) (invention assignment agreement valid when entered into after at-will employment began); Eaton Corp. v. Giere, 971 F.2d 136, 140 (8th Cir. 1992) (both earlier and later invention assignment contracts were valid); Mosser Indus., Inc. v. Hagar, 200 U.S.P.Q. (BNA) 608, 610, 616 (Pa. Ct. Com. Pl. Jan. 11, 1978) (employee signed second invention assignment contract for one dollar); Grove v. Grove Valve & Regulator Co., 84 Cal. Rptr. 300, 303 (Ct. App. 1970) (employee’s valid invention assignment contract was “backdated” by more than a year).

[28] See Iconix, Inc. v. Tokuda, 457 F. Supp. 2d 969, 989, 992 (N.D. Cal. 2006).

[29] By analogy, a federal court in Ohio declined to find that a group of departing employees violated their duties of loyalty by making preparations to compete before leaving where, among other things, the employer’s evidence that they had used its resources was limited to a de minimis claim that one of them spoke to an insurer about the planned new venture “on his business cell phone.” See Fitness Experience, Inc. v. TFC Fitness Equip, Inc., 355 F. Supp. 2d 877, 892-93 (N.D. Ohio 2004) (employees who planned new company and met with attorneys, insurers, and realtors granted summary judgment). The same result might apply for similar de minimis infractions in the invention assignment context.

[30] E.g., Cal. Lab. Code § 2870 (West 1979).

[31] See Cadence Design Sys., Inc. v. Bhandari, No. C 07-00823 MHP, 2007 U.S. Dist. LEXIS 83078, at *21-23 (N.D. Cal. Nov. 8, 2007) (explaining scope of invention assignment in detail and rejecting argument that scope of assignment extends only to specific department in which the employee works).

[32] An attorney had even warned the employee on this point. See id. at *21-22.

[33] While there is little case law on the question, courts have rejected employees’ assertions that company managers or other employees waived or otherwise acquiesced to their personal use of inventions created during employment on two grounds: (a) because an invention automatically vests in the employer at the moment of creation, before the time of any claimed waiver; and/or (b) because the employee did not completely or fully disclose every facet of the invention to the employer, the employer could not have waived an interest in something it did not know everything about. See, e.g., DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1289-90 (Fed. Cir. 2008) (employee’s arguments of waiver and estoppel based on manager’s disinterest in idea were irrelevant because contract gave rise to automatic assignment at moment of creation); Iconix, 457 F. Supp. 2d at 986-87 (employee’s claim that manager and general counsel had expressed disinterest in the idea did not prevent invention assignment where idea was never fully disclosed). See also Eaton Corp., 971 F.2d at 137-38 (employee told employer just before his resignation “of his plans to develop and market his own competitive device” but invention vested in employer under invention assignment contract).

[34] See Applied Materials, Inc. v. Advanced Micro-Fabrication Equip. (Shanghai) Co., 630 F. Supp. 2d 1084, 1089-1091 (N.D. Cal. 2009) (voiding a clause under California law that created a purportedly rebuttable presumption that the employer owned inventions for one year after the employee left, even where no trade secrets were misappropriated); Ingersoll-Rand Co. v. Ciavatta, 542 A.2d 879, 890-95 (N.J. 1988) (applying a reasonableness analysis to a post-employment holdover invention assignment clause; finding that such covenants might be enforceable beyond “trade secrets and confidential information” to include some additional, poorly-defined category of “highly specialized, current information not generally known in the industry” that appears indistinguishable from contemporary definitions of what trade secret law covers); Fed. Screw Works v. Interface Sys., Inc., 569 F. Supp. 1562, 1564 (E.D. Mich. 1983) (agreement which required employees to assign all inventions for an indefinite time period relating to the employer’s field of activity or “contemplated field of activity” found unenforceable); Armorlite Lens Co. v. Campbell, 340 F. Supp. 273, 275 (S.D. Cal. 1972) (finding clause in employee invention assignment agreement which required assignment of new ideas and concepts for one year after employment ended was unenforceable unless such inventions used the trade secrets of the former employer); Winston Research Corp. v. Minn. Mining & Mfg. Co., 350 F.2d 134, 145-46 (9th Cir. 1965) (where employer’s contract required invention assignment of post-employment inventions that were “based upon” its confidential information, court affirmed rulings where such inventions were premised on former employer’s trade secrets, and thus owned by employer, or where no trade secrets were used); De Long Corp. v. Lucas, 176 F. Supp. 104, 127-28 (S.D.N.Y. 1959) (where settlement agreement between former employer and former employee only assigned rights to inventions developed during employment, and where evidence was that new inventions post-dated employment, former employee owed no assignment obligation), aff’d, 278 F.2d 804 (2d Cir. 1960); Guth v. Minn. Mining & Mfg. Co., 72 F.2d 385, 388 (7th Cir. 1934) (invention assignment agreement without time limitation was “contrary to public policy”); cf. Yield Dynamics, Inc. v. TEA Sys. Corp., 66 Cal. Rptr. 3d. 1, 26 (Ct. App. 2007) (where employer’s invention assignment contract created a one-year, post-employment holdover stating that there was a rebuttable presumption that inventions conceived within one year of leaving are owned by the employer, and that inventions during that time must be disclosed, court did not address legality of the clause and affirmed trial court on grounds that employee disclosed a post-employment development to the former employer, which did not request assignment).

[35] See Milliken & Co. v. Morin, 731 S.E.2d 288, 295 (S.C. 2012) (finding a one-year holdover clause enforceable even though it covered inventions created post-employment and without use of the employer’s trade secrets).

[36] For a well-written student note critiquing holdover clauses, see Marc B. Hershovitz, Note, Unhitching the Trailer Clause: The Rights of Inventive Employees and Their Employers, 3 J. Intell. Prop. L. 187, 206-12 (1995).

[37] See Feeney v. Transition Automation, Inc., No. 06-11677, 2008 WL 190766, at *17-19 (D. Mass. Jan. 9, 2008) (where individual disclosed invention before becoming employee and signing invention assignment contract, court interpreted language of contract to vest ownership with individual, not employer); Voith Hydro, Inc. v. Hydro W. Group, Inc., No. C–96–1170 SC, 1997 WL 154400, at *6 (N.D. Cal. Mar. 26, 1997) (although company had a valid employee invention assignment with individual, company did not own invention that employee had conceived and disclosed before becoming an employee of the company); Bailey v. Chattem, Inc., 684 F.2d 386, 391 (6th Cir. 1982) (employer did not own employee’s idea that “was complete prior to the time he began to work for” the employer, and thus prior to invention assignment agreement); Fox v. Kingsland, 81 F. Supp. 433, 437-38 (D.D.C. 1948) (where inventor was employed by Patent Office and also the Signal Corps, he retained ownership despite written agreement with the Signal Corps because invention pre-dated that employment).

