‘WORK MADE FOR HIRE’ DOCTRINE UNDER NEW UAE COPYRIGHT LAW

For the Work to be justly and appropriately used, it is essential to establish authorship and ownership of any Intellectual Property Rights (IPR). As soon as a piece of intellectual property is produced and fixed, copyright law bestows several rights on the Work’s author or anybody who derives those rights from the creator. However, the expanding idea of “work for hire” states that unless the parties have expressly agreed differently, the “employer or another person for whom the work is created” is considered to be the creator of the Work and owns all rights arising from it.

New UAE Copyright Law

With the replacement of the previous Federal Law No. 7 of 2002 (Old Copyright Law) by the new Federal Law No. 38 of 2021 concerning Copyright & Neighboring Rights (New UAE Copyright Law), the UAE made significant changes to the Old Copyright Law to reflect the rapidly evolving digital environment. On January 2, 2022, the New UAE Copyright Law became operative. The Implementing Regulations’ release, which will further clarify several parts of the New Copyright Law, is still pending as of the time of writing. The publication of these and their implementation are anticipated for later in 2022.

What is the doctrine of ‘Work made for hire’?

The “work for hire” provision governs a wide variety of activities when the Work is produced by an employee acting in his official capacity while on the job. It is valid for parties covered by such a contract who are both employees and independent contractors. Even if a person or employee produced the work, the employer enforcing the contract is recognized as the creator.

For example, when an engineer employed by a company creates software or a painter paints a portrait of his employer upon request. In any of the abovementioned situations, the Work cannot be regarded as the author’s own since it was created “for hire.” Such a notion may be included in a corporate entity to allow for various flavors and components without altering the firm’s core function as an employer.

‘Work made for hire doctrine under New UAE Copyright Law 

The copyright law includes a new Article 28 that seems to give the “work for hire” idea legal standing in the UAE. According to the “work for hire doctrine,” an employee does not own any intellectual property (IP) produced while employed. 

The New Article 28 states that: 

Unless otherwise agreed upon in writing, the Author’s economic rights in relation to third parties shall be as follows: 

1. If the Author creates the Work for the benefit of another person, the copyright belongs to the person in whose favour it was made. 
2. If the employee or worker, during his work, creates a Work related to the activities or Works of the employer and is instructed directly or indirectly by him or uses to reach the creation of this Work the experiences, information, tools, machines, or materials of the employer placed at his disposal, the Author’s economic rights shall be for the employer taking into account the intellectual effort of the worker. 
3. If the employee or worker creates a Work that is not related to the business of the employer and does not use the employer’s experiences, information, tools, or raw materials in reaching this Innovation, the Author’s economic rights shall be for the employee or worker. 

Developing the “work for hire” concept as a legal principle acknowledges the UAE’s commitment to serving as a centre for the creative and digital sectors.

When is a “work for hire” clause acceptable?

Even if you have a “work made for hire” contract, your Work may not immediately be considered for hire just because you have signed it. The courts will make that determination if your circumstance satisfies these legislative conditions. If not, courts will evaluate the other clauses in your contract, the details of the project, and the “work created for hire” wording to establish if you have somehow transferred your copyright to the customer.

Does your Work meet the requirements for being a specifically commissioned work made for hire?

The first criterion for a work made for hire contract is that your job must be “specially commissioned” if you are not considered an employee. According to certain courts, the “specially commissioned” stipulation requires that the actual Work done for hire contract be executed before you produce the job. Others have consented to an arrangement that retroactively identifies a work already delivered to the customer as work created for hire. However, the Work has to have been produced primarily for the client’s project in any case. Your Work is ineligible if completed before you receive your client’s assignment. Therefore, it cannot be said that an illustration from your portfolio that a customer purchase is work produced for employment.

CONTRACT FOR “WORK FOR HIRE”

There should be a provision in the “work made for hire” agreement that briefly covers the following subjects:

1. The contract should clearly and unambiguously state who the parties are. It needs to elaborate on the specifics of their connection.
2. Considering the numerous goals that each party may have for the transaction, both parties must make it clear that they are willingly engaging in the agreement.
3. It is essential to describe the payments that are anticipated.
4. How each party will use the contract’s subject matter should be clear once the employer-employee relationship has ended.
5. It should also specify what would occur if either party failed to fulfil their duties.

It is recommended to seek the advice of an IP expert in Dubai like HHS Lawyers in Dubai before drafting a ‘Work made for hire’ agreement. The scope of the Work to be done is specified in this sort of contract, and it is clear that if changes are made, the authorship of the amended Work will not change. Instead, it serves as a license right that enables the employer to let the shift in employee a previously published work of intellectual property, such as a book, piece of software, invention, etc. 

Don’t hesitate to contact IP expert in Dubai for more information on the subject.