/ Work for Hire and the Technology and Knowledge Transfer Bill

Hernán Torres
Associate Attorney

 

In some countries, the concept of “work for hire” refers to the ownership regime associated with the creation of a work within the framework of an employment relationship [1]. The Technology and Knowledge Transfer Bill, Bulletin 16686-19, proposes, among other aspects, a modification to Law No. 17,336 on Intellectual Property. It aims to replace the current second and third paragraphs of Article 8 of this law, referencing the mentioned comparative law regime.

This bill provides that, unless otherwise stated in writing, works created by an employee within the scope of their employment will be considered the property of the employer. It also specifies that works produced by commission from a third party will be considered transferred to the commissioner, unless otherwise stated in writing.

The currently effective provisions of this law state: “[I]n the case of computer programs, the respective copyright holders will be the individuals or legal entities whose employees produced them in the course of their employment, unless otherwise stated in writing. […] For computer programs produced on commission from a third party, the author’s rights will be deemed transferred to the commissioner, unless otherwise stated in writing” [2].

The bill seeks to amend these paragraphs, extending these presumptions beyond computer programs to include other types of works. It establishes that: “[I]n the case of works created as a consequence of an employment relationship, the employer will hold the economic rights of the author, provided that the worker produced the work in the course of their employment and unless otherwise stated in writing. […] For works produced on commission from a third party, the economic rights of the author will be considered transferred to the third party, unless otherwise stated in writing” [3].

This proposed Article 8, which currently applies only to software or computer programs, could level the playing field for other creative and content industries. It would also bring them under the protection of the Work for Hire doctrine, thus exempting them from the lengthy procedures for transferring rights outlined in Article 73 of the law. These procedures currently require the involvement of a notary public and subsequent registration with the Intellectual Rights Department.

It will be interesting to follow the progress of this bill, particularly in light of the Executive’s comments made on June 5 of this year.

 

[1] Tarja Koskinen-Olsson, Nicholas Lowe. Educational Material on Collective Management of Copyright and Related Rights. World Intellectual Property Organization (WIPO), 2012, p. 26.

[2] Article 12, No. 1, Message 016-372, dated March 28, 2024.

[3] Second and third paragraphs, Article 8, Law 17,336 on Intellectual Property.