[38] The incorporation of pre-existing material does not defeat an invention assignment of the new combination as a whole. See, e.g., ViChip Corp. v. Lee, 438 F. Supp. 2d 1087, 1095 (N.D. Cal. 2006) (granting summary judgment and rejecting employee’s argument that some of the technology in the invention was “preexisting”; employee failed to identify such material or explain how it could be “carved out from” the overall invention that was subject to his employment agreement); Mosser Indus., Inc. v. Hagar, 200 U.S.P.Q. (BNA) 608, 613-14 (Pa. Ct. Com. Pl. Jan. 11, 1978) (granting injunction for employer; even if employee thought up “individual elements” of his creation before he joined the employer, his “combination of those elements into a working prototype occurred during” his employment, and thus the invention assignment clause applied to that “combination”).

[39] See, e.g., Imatec, Ltd. v. Apple Comput., Inc., 81 F. Supp. 2d 471, 482 (S.D.N.Y. 2000) (prior employer had invention assignment contract which covered invention, and thus former employee had nothing to assign to third party and third party lacked standing to sue over patent at issue); Filmtec Corp. v. Allied-Signal, Inc., 939 F.2d 1568, 1573-74 (Fed. Cir. 1991) (stating same rule and remanding for factual findings as to whether company had actual or “inquiry” notice of a prior invention assignment to a former employer or a third party and thus may not have been bona fide purchaser); Thompson v. Automatic Fire Prot. Co., 211 F. 120, 121 (2d Cir. 1914) (where inventor already had assigned invention to plaintiff, and where defendants knew of that assignment, assignment to defendants was invalid: “It seems to us that a business man of reasonable care and prudence would, under these circumstances, before putting his money into an enterprise, have gone to [plaintiff] and asked him if he was making any claim to this invention of [inventor] and, if he said he was, would have asked him what was the nature of his claim, so that the inquirer might advise himself whether he could safely purchase.”).

[40] See Venture Corp. v. Barrett, No. 5:13-cv-03384-PSG, 2015 U.S. Dist. LEXIS 165809, at *13-14 (N.D. Cal. Dec. 9, 2015) (affirming jury finding that employee’s invention belonged to employer because it was created using the employer’s time or resources); Blackbird Techs., Inc. v. Joshi, No. 5:15-cv-04272-EJD, 2015 U.S. Dist. LEXIS 136505, at *24 n.6 (N.D. Cal. Oct. 6, 2015) (issuing preliminary injunction under duty of loyalty theory against employee who started competitive business while employed; terms of injunction barred use of inventions covered by invention assignment agreement); Preston v Marathon Oil Co., 684 F.3d 1276, 1359-60 (Fed. Cir. 2012) (invention assignment agreement valid and assigned rights in invention to employer); NovelAire Techs., LLC v. Harrison, 50 So. 3d 913, 919-21 (La. Ct. App. 2010) (affirming finding that employee violated invention assignment agreement by failing to disclose invention he created and took to new venture after departing); Iconix, Inc. v. Tokuda, 457 F. Supp. 2d 969, 989-92 (N.D. Cal. 2006) (issuing preliminary injunction over social media tool that related to company’s advertising strategy plan); Regents of the Univ. of N.M. v. Knight, 321 F.3d 1111, 1118 (Fed. Cir. 2003) (affirming finding that university patent policy vested ownership in invention in institution); Fenn v. Yale Univ., 283 F. Supp. 2d 615, 629-30 (D. Conn. 2003) (academic bound by university’s patent assignment policies, despite policy amendments since he agreed to it, and thus university owned patent he had licensed to a third party); Univ. of W. Va. v. Van Voorhies, 278 F.3d 1288, 1298 (Fed. Cir. 2002) (academic bound to assign patent under university’s patent policy); Waterjet Tech., Inc. v. Flow Int’l Corp., 996 P.2d 598, 601-02 (Wash. 2000) (where former employee refused to assign rights over patent to workplace invention, court found notice to employee satisfied Washington’s invention assignment statute such that invention assignment contract was enforceable to vest ownership in employer); Vt. Microsys., Inc. v. Autodesk, Inc., 88 F.3d 142, 150-51 (2d Cir. 1996) (affirming ruling that defendant, who started as intern and later became employee and signed an invention assignment agreement, had no interest in software created for the company); Eaton Corp. v. Giere, 971 F.2d 136, 140 (8th Cir. 1992) (granting summary judgment in favor of employer where employee had breached invention assignment agreement by creating a product within employer’s “actual or demonstrably anticipated research and development,” even though employee’s invention related to a market which employer had “not yet been able to crack”); Cubic Corp. v. Marty, 229 Cal. Rptr. 828, 835 (Ct. App. 1986) (affirming judgment for employer where assignment provision was for “inventions which relate to the ‘actual’ or ‘demonstrably anticipated’ business of the employer); Goldwasser v. Smith Corona Corp., 817 F. Supp. 263, 276 (D. Conn. 1993) (entering summary judgment for IBM, noting that employee’s invention or idea which “involve[d] the entry of text into a computer relates to IBM’s ‘actual or anticipated business’”); Gen. Signal Corp. v. Primary Flow Signal, Inc., No. 85-0471B, 1987 WL 147798, at *4 (D.R.I. July 27, 1987) (granting employer ownership of invention where employee was subject to invention assignment agreement, and claimed to have come up with new ideas just five days after leaving job; court found employee’s account “difficult to believe”); Syntex Ophthalmics, Inc. v. Tsuetaki, 701 F.2d 677, 682 (7th Cir. 1983) (affirming finding in favor of employer on invention assignment dispute given “the inherent improbability” of employee’s “story that he conceived of the [invention] four days after he left” his job); Andreaggi v. Relis, 408 A.2d 455, 460 (N.J. Super. Ct. Ch. Div. 1979) (invention related to employee’s work and thus fell within invention assignment agreement); Goodyear Tire & Rubber Co. v. Miller, 22 F.2d 353, 354 (9th Cir. 1927) (where defendant signed an employment contract in which he agreed expressly to assign title to any inventions that related to “methods, processes, or apparatus concerned with the production of any character of goods or materials sold or used” or “any character of goods or materials sold or used” by Goodyear, employer owned invention that fell within general range of what employee was hired to do).

[41] See Mattel, Inc. v. MGA Entm’t, Inc., 616 F.3d 904, 909-12 (9th Cir 2010) (vacating constructive trust for former employer because invention assignment agreement did not contain the word “ideas” and remanding for consideration of extrinsic evidence; court notably did not construe California Labor Code section 2870 except for a passing reference in a footnote). One student commentator found fault with the ruling, but erroneously conflated California’s invention assignment statute with the work for hire doctrine. See Connor Boyd, Note, The Bratz Trap: Ownership and Infringement at the Nexus of Copyright and Employment Law, 45 U.C. Davis L. Rev. 221, 237, 245 (2011) (asserting that section 2870 “refined” the work for hire doctrine, assuming that a state statute could alter the federal Copyright Act and that its coverage was not instead for trade secrets and patentable inventions).

