Copyrights, Who owns what?

[hothousegraphix]

There's been some question floating around about copyrights, and who owns what in the designer/client relationship. This link might be of some interest.
After doing some digging around, I've been able to locate info that debunks the assumption that a client is transferred copyrights simply because that client pays. For this to occur, according to what I've read (there are some exceptions), this transaction must be documented in writing. Now, before I get lambasted, I'm not a lawyer. To get a definitive answer about this you might want to consult your friendly neighborhood intellectual property attorney. After locating this info I thought I might be of some interest.

[Napalm]

Thanks. Very good link and well worth the read.

[hothousegraphix]

I've just spoken to my "friendly neighborhood" intellectual property attorney. In all seriousness, because I have been interested in getting a definitive answer to this question about copyrights I contacted an attorney. Just thought I'd pass along this info.

The main question is about "work for hire" and who this description refers to. In general terns, the "work for hire" description is reference to the employer/employee relationship. Any individual, employed by a company, receiving a salary and benefits, who creates work on company time forfeits any right of ownership for that work to his/her employer.

Anyone who is contracted to perform a task (in this case design), does not fall under the "work for hire" definition as they are considered an independent contractor. This being the case, designers in this situation do not automatically forfeit the creative rights to
their work they create for pay; unless agreed to in writing by both parties.

There is one gray area of interest having to do with the motion picture industry, if a designer is contracted to create part of a motion picture or other audiovisual work, such as a screenplay, etc; the creative rights are retained by the client. I was told that
"FLASH" movies may fall into this area, though there is no definitive answer to this issue as of yet. Keeping this in mind, I was also told it would be well advised to clarify these issues via contract. Something like is stated in the following:

RIGHTS OF OWNERSHIP – Once a project has been delivered by us and is fully paid for by CLIENT, Your Company Name will assign the reproduction rights of the design for the use(s) described in the proposal.

According to the Copy right Law of 1976, the rights to all design and art work, including but not limited to photography and or illustration created by independent photographers or illustrators retained by Your Company Name, or purchased from a stock agency on your behalf, as well as all work created by Your Company Name, remain with the individual designer, artist, photographer or illustrator. Unless a purchase of “All Rights” (A Buyout) is negotiated with the individual designer and/or his/her authorized representative, you may not use or reproduce the design or the images therein for a purpose other than the one(s) originally stipulated. If you wish to use the design Your Company Name has created and/or the images within it for another purpose or project, including a reprint or exhibition, you must contact us to arrange the transfer of rights and any additional fees before proceeding. If printing or other implementation is done through your vendors, you agree to return to us all our original mechanicals and artwork (slides, prints, drawings, separations, etc.) within two weeks, and to provide us with printed samples of each project.

We reserve the right to photograph and/or distribute or publish for our firms promotional and marketing needs any work we create for you, including mock-ups and comprehensive presentations, as samples for our portfolio, firm news letter, brochures, slide presentations and similar media. We agree to store mechanical boards and computer disks for a period of 6 months beyond the delivery of a job. Thereupon, we reserve the right to discard them.

I was also advised that it would be a good idea to change any reference to the concept of “OVERTIME” to something like “additional work beyond proposed scope” or possibly “Work required during off hours”. The “OVERTIME” term is one that is in direct reference to the employer/employee relationship which we stated earlier, we are not part of. Using it, I was told, blurs that line making it possible to challenge.

In addition, three other items were mentioned as important to include in a contract:

1) A Liquidated Damages Clause:
This is a statement that spells out damages the client will insure if the contracted work has been found to be used for purposes other than those originally described in the proposal presented. Additionally, it states that collection of these penalties does not prevent the pursuit of litigation on the part of the designer.

2) Continuation of rights after Termination:
This statement spells out the fact that if the contract is canceled, the designer is the entity that continues to hold the rights to any and all work created on behalf of the client while under contract.


3) Forfeiture for all preliminary work:
This statement refers to the rights of all work created during the planning stages of a project. Stating that once a project has been approved and paid for, all rights to the preliminary work created (mock ups, examples, versions not chosen by client) remain with the designer.

Back to the initial subject of issuing “license of use”, I was told that, for the most part, as long as each party agrees to the terms, the designer can limit as much, or as little, as they so choose. So, if one is concerned about a client taking an image designed for a proposed business card and reusing that image to sell to others for profit, the designer may limit this by simply stating in the "License of Use" document the “work created is not for resale to third parties”. Now, this may not prevent the person/client whose hell bent on doing this regardless of what they sign,
but...this does give the designer some legal recourse.

For clarification on these issues, I suggest speaking to an attorney.
The above is only my account of a conversation I had with a lawyer whose services I retained.

[Napalm]

I have to disagree with you. Employees do not loose rights to their work unless its stated explicitely in their contracts. Even though it is implied if it's not in the contract you have every right to that work.

[hothousegraphix]

I'm only stating what I was informed. The question about the "work for hire" diffinition refered to in the U.S. Copyright Law of 1976
refers soley to the employer/employee relationship and states:

Section 201 of the US Copyright Act:
Link to section 201
Link to the entire document/law


Copyright Ownership and Transfer
§ 201 · Ownership of copyright¹
(a) Initial Ownership.—Copyright in a work protected under this title vests
initially in the author or authors of the work. The authors of a joint work are coowner
of copyright in the work.
(b) Works Made for Hire.—In the case of a work made for hire, the employer
or other person for whom the work was prepared is considered the author for purposes
of this title, and, unless the parties have expressly agreed otherwise in a written
instrument signed by them, owns all of the rights comprised in the copyright.

However, keeping the above information in mind, the attorney I retained did state that if each party of a contract agrees to conditions that are in direct contradiction to the current copyright laws it is the contract that is binding.

None of my questions to this attorney were in reference to international law. These situations I'm sure will vary based on the
country of origin. I'm not at all in a position, nor do I have the legal expertise to dispute opinions contrary to the information I've been provided. The information above is the information I was given by this attorney prior to my conversation with him and in support of his explanation.

[TheOriginalFlashDavo]

Have to back up what hothousegraphix is saying for Australia too (and anywhere else that I have heard of from when I worked for a company with offices in the US, London and Tokyo). As an employee, all copyright of anything that you create is owned by your employer. As a contractor/freelancer, unless the contract stipulates that you forfiet copyright (which you'll find many contracts do - companies like to own the copyright), then you own the copyright.

[pheck]

i agree with davo et al. while i think you've done a great job researching all this copyright stuff hhg, i think you might run the risk of losing clients if you aren't a little more flexible. for example, if a client want to use some website content for a future brochure, