A US founder hires a developer in Bengaluru to build a backend service. The developer ships the code. Two years later the founder raises a Series A. The acquirer’s lawyers ask for the contractor agreement. The contract says “all work product is work made for hire under US law.” There is no explicit assignment. The work is software, which does not qualify as work-made-for-hire for an independent contractor under 17 USC 101. India does not have a work-made-for-hire doctrine at all. The acquirer flags the IP as unowned. The deal stalls while the founder chases a now-disbanded contractor team for retroactive assignments.
This is the most common cross-jurisdictional IP failure. It is also the most preventable. This guide walks through how contractor IP assignment works under US, Indian, and EU law, and the clause language that holds across jurisdictions.
US copyright basics
Ownership default
Under 17 USC 201(a), copyright vests in the author at creation. Exceptions: works made for hire, and works that have been assigned in writing.
Work made for hire under 17 USC 101
The doctrine flips the default. Under 17 USC 201(b), where work-made-for-hire applies, the employer or commissioning party is “considered the author” and owns the copyright from creation (https://www.law.cornell.edu/uscode/text/17/201).
Work-made-for-hire applies in two scenarios under 17 USC 101 (https://www.law.cornell.edu/uscode/text/17/101):
- Employees within scope of employment. Automatic, no written agreement required.
- Specially commissioned works in 9 categories. A non-employee work qualifies only if (a) it falls within one of: collective work, motion picture or audiovisual work, translation, supplementary work, compilation, instructional text, test, answer material, or atlas, AND (b) the parties expressly agree in a written, signed instrument.
For contractors, scenario 2 is the only path. The nine categories are narrow. Software, design, marketing copy, and photography are not in the list. Most contractor work does not qualify.
Copyright assignment under 17 USC 204
The path that always works is assignment. Under 17 USC 204 (https://www.law.cornell.edu/uscode/text/17/204):
A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.
Electronic signature satisfies this under E-SIGN and UETA.
The California gotcha
California Labor Code 3351.5(c) provides that a contractor agreement with a work-made-for-hire clause deems the contractor a statutory employee for workers’ compensation and unemployment insurance purposes (https://leginfo.legislature.ca.gov/faces/codes_displaySection.xhtml?lawCode=LAB§ionNum=3351.5). A US company using standard work-made-for-hire language with a California contractor may be liable for workers’ comp premiums and EDD penalties.
Workaround: drop the work-made-for-hire phrase for California contractors and rely solely on explicit assignment. The IP outcome is the same. The workers’ comp trigger is avoided.
India copyright basics
Ownership default
Under Section 17 of the Indian Copyright Act 1957, the author is the first owner. For works created by an employee under a contract of service, the employer is first owner. The “contract of service” requirement covers employment, not independent contractors. Section 17(b) provides a narrow exception for commissioned photographs, paintings, portraits, engravings, or films. For software, design, and most product work, the contractor owns the work unless there is an assignment.
Assignment under Section 19
Section 19 of the Copyright Act 1957 requires a valid assignment to:
- Be in writing and signed by the assignor or their duly authorized agent
- Identify the work
- Specify the rights assigned, the duration, the territorial extent, and the royalty or other consideration
If duration is not specified, the assignment is deemed to be for 5 years from the date of assignment. If territorial extent is not specified, it is presumed to extend only within India.
For a US company engaging an Indian contractor, this means:
- A blanket “all rights forever, worldwide” assignment is acceptable as long as it is in writing and signed
- A clause that says “Contractor assigns all rights to Client” without specifying duration or territory will default to 5 years and India only, which is not what you want
- Always specify “perpetual, worldwide, irrevocable” in the assignment clause for Indian contractors
- Always specify the consideration (the contract fee suffices, but state it)
Indian moral rights
Section 57 of the Copyright Act 1957 gives the author two moral rights that survive assignment: the right to claim authorship and the right to restrain distortion or mutilation that would be prejudicial to the author’s honor. These are personal to the author. In practice, this rarely matters for software and product work but matters more for creative works.
EU copyright basics
The EU does not have a single copyright code. Each member state has its own law, harmonized through directives (notably Directive 2001/29 and Directive 2019/790). Common features: copyright vests in the author at creation, authors hold economic rights and moral rights, economic rights are assignable but moral rights are generally not waivable.
France
France treats moral rights as perpetual and inalienable under Article L121-1 of the Intellectual Property Code:
The author shall enjoy the right to respect for his name, his authorship and his work. This right shall attach to his person. It shall be perpetual, inalienable and imprescriptible.
A US-style moral rights waiver is unenforceable in France. The economic rights transfer is enforceable. Articles L131-1 and L131-3 restrict assignment of unwritten future works and require the rights, modes of exploitation, and geographic scope to be specified. A US-style global assignment may be narrowed by French courts.
Workaround: in addition to the assignment, include a covenant by the contractor not to exercise moral rights in a way that would prevent or restrict Client’s exploitation. French courts generally respect such covenants when narrowly drafted.