[42] One court denied (in whole or in part) cross-motions for summary judgment where there were disputed facts regarding an employee’s development of source code on his own time, for an unrelated side business, but that the employer contended contained “similarities” with its own source code. See Enreach Tech., Inc. v. Embedded Internet Sols., Inc., 403 F. Supp. 2d 968, 974-75 (N.D. Cal. 2005). See also Rothschild v. Cree, Inc., 711 F. Supp. 2d 173, 182-83 (D. Mass. 2010) (finding fact issues on jurisdictional matters as to individual’s standing to sue for patent infringement where it was unclear whether individual had developed key patent ideas while under another company’s invention assignment agreement or afterwards).

[43] See cases cited supra notes 7, 34, 36. As with any attempt to count holdings from reported cases, caveats are in order. The LEXIS and Westlaw databases do not pick up every ruling in every case, especially those from state trial courts. Some rulings in trade secret cases may be under seal, so that details are not viewable to the public. Appellate rulings matter more than trial court rulings, but the degree of careful analysis varies from case to case. Reported cases may or may not reflect typical fact patterns. Many disputes settle without litigation, or settle before a court issues a ruling on issues of substantive law. As a result, apparent trends in case law can be somewhat arbitrary, as they depend on what lawsuits become easily available to researchers.

[44] Of the three, one remanded on a rather unique contract interpretation, one is unpublished, and one arose from a time period before California enacted its current invention assignment statute. The same outcome under today’s statute seems unlikely. See Mattel, 616 F.3d at 909-12; Applera Corp. v. Illumina, Inc., 375 Fed. App’x. 12, 17-18 (Fed. Cir. 2010) (in a case decided under an older version of California’s invention assignment statute, the court affirmed a finding that employee-attorney’s invention did not “result from” work for the plaintiff); NeoNetworks, Inc. v. Cree, A07-0729, 2008 Minn. App. Unpub. LEXIS 565, at *15 (Ct. App. May 20, 2008) (affirming dismissal of claims against former employees and costs award in their favor after failed ex-employers causes of action, including breach of contract over invention assignment, were rejected where defendants began project after company failed and did not use company resources).

[45] Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 743 (1989)

[46] As the text of the statute indicates, no contract is required for a work for hire to exist. Nonetheless, as with the law of employee invention assignments, companies generally insert work for hire assignment terms into standard-form employment contracts, usually if not always next to the terms regarding invention assignment.

[47] See Reid, 490 U.S. at 743 (key case on the work for hire doctrine); JustMed, Inc. v. Byce, 600 F.3d 1118, 1128 (9th Cir. 2010) (affirming finding that software programmer was employee, giving company ownership of software as work for hire).

[48] Id. at 750-51 (“To determine whether a work is for hire under the Act, a court first should ascertain, using principles of the general common law of agency, whether the work was prepared by an employee or an independent contractor.”).

[49] Whether someone is an employee or an independent contractor for purposes of Copyright Act analysis involves the weighing of numerous factors. Reid lists twelve, none of which are “determinative”: (1) the hiring party’s right to control the manner and means by which the product is accomplished; (2) the skill required; (3) the source of instrumentalities and tools; (4) the location of the work; (5) the duration of the relationship between the parties; (6) whether the hiring party has the right to assign additional projects to the hired party; (7) the extent of the hired party’s discretion over when and how long to work; (8) the method of payment; (9) the hired party’s role in hiring and paying assistants; (10) whether the work is part of the regular business of the hiring party; (11) whether the hiring party is a business; (12) the provision of employee benefits and the tax treatment of the hired party. See id. at 751-52. Some courts have suggested that the tax/benefits classification of the author is the most important factor, or at least a disproportionately important factor. See Hi-Tech Video Prods., Inc. v. Capital Cities/ABC, Inc., 58 F.3d 1093, 1097 (6th Cir. 1995) (factor is a “strong indication of a worker’s employment status”); Kirk v. Harter, 188 F.3d 1005, 1008 (8th Cir. 1999) (finding factor important where hiring party reported author to IRS as an independent contractor); Aymes v. Bonelli, 980 F.2d 857, 862-63 (2d Cir. 1992) (failure to pay taxes and benefits “constitute virtual admissions of [author’s] status by [hiring party] himself;” citing numerous post-Reid cases and saying “every case since Reid that has applied the test has found the hired party to be an independent contractor where the hiring party failed to extend benefits or pay social security taxes.”) (citing cases); Numbers Licensing, LLC v. bVisual USA, Inc., 643 F. Supp, 2d 1245, 1251-52 (E.D. Wash. 2009) (where individual had his own consulting entity and company contracted with that entity, and where entity was responsible for individual’s “payroll obligations, tax obligations, and employee benefits,” those and other factors led to court’s conclusion that individual was independent contractor and software was not a work for hire). One court, however, rejected the “usually dispositive” tax/benefits factor where the author worked full-time, was paid weekly, believed he had a long-term relationship, was shown the hiring party’s source code, worked with the hiring party’s equipment and accessed the hiring party’s servers from home, telecommuted but also worked twice a week at the hiring party’s facility for at least some period, assisted with other assignments, received assistance in software programming from the hiring party, had access to the hiring party’s office and equipment, and met a third party as a representative of the hiring party. See Sasnett v. Convergent Media Sys., Inc., No. 95-12262-NG, 1997 WL 33142149, at *9 (D. Mass. Aug. 29, 1997) (on preliminary injunction request, finding that plaintiffs were likely to succeed on the merits).

Courts have identified other possible factors beyond those set forth in Reid. A possible additional factor could be whether the corporation existed at the time of creation. See Billy-Bob Teeth, Inc. v. Novelty, Inc., 329 F.3d 586, 591 (7th Cir. 2003) (doctrine did not apply where, among other things, “the corporation did not exist when the [works] were authored”; company incorporated the year after creation of works). Another possible additional factor is whether the author worked for others at the same time. See Kirk, 188 F.3d at 1008 (“[T]hroughout his six-year relationship with [hiring party], [author] continued to engage in computer consulting with other companies, a factor suggesting that he was an independent contractor.”); Aymes, 980 F.2d at 864 (finding it probative that author “did occasional work for others at the same time” despite working for two years for hiring party); Alcatel USA, Inc. v. Cisco Sys., Inc., 239 F. Supp. 2d 645, 654 (E.D. Tex. 2002) (noting that author “was simultaneously working as an independent contractor for two other companies”). Yet another possible factor is the hiring party’s own perceptions of whether the author was an employee or not. See Hi-Tech Video Prods., Inc., 58 F.3d at 1099 (fact that hiring party did not perceive assistants as employees weighed in favor of finding them to be independent contractors); see also Alcatel USA, 239 F. Supp. 2d at 654 (finding it significant that hiring party had called author an independent contractor in a prior lawsuit before time “when it finally became advantageous for [hiring party] to treat [author] as its employee in order for it to assert ownership of [author’s] creations”).

