Joshua L. Simmons
(Kirkland & Ellis LLP, New York NY) writes to tell us of an unusual cross-discipline paper he has authored, which embraces a problem faced by both patent and copyright law. He explains:
"My new paper, "Inventions Made For Hire", was published last week. The PDF is available on SSRN here and an eBook version is available from the New York University Journal of Intellectual Property & Entertainment Law here.
The article is a comparison of the developments in copyright law and patent law in the nineteenth century that resulted in copyright law developing a work made for hire doctrine while patent law only developed a patchwork of judge-made employment doctrines. The article theorizes that patent law did not develop an inventions made for hire doctrine, because inventive activity was almost exclusively perceived to be performed by individuals. It goes on to suggest that, as patentable inventions today are generally perceived to be invented collaboratively, the Patent Act should be amended to borrow from the Copyright Act and adopt a principle similar to the work made for hire doctrine".
It's an interesting thesis, and a plausible one. What do readers of this blog think, though?
Work for hire in the composer field is really bad news.
I have only skim-read Mr Simmons's paper, but it seems clear that when he speaks about 'work-for-hire' he is just talking about true employee/employer relationships and not about contractors or self-employed inventors who are commissioned to work on a basis which might constitute a work-for-hire relationship under copyright law.
And it also clear that, as with s 39 of the UK's Patent Act 1977, in the US, employees who specifically employed to invent (for instance, research scientists) are obliged to assign title to their patents to their employer, even if there is no specific reference to this in their contract of employment (see top of page 15 of the pdf version of the paper). Conversely an employee not employed to invent is under no such obligation, which is of course similar to the position under UK law. And incidentally it is not dissimilar to what happens with copyright under s11 of CDPA 1988, where a work is created not in the course of the employee's duties (vide Stevenson Jourdan and Harrison Ltd v MacDonald and Evans  RPC 10 for example).
So really the issue is not quite as dramatic as the short piece in the posting implies. Just one small tweak of the law would resolve to issue, by inserting wording similar to s39 of the PA 1977, assuming of course that Mr Simmons's argument gains any support among the lawmakers.
To be honest I see the paper - interesting though it is - as a comprehensive review of the development of US patent law through the last two centuries, with the work-for-hire motif really just tacked-on to give the paper a 'hook'. Unsurprisingly, given the isolationist and protectionist nature of US IP laws in the nineteenth and early twentieth centuries, the paper makes absolutely no mention of the developments in patent law which were going on elsewhere at the same time, and which led to the sort of outcome that Mr Simmons would like to see prevail in the US (and I am not referring to the EPO).
I would go the opposite direction: I believe that the creativity necessary to creating works of sufficient originality to pass through Feist's minimal screen is still an individual effort, and that therefore copyright (in the US) should abolish the work-for-hire provision and adopt the patent principles.
That this is more consistent with Locke's concerns that led up to the Statute of Anne is just a bonus.
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