Germany
Germany treats moral rights as non-waivable under the Urheberrechtsgesetz. Section 31 UrhG allows the author to grant exploitation rights but not a full transfer of copyright. The author remains copyright holder. The client gets exclusive exploitation rights. A well-drafted clause should grant Client an exclusive, worldwide, perpetual, transferable, sub-licensable right to exploit the work in all forms.
Other EU member states
Nordic countries and the Netherlands are closer to the US-style assignment model. Italy and Spain maintain strong moral rights similar to France. For high-value engagements in France or Germany, consult local counsel.
Clause language that works across jurisdictions
Here is a template that holds up across US, India, and most of the EU:
Intellectual Property. All work product, deliverables, inventions, designs, code, documentation, and materials created by Contractor under this Agreement (the “Work Product”) shall, to the maximum extent permitted by applicable law, be deemed “work made for hire” as defined in 17 USC 101.
To the extent any Work Product does not qualify as work made for hire, or to the extent applicable law does not recognize the doctrine, Contractor hereby irrevocably assigns to Client all right, title, and interest in the Work Product, including all copyrights, patents, trademarks, trade secrets, and other intellectual property rights, worldwide, in perpetuity, for all media and modes of exploitation whether now known or hereafter developed. The consideration for this assignment is the fees paid under this Agreement.
To the maximum extent permitted by applicable law, Contractor waives all moral rights in the Work Product. Where moral rights cannot be waived, Contractor covenants not to exercise them in a manner that would prevent or restrict Client’s exploitation of the Work Product.
Contractor shall execute any further documents reasonably necessary to perfect Client’s ownership in any jurisdiction, including any document required under Section 19 of the Indian Copyright Act 1957 or analogous foreign legislation. Contractor represents that the Work Product is original, non-infringing, and not subject to any prior assignment.
This template (1) triggers work-made-for-hire under US law where it applies, (2) provides explicit assignment as the fallback, (3) specifies rights, duration, and territory as required by Section 19 of the Indian Copyright Act 1957, (4) waives moral rights where waivable and covenants non-exercise where not, addressing EU concerns, and (5) includes a further-assurance clause for local-law executions.
For a deeper treatment of the SOW and contract structure these clauses sit in, see drafting a SOW for US companies hiring global contractors.
Pre-existing IP
If a contractor uses pre-existing IP (open-source libraries, prior work, third-party SDKs), address it separately:
Pre-Existing IP. Contractor shall not incorporate third-party or pre-existing IP into the Work Product without Client’s prior written consent. Where incorporated with consent, Contractor grants Client a perpetual, worldwide, irrevocable, royalty-free, sub-licensable license to exploit the pre-existing IP as part of the Work Product. Contractor shall disclose all third-party and pre-existing IP in writing.
A license-back (not full assignment) makes sense because contractors reuse prior work across clients. Open-source components should be limited to permissive licenses (MIT, BSD, Apache 2.0) unless explicitly approved.
Why default work-made-for-hire fails for foreign contractors
- Most work is outside the nine categories. Software, design, and product work do not qualify under 17 USC 101.
- Foreign jurisdictions do not recognize the doctrine. India does not have work-made-for-hire. The EU does not (with limited exceptions). A court applying foreign law reads US work-made-for-hire as a nullity.
- California statutory-employee issue. Cal. Lab. Code 3351.5(c) triggers workers’ comp obligations.
Explicit assignment avoids all three.
Drafting checklist
- Is the assignment explicit (“Contractor hereby irrevocably assigns”) rather than just work-made-for-hire
- Does it specify all rights (copyright, patents, trademarks, trade secrets)
- Does it specify duration (“in perpetuity”) and territory (“worldwide”)
- Does it specify consideration acknowledged as sufficient
- Does it include moral rights waiver and non-exercise covenant
- Does it include a further-assurance clause for local-law executions
- Does it include reps and warranties on originality and non-infringement
- Does it address pre-existing IP with disclosure and license-back
How Omnivoo handles cross-jurisdictional IP
Omnivoo’s Contract Management product uses the cross-jurisdictional IP clause above as the default, including the work-made-for-hire framing, explicit assignment fallback, moral rights waiver and covenant, further-assurance clause, and Section 19-compliant specification for India. For California contractors, the platform swaps in a California-aware version that drops work-made-for-hire framing.
For Indian contractors, the Contractor of Record product makes Omnivoo’s Indian entity the legal contracting party, so IP enforcement happens under Indian law as the rights holder. See contract management vs contractor of record.
See pricing. Contract Management is USD 49 per contract. Contractor of Record (India only) is USD 29 per contractor per month.
If you remember three things
- Default to explicit assignment, not work-made-for-hire. Use work-made-for-hire as the belt-and-suspenders fallback, not the primary mechanism.
- For Indian contractors, specify duration (“in perpetuity”), territory (“worldwide”), and consideration explicitly. Silence triggers the 5-year and India-only defaults under Section 19 of the Copyright Act 1957.
- For French and German contractors, expect moral rights to survive your waiver. Include a covenant of non-exercise to cover the gap.
A clean IP clause is the cheapest insurance you will ever buy. A broken IP clause shows up two years later, in due diligence, when fixing it costs ten times what drafting it right would have cost.