[50] See Massingill v. Stream, Ltd., No. 3:08-cv-0091-M, 2009 WL 3163549, at *5 (N.D. Tex. Oct. 1, 2009) (company’s motion for summary judgment on ownership of software program denied; fact issues remained where individual started work on software as contractor, later became employee, and whether the work “continued to be developed during his employment with [company] such that it would constitute a ‘work for hire’ under the Copyright Act.”).

[51] 17 U.S.C. § 101 (2012).

[52] As Nimmer puts it, “Under the current Act, even if a work is prepared by an employee, if it is not prepared ‘within the scope of his or her employment,’ it is not regarded as a ‘work made for hire.’ Therefore, an agreement between employer and employee whereby works prepared by the employee that are not prepared within the scope of employment are nonetheless deemed to be ‘works made for hire,’ will not in itself convert such works into the ‘for hire’ category.” 1 Melville B. Nimmer and David Nimmer, Nimmer on Copyright § 5.03[B][1][b][ii] (Matthew Bender, Rev. Ed. 2018).

[53] I have found no empirical study of employment contract terms assigning works made for hire. That said, many samples are publicly available. My own anecdotal experience, based on viewing thousands of employment agreements in Silicon Valley and elsewhere, drafted by a wide variety of law firms, suggests that most recite that works for hire in the scope of employment are assigned – that is, the typical agreement follows the text of the Copyright Act. A very typical sample, pulled from a website which collects such standard terms, reads: “Employee acknowledges that all original works of authorship which are made by him (solely or jointly with others) within the scope of his employment and which are protectable by copyright are works made for hire, pursuant to the United States Copyright Act (17 U.S.C. SS 101 et seq.), and are solely the property of the Company.” See Law Insider, Works Made for Hire Sample Clauses, https://www.lawinsider.com/clause/works-made-for-hire (last visited Oct. 17, 2018).

Two other points about such contracts are worth noting. First, an employer and an employee can negotiate a different structure by contract – such as a royalty-based scheme – though it seems unlikely that a form contract could undercut rights granted by the Copyright Act through the scope of employment test any more than an invention assignment contract could get around state statutory limits on the scope of such agreements. See generally Comput. Data Sys., Inc. v. Kleinberg, 759 F. Supp. 10, 13-14 (D.D.C. 1990) (triable issue of fact on scope of employment because contract stated that if employee developed certain computer software and agreed to transfer it to employer, he would get a royalty to be negotiated at the time).

Second, as with any matter of employment contracts, questions of timing matter. Some courts have taken a position on the question whether, in general, a post-creation writing can give a hiring party work for hire rights. Because the statute’s text seems to indicate that ownership starts from the time of creation, the Seventh Circuit held in 1992 that there cannot be a work for hire based on a written agreement unless the writing predates the creation of the work. See Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410, 413 (7th Cir. 1992) (basing its rule on the need to have certainty). By contrast, the Second Circuit rejected this approach and held that it is possible to have a work for hire based on a post-creation written agreement, so long as that agreement evidences a prior agreement before the time of creation. See Playboy Enters., Inc. v. Dumas, 53 F.3d 549, 559 (2d Cir. 1995) (noting that the Nimmer treatise disagreed with Schiller and holding that “the writing requirement . . . can be met by a writing executed after the work is created, if the writing confirms a prior agreement, either explicit or implicit, made before the creation of the work”; remanding on that factual question). See also Compaq Comput. Corp. v. Ergonome Inc., 210 F. Supp. 2d 839, 843-45 (S.D. Tex. 2001) (following Playboy, holding that test requires showing that the parties “understood at the time the [works] were created that the works were made for hire,” and finding test met where written agreement made express reference to work done the year before; written agreement predated author’s subsequent assignment to another company by several years); Kasten v. Jerrytone, No. 02-421, 2004 WL 1857680, at *6 (E.D. La. Aug. 16, 2004) (noting Playboy rule, finding that agreement at issue did not mention previous works, only future works, but separately holding that contract was modified by acceptance of royalties for pre-agreement works).

[54] Restatement (Second) of Agency § 228 (Am. Law Inst. 1958).

[55] Although rarely cited by the courts, the Restatement (Second) of Agency has ten sections regarding “scope of employment.” For the most part, the focus of these sections is on whether the employer will be liable for tortious or illegal acts by an employee. As a result, many of the annotated cases address such matters as joy rides in the company car and assaults by employees, with little value for work for hire disputes. That said, section 229, “Kind of Conduct Within Scope of Employment,” details factors that might assist courts in work for hire disputes, such as “whether or not the act is one commonly done by such servants,” “the time, place and purpose of the act,” and “the similarity in quality of the act done to the act authorized.” Sections 235 and 236, in turn, address the third factor of the employee’s purpose, or intentions. Section 235 states “An act of a servant is not within the scope of employment if it is done with no intention to perform it as a part of or incident to a service on account of which he is employed.” The comment says “It is the state of the servant’s mind which is material.” Section 236 states “Conduct may be within the scope of employment, although done in part to serve the purposes of the servant or a third person.” That is consistent with the case law cited above. Id. §§ 228-237.

[56] See Genzmer v. Pub. Health Tr. of Miami-Dade Cty., 219 F. Supp. 2d 1275, 1280 (S.D. Fla. 2002) (stating rule: “Courts interpret this test as conjunctive. That is, the party attempting to establish that the work was made for hire must establish all three elements.”); Moonstruck Design, LLC v. Metz, No. 02 CIV. 4025(RWS), 2002 WL 1822927, at *3 (S.D.N.Y. 2002) (stating rule); Quinn v. City of Detroit, 988 F. Supp. 1044, 1052 (E.D. Mich. 1997) (same); Roeslin v. District of Columbia, 921 F. Supp. 793, 798 (D.D.C. 1995) (same); City of Newark v. Beasley, 883 F. Supp. 3, 8 (D.N.J. 1995) (same).

[57] See Avtec Sys. v. Peiffer, 21 F.3d 568, 571 (4th Cir. 1994) (noting that if first factor is met, courts will not favor employee just because work was done off-site); McKenna v. Lee, 318 F. Supp. 2d 296, 301 (E.D.N.C. 2002) (same; prisoner did work in his cell, but license plate design was what he was hired to do); Martin v. City of Indianapolis, 982 F. Supp. 625, 634 (S.D. Ind. 1997) (noting that you can’t avoid the work for hire doctrine by doing the work off-site), aff’d, 192 F.3d 608 (7th Cir. 1999); Marshall v. Miles Labs., Inc., 647 F. Supp. 1326, 1331 (N.D. Ind. 1986) (pre-Reid case; article held to be work for hire even though employee did much work away from the employer’s facility because work related to the things plaintiff was hired to do, and because it was based on research done by another employee for employer); Miller v. CP Chems., 808 F. Supp. 1238, 1243 (D.S.C. 1992) (employee worked off-site on software but “[o]n the other hand, the work was performed during the time period in which he was employed by [employer].”).

[58] See, e.g., U.S. Auto Parts Network, Inc. v. Parts Geek, LLC, 692 F.3d 1009, 1018-19 (9th Cir. 2012) (remanding where there was a triable issue of fact as to whether portion of software written when programmer was an employee was within his scope of employment, where among other things he “lived rent-free in a house that doubled” as a company office and did not “strictly” differentiate between work and personal hours, so that his work was “within authorized work hours and space limits.”).

[59] As of May 2018 when this research was completed, these cases are: Genzmer, 219 F. Supp. 2d at 1275; Molinelli- Freytes v. Univ. of P.R., No. 09-1655(DRD), 2012 U.S. Dist. LEXIS 143262 (D.P.R. Sept. 30, 2012); Fleurimond v. N.Y. Univ., 876 F. Supp. 2d 190 (E.D.N.Y. 2012); Le v. City of Wilmington, 736 F. Supp. 2d 842 (D. Del. 2010); Rouse v. Walter & Assocs., LLC, 513 F. Supp. 2d 1041 (S.D. Iowa 2007); McKenna, 318 F. Supp. 2d at 296; Miller, 808 F. Supp. at 1238; Vanderhurst v. Colorado Mountain Coll. Dist., 16 F. Supp. 2d 1297, 1307 (D. Col. 1998); Lewis v. Activision Blizzard, Inc., No. C 12-1096 CW, 2013 U.S. Dist. LEXIS 149784 at *1 (N.D. Cal. Oct. 17, 2013); and Sterpetti v. E-Brands Acquisition, LLC, No. 6:04-cv-1843-Orl-31DAB, 2006 U.S. Dist. LEXIS 21407 at *1 (M.D. Fla. Apr. 20, 2006).

[60] These are: Avtec, 21 F.3d at 568; Moonstruck, 2002 WL 1822927 at *1; TAP Worldwide, LLC v. Becker, No. CV 10-04903 DMG (JCx), 2010 WL 2757354, at *1 (C.D. Cal. July 12, 2010); PFS Dist. Co. v. Raduechel, 332 F. Supp. 2d 1236 (S.D. Iowa 2004), Roeslin, 921 F. Supp. at 793; Quinn, 988 F. Supp. at 1044; Food Lion, Inc. v. Capital Cities/ABC, Inc., 946 F. Supp. 420 (M.D.N.C. 1996); Beasley, 883 F. Supp. at 3; Cannon Grp., Inc. v. Better Bags, Inc., 250 F. Supp. 2d 893, 901 (S.D. Ohio 2003); and Martin, 982 F. Supp. at 625.

[61] See Ryan Vacca, Work Made for Hire – Analyzing the Multifactor Balancing Test, 42 Fla. St. U. L. Rev. 197 (2014) (thorough history and analysis of case law after Reid on employee versus contractor analysis); Llewellyn Joseph Gibbons, Love’s Labor’s Lost: Marry for Love, Copyright Work Made-for-Hire, and Alienate at Your Leisure, 101 Ky. L.J. 113, 180 (2013) (addressing work for hire in the community property context); Jon M. Garon & Elaine D. Ziff, The Work Made for Hire Doctrine Revisited: Startup and Technology Employee and the Use of Contracts in a Hiring Relationship, 12 Minn. J.L. Sci. & Tech. 489, 505-09 (2011) (addressing work for hire agreements and asserting in passing that, as to California’s invention assignment statute, “[t]he two exceptions in section 2870 reasonably approximate the ‘scope of employment’ prong of the work for hire doctrine, as applied to the state law of assignment of employee work product”); Assaf Jacob, Tort Made for Hire – Reconsidering the CCNV Case, 11 Yale J.L. & Tech. 96, 143-144 (2009) (touching on the scope of employment test, but primarily focusing on whether agency law provides the best fit for assessing employee/contractor status); Deborah Tussey, What Ifs and Other Alternative Intellectual Property and Cyberlaw Story: What If Employees Owned Their Copyrights?, 2008 Mich. St. L. Rev. 233, 242 (2008) (“In short, if Congress had not adopted the work for hire doctrine during the early years of corporatization of the copyright industries, it probably would have had to invent an alternative legal structure to handle the licensing of collaborative works in the later years of the copyright terms of those works.”); Vai Io Lo, Employee Inventions and Works for Hire in Japan: A Comparative Study Against the U.S., Chinese, and German Systems, 16 Temp. Int’l & Comp. L.J. 279, 305-06 (2002) (noting, in survey, that Japanese law requires “reasonable compensation if the employee assigns the right to obtain a patent, the patent right, or grant an exclusive license to the employer.”); Carolyn M. Salzmann, Comment, You Commissioned It, You Bought It, But Do You Own It? The Work for Hire: Why Is Something So Simple, So Complicated?, 31 U. Tol. L. Rev. 497 (2000) (focusing on a writing requirement for work for hire in order to clarify ownership); Colleen Creamer Fielkow, Note, Clashing Rights Under United States Copyright Law: Harmonizing an Employer’s Economic Right with the Artist-Employee’s Moral Rights in a Work Made for Hire, 7 DePaul-LCA J. Art & Ent. L. 218, 220 (1997) (reviewing potential conflicts between work for hire and employee-authors’ moral-rights); Shannon M. Nolley, Note, The Work for Hire Doctrine and the Second Circuit’s Decision in Carter v. Helmsley-Spear, 7 DePaul-LCA J. Art. & Ent. L. 103, 128 (1996) (examining the independent contractor vs. employee aspects of work for hire); Jennifer Sutherland Lubinski, Note, The Work for Hire Doctrine under Community for Creative Non-Violence v. Reid: An Artist’s Fair Weather Friend, 46 Cath. U. L. Rev. 119, 125 (1996) (arguing for revamp of Reid test to better benefit artists and incentivize creation of more works); Alan Hyde & Christopher W. Hager, Promoting the Copyright Act’s Creator-Favoring Presumption: “Works Made for Hire” Under Aymes v. Bonelli & Avtec Systems, Inc. v. Peiffer, 71 Denv. U. L. Rev. 693, 716-717 (1994) (primarily examining employee versus contractor case law and approving the concept that absent a written agreement, authors may often own their creations); Anne Marie Hill, Note, The “Work for Hire” Definition in the Copyright Act of 1976: Conflict Over Specially Ordered or Commissioned Works, 74 Cornell L. Rev. 559, 564-66 (1989) (early work assessing pre-Reid case law); Jon L. Roberts, Work Made for Hire: The Fiction, the Reality, and the Impact Upon Software Development, 1 Harv. J. L. & Tech. 97, 128 (1988) (addressing early employee versus contractor case law); Rochelle Cooper Dreyfus, The Creative Employee and the Copyright Act of 1976, 54 U. Chi. L. Rev. 590, 638-47 (1987) (examining work for hire law primarily in the context of academic versus university control over scholarly output).

[62] That treatise provides a general summary, with only a few case citations on “scope of employment” disputes, outside of a long section of disputes between universities and academics. See 1 Melville B. Nimmer and David Nimmer, Nimmer on Copyright §§ 5.03[B][1][b][i]-[ii] (Matthew Bender, Rev. Ed. 2018).

[63] David Loretto, Note, Employee Patents on Computer-Implemented Inventions: The Conundrum of Separate Ownership of Patent and Copyright, 23 Cardozo L. Rev. 705, 711 n.35, 727-28 (2002) (noting possibility of conflicting rights in software covered by copyright and trade secret law and primarily addressing potential conflicts between business-method patents (as patent law stood at that time), employer shop rights, and copyright law). See also Joshua L. Simmons, Inventions Made for Hire, 2 N.Y.U. Intell. Prop. & Ent. L. 1, 46 (2012) (comparing development of work for hire doctrine to incremental development of patent-related concepts like the hired-to-invent doctrine and the shop right doctrine, and arguing that patent law should cease requiring written inventor assignments and instead adopt an umbrella ownership doctrine like work for hire).

[64] Michael D. Birnhack, Who Owns Bratz? The Integration of Copyright and Employment Law, 20 Intell. Prop. Media & Ent. L.J. 95, 152-53, 157-59, 162 (2009) (seeking “the most efficient and fair rule of initial allocation of copyright in works created by authors in the workplace”).

[65] See Catherine L. Fisk, Authors at Work: The Origins of the Work-for-Hire Doctrine, 15 Yale J.L. & Human. 1 (2003) (covering the nineteenth century, the creation of the work for hire doctrine under the 1909 Copyright Act, and modern developments).

[66] For cases where the employer wins on factor one, see Lewis v. Activision Blizzard, Inc., No. C 12-1096 CW, 2013 U.S. Dist. LEXIS 149784, at *10 (N.D. Cal. Oct. 17, 2013) (where employer and former employee clashed over employee’s voice recording used in video games, first factor favored employer where employee handbook listed creation of game content as a job role); Molinelli-Freytes v. Univ. of P.R., No. :09-1655(DRD), 2012 U.S. Dist. LEXIS 143262, at *32-37 (D.P.R. Sept. 30, 2012) (granting summary judgment to employer over faculty member’s proposal for a graduate program; even though employee worked on vacations and holidays, that second factor mattered less where work was clearly of the type employee was hired to perform); Fleurimond v. N.Y. Univ., 876 F. Supp. 2d 190, 201-09 (E.D.N.Y. 2012) (granting summary judgment to employer, which met all three factors as to employee who created graphic design while employed to create such things, where she was expected to perform her job in part at home using her own equipment, and where “no reasonable juror could find that she was not motivated in large part to serve the interests of NYU.”); Rouse v. Walter & Assocs., LLC, 513 F. Supp. 2d 1041, 1056-60 (S.D. Iowa 2007) (applying three-part test; on tangled fact pattern where professors argued that software program created in the course of sponsored university research was not a work for hire, court rejected argument because, among other things, the software development was within the duties they were “hired to perform,” the software “was developed and tested on [university] computers” even if some work was done at home, and professors “were motivated at least in part” to further university research when creating the work); Sterpetti v. E-Brands Acquisition, LLC, No. 6:04-cv-1843-Orl-31DAB, 2006 U.S. Dist. LEXIS 21407, at *20-22 (M.D. Fla. Apr. 20, 2006) (where parties disputed ownership of pasta-making manual, employer prevailed on first factor because it asked the employee to create the manual and provided feedback, showing its creation was part of employee’s job duties); Genzmer v. Pub. Health Tr., 219 F. Supp. 2d 1275, 1281 (S.D. Fla. 2002) (employee hired as a doctor, but in fact his required research “included the drafting of computer programs” and job description was broad enough to cover “the development of the computer program at issue”; in addition, employee’s supervisor gave him “guidance and praise” for the software); Avtec Sys., Inc. v. Peiffer, No. 92-463-A, 1994 WL 791188, at *3-4 (E.D. Va. 1994) (employer won first factor in software case because employee’s job description including writing programs and implementing computer simulation, and because at his employment, employee had generated similar software, and because employer had been able to use the work to “win a contract”), aff’d, No. 94-2364, 1995 WL 541610, at *1 (4th Cir. Sept. 13, 1995); Miller v. CP Chems., Inc., 808 F. Supp. 1238, 1243 (D.S.C. 1992) (employee who wrote software was “not hired primarily for the development of computer programs,” but “the development of the computer programs was at least incidental to his job responsibilities because it was ‘within the ultimate objective of the principal and an act which it is not unlikely that a servant might do.’”) (quoting Restatement (Second) of Agency § 229 cmt. b (Aᴍ. Lᴀᴡ Inst. 1958)).

[67] See Roeslin v. District of Columbia, 921 F. Supp. 793, 798 (D.D.C. 1995) (“It is unfair for the District to now claim that an activity it discouraged – developing the system – was within the scope of plaintiff’s employment.”).

[68] For cases where the employee wins on factor one, see TAP Worldwide, LLC v. Becker, No. CV 10-04903 DMG (JCx), 2010 WL 2757354, at *3-4 (C.D. Cal. July 12, 2010) (export manager of parts manufacturer, which did not develop or sell software, created software to expedite export shipments, usable by any company for a monthly fee; finding in favor of employee when employer moved for preliminary injunction because “[c]reating software was not within the scope of his job and no one else at the company was tasked with anything similar,” employee identified a business need not specific to his employer “but in the business world generally,” and created it “on his own time, not during working hours”; employer did not even learn about software until it terminated the employee); Pavlica v. Behr, 397 F. Supp. 2d 519, 525 (S.D.N.Y. 2005) (finding triable issue of fact for trial where high school teacher created a program to train high school students to conduct scientific research where teacher did so without prompting or direction from school, and where his intent was a model useful for any high school); Moonstruck Design, LLC v. Metz, 02 Civ. 4025 (RWS), 2002 U.S. Dist. LEXIS 14583, at *12-13 (S.D.N.Y. Aug. 12, 2002) (denying motion for preliminary injunction where former employer failed to meet any of the three tests; jewelry designer was not an employee at the time of creation, was hired only in a sales capacity, did not create the design during working hours, and was motivated by desire to honor his wife and other cancer survivors); PFS Dist. Co. v. Raduechel, 332 F. Supp. 2d 1236, 1248 (S.D. Iowa 2004) (employee was truck driver, not a software developer, so this factor favored employee); Martin v. City of Indianapolis, 982 F. Supp. 625, 633-34 (S.D. Ind. 1997) (going a little against the grain of some other cases cited here, finding that employee won on first factor because only a little of his work for employer involved ornamental metal work, but also because he demanded his own fee paid directly to him for artistic work, and his work on sculpture in question differed significantly from his “normal course of work”), aff’d, 192 F.3d 608 (7th Cir. 1999); Roeslin, 921 F. Supp. at 798 (employee hired as labor economist, not software programmer and was discouraged from pursuing project); City of Newark v. Beasley, 883 F. Supp. 3, 8 (D.N.J. 1995) (employee was police officer, but work on classroom training materials to teach young people not to steal cars was unknown to employer, and employee learned nothing from employer that assisted in project, so factor favored employee); Quinn v. City of Detroit, 988 F. Supp. 1044, 1051 (E.D. Mich. 1997) (employee was an attorney, not a programmer, employer never requested the work).

[69] See Quinn, 988 F. Supp. at 1051 (software created at home but later installed at work).

[70] See Fleurimond, 876 F. Supp. 2d at 201-09 (granting summary judgment to employer, which met all three factors as to employee who created graphic design while employed to create such things, where she was expected to perform her job in part at home using her own equipment, and where “no reasonable juror could find that she was not motivated in large part to serve the interests of NYU.”); Rouse, 513 F. Supp. 2d at 1056-57 (applying three-part test; on tangled fact pattern where professors argued that software program created in the course of sponsored university research was not a work for hire, court rejected argument because, among other things, the software development was within the duties they were “hired to perform,” the software “was developed and tested on [university] computers” even if some work was done at home, and professors “were motivated at least in part” to further university research when creating the work); Sterpetti, 2006 U.S. Dist. LEXIS 21407, at *27-28 (employee created pasta-making manual offsite, but at employer’s direction, so employer prevailed on second factor); Genzmer, 219 F. Supp. 2d at 1282 (employee was involved in research and thus would not have been at clinic seeing patients; “it follows that he would not have developed the software” at the employer’s facility).

[71] See Moonstruck Design, 2002 U.S. Dist. LEXIS 14583, at *12-13 (S.D.N.Y. Aug. 12, 2002) (denying motion for preliminary injunction where former employer failed to meet any of the three tests; jewelry designer was not an employee at the time of creation, was hired only in a sales capacity in any event, did not create the design during working hours, and was motivated by desire to honor his wife and other cancer survivors); Raduechel, 332 F. Supp. 2d at 1248 (software work done at home with employee’s own equipment and software licensed to other companies; employee did later modify software for use at employer but factor favored employee); Martin, 982 F. Supp. at 634 (off-site and on own time); Roeslin, 921 F. Supp. at 798 (employee created software in 3000 hours of work at home, fact that he later used it at work immaterial); Beasley, 883 F. Supp. at 8 (police officer created anti-car theft training materials solely off-site, and thus factor favored employee); Avtec, No. 94-2364, 1994 WL 791188, at *4-5 (employee created software at home and with own equipment, even though he later used it at work).

[72] See, e.g., Miller v. CP Chems., Inc., 808 F. Supp. 1238, 1243 (D.S.C. 1992) (“On the other hand, the work was performed during the time period in which he was employed by [employer].”).

[73] See Food Lion, Inc. v. Capital Cities/ABC, Inc., 946 F. Supp. 420, 421-22 (M.D.N.C. 1996) (journalists working as undercover employees made secret tapes of employer’s working conditions, employer tried to claim the tapes as works for hire to suppress them; the court rejecting this stratagem as not meeting any “reasonable interpretation of scope of employment”).

[74] See Lewis v. Activision Blizzard, Inc., No. C 12-1096 CW, 2013 U.S. Dist. LEXIS 149784, at *13-14 (N.D. Cal. Oct. 17, 2013) (employer easily prevailed where employee created sound recording at employer’s request, for employer’s purposes, and under employer’s supervision); Quinn, 988 F. Supp. at 1052; Miller, 808 F. Supp. at 1243-44 (employee’s software was “created to simplify [employee’s] job and to eliminate errors,” employer asked employee to develop similar software for other company products, and all software related specifically to a product made by the employer).

[75] See Avtec Sys., Inc. v. Peiffer, 21 F.3d 568, 572 (4th Cir. 1994) (as to the third scope of employment factor, the employer must show that the employee “was at least ‘appreciably’ motivated by a desire to further its corporate goals[.]”) (citing Restatement (Second) of Agency § 226 cmt. b (Am. Law Inst. 1958)) (“The fact that the predominant motive of the servant is to benefit himself or a third person does not prevent the act from being within the scope of employment. If the purpose of serving the master’s business actuates the servant to any appreciable extent, the master is subject to liability[.]”)).

[76] For cases where the employer wins on factor three, see Fleurimond v. N.Y. Univ., 876 F. Supp. 2d 190, 201-09 (E.D.N.Y. 2012) (granting summary judgment to employer, which met all three factors as to employee who created graphic design while employed to create such things, where she was expected to perform her job in part at home using her own equipment, and where “no reasonable juror could find that she was not motivated in large part to serve the interests of NYU.”); Le v. City of Wilmington, 736 F. Supp. 2d 842, 845-51 (D. Del. 2010) (on summary judgment by employer, municipal employee hired as Information Analyst who created an “Instant Ticketing” program for a city department of licensing and inspections to use in lieu of paper tickets did not own the software, even though he wrote the software “essentially exclusively on his own time, on his own computer at home,” because his purpose was “to facilitate the City’s business of issuing tickets,” and did so at the direction of a supervisor, received input from other employees, and used code previously used for city-owned software); Rouse v. Walter & Assocs., LLC, 513 F. Supp. 2d 1041, 1056-57 (S.D. Iowa 2007) (applying three-part test; on tangled fact pattern where professors argued that software program created in the course of sponsored university research was not a work for hire, court rejected argument because, among other things, the software development was within the duties they were “hired to perform,” the software “was developed and tested on [university] computers” even if some work was done at home, and professors “were motivated at least in part” to further university research when creating the work); Sterpetti v. E-Brands Acquisition, LLC, No. 6:04-cv-1843-Orl-31DAB, 2006 U.S. Dist. LEXIS 21407, at *18-19 (M.D. Fla. Apr. 20, 2006) (employee’s ideas about “gaining personal benefit” from creation of pasta-making manual insufficient where he clearly created manual at employer’s behest, showing at least a partial motivation to server the employer’s interests); Genzmer v. Pub. Health Tr., 219 F. Supp. 2d 1275, 1283 (S.D. Fla. 2002) (employee claimed vague personal reasons, but evidence showed that he “tailored” software to “fit [employer’s] needs”).

[77] For cases where the employee wins on factor three, see Moonstruck Design, LLC v. Metz, 02 Civ. 4025 (RWS), 2002 U.S. Dist. LEXIS 14583, at *12-13 (S.D.N.Y. Aug. 12, 2002) (denying motion for preliminary injunction where former employer failed to meet any of the three tests; jewelry designer was not an employee at the time of creation, was hired only in a sales capacity in any event, did not create the design during working hours, and was motivated by desire to honor his wife and other cancer survivors); Avtec, 21 F.3d at 572 (“appreciably” standard); Avtec Sys., Inc. v. Peiffer, No. 92-463-A, 1994 WL 791188, at *6 (E.D. Va. 1994) (applying test, programmer created work off-site and later used it at work, but his conduct was consistent with a belief that he was the owner, and employer’s bonus payment could have been made “as a reward for [employee’s] willingness to utilize his own property for the benefit of his employer”); PFS Dist. Co. v. Raduechel, 332 F. Supp. 2d 1236, 1248-49 (S.D. Iowa 2004) (where employee had previously licensed software to other companies and then modified it to work with employer’s system, not enough to favor employer on third factor); Roeslin v. District of Columbia, 921 F. Supp. 793, 798 (D.D.C. 1995) (court found evidence that employee was primarily creating software for self-motivation and to create job opportunities for himself, so fact that software also benefited his employee immaterial); City of Newark v. Beasley, 883 F. Supp. 3, 9 (D.N.J. 1995) (police officer intended that many cities, not just his own, might purchase his training materials; even though he believed his employer might be one customer for his work, that was not enough).

[78] See Martin v. City of Indianapolis, 982 F. Supp. 625, 634-35 (S.D. Ind. 1997), aff’d, 192 F.3d 608 (7th Cir. 1999).

[79] See id.

[80] See Cannon Grp., Inc. v. Better Bags, Inc., 250 F. Supp. 2d 893, 901 (S.D. Ohio 2003). This case is atypical, however, as the employer was not a party. The party holding the assignment was the cross-plaintiff in an infringement case, and the cross-defendant was trying to undermine the cross-plaintiff’s copyright registration. There was nothing in the case about whether the employee had been permitted to do the work for the third party while employed, and the court appeared to be moving hastily to shut down the cross-defendant’s strained attempt to defeat the cross-plaintiff’s copyright. The employer was not present to argue its own case for a work for hire. In other words, courts may be less exacting when an accused third party infringer tries to invalidate the copyright on some technicality.

[81] Some courts, of course, find the evidence in conflict, and hold that a trial is necessary. E.g., Koenig v. Dowdy, No. 5:15-CV-00347-RN, 2017 U.S. Dist. LEXIS 163850, at *19 (E.D.N.C. Sept. 28, 2017) (denying motion for summary judgment as to copyright ownership where, among other things, third work for hire factor was subject to disputed evidence over an architectural house plan created by an employee/architect); Bell v. Maloney, No. 1:16-cv-01193-RLY-DML, 2017 U.S. Dist. LEXIS 111867, at *4-5 (S.D. Ind. July 19, 2017) (triable issues of fact on all three factors where attorney took photo that was used on law firm’s website and parties disputed ownership).

[82] Federal courts agree that trade secret causes of action are not copyright-preempted. E.g., GlobeRanger Corp. v. Software AG USA, Inc., 836 F.3d 477 (5th Cir. 2016) (collecting cases from other circuits and joining them). Notably, with the May 2016 enactment of the federal Defend Trade Secret Act, no preemption analysis is necessary as to a cause of action for trade secret misappropriation brought under federal law. See generally Defend Trade Secrets Act of 2016, Pub. L. No. 114-153, 18 U.S.C. §§ 1831-1839, 130 Stat. 376.

[83] For example, in the well-known California case, Cubic Corp. v. Marty, 229 Cal. Rptr. 828, (Ct. App. 1986), the employee’s work product in dispute included a “manuscript describing his invention,” which surely would have been a work for hire under the facts, where the employer easily prevailed under its invention assignment contract. Id. at 830.

[84] E.g., Cal. Lab. Code §§ 2870-72 (West 1979). As noted, however, it remains unclear whether an employer could meet these tests where the employee had no notice of related work by a large, far-flung employer.

[85] PFS Dist. Co. v. Raduechel, 332 F. Supp. 2d 1236, 1240 (S.D. Iowa 2004).

[86] See id. at 1240-43, 1246-47, 1251-53.

[87] See id. at 1247-49.

[88] See id. at 1249. The court spent all of five sentences on the invention assignment claim, and found that “[d]ue to the insufficiency of the evidence to establish the database software as a ‘work for hire,’ or otherwise rightfully owned by plaintiffs, the Court declines to award injunctive relief that ordinarily might be warranted by this claim.”

[89] TAP Worldwide, LLC v. Becker, No. CV 10-04903 DMG (JCx), 2010 WL 2757354, at *1 (C.D. Cal. July 12, 2010).

[90] See id. at *1, 3.

[91] See id. at *4-5.

[92] See Cal. Lab. Code § 2870 (West 1979).

[93] This factual summary is taken from the Fourth Circuit’s first appellate ruling in the case. Avtec Sys., Inc. v. Peiffer, 21 F.3d 568, 569-70 (4th Cir. 1993). See also Avtec Sys., Inc. v. Peiffer, 805 F. Supp. 1312, 1315-17 (E.D. Va. 1992).

[94] Avtec, 21 F.3d at 575. This logic – that copyright ownership precludes a conflicting trade secret ownership claim in the same information – formed the basis for a 2002 ruling in the Eastern District of Texas, where a contractor’s ownership in a software program overrode the hiring company’s claim to trade secrets in the same program. See Alcatel USA, Inc. v. Cisco Sys., Inc., 239 F. Supp. 2d 645, 659 (E.D. Tex. 2002). That case did not involve the work for hire doctrine because the author was an independent contractor, but its holding is consistent with the theme of this essay, that copyright ownership in some instances can conflict with dueling claims under other categories of intellectual property law.

[95] See Avtec Sys., Inc. v. Peiffer, No. 94-463-A, 1994 U.S. Dist. LEXIS 16946, at *11-19, 25-26 (E.D. Va. 1994) (although the employer prevailed on the first scope of employment factor, the employee won on the second and third factors; “Peiffer’s creation of the Orbit Program was too little actuated by a purpose to serve the master.”; rejecting employer’s trade secret claim and awarding no damages on breach of fiduciary duty claim), aff’d, No. 94-2364, 1995 WL 541610, at *1 (4th Cir. Sept. 13, 1995).

[96] Cases in this area appear to be exceedingly rare. In one odd Texas case, a court found that an employer’s state-law claims against a former employee (including trade secret misappropriation, conversion, and unjust enrichment) were preempted by the Copyright Act – a conclusion that would not be reached today at least as to a trade secret claim. Thus, a potential clash between the work for hire doctrine and trade secret ownership through an invention assignment agreement was averted. See Butler v. Continental Airlines, Inc., 31 S.W.3d 642, 651-52 (Tex. App. 2000).

[97] See DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1289-90 (Fed. Cir. 2008) for the exception to this point.

[98] For example, the law of fiduciary duty may require that certain employees provide an “opportunity” to employers. The next essay in this series will focus on that “preparations to compete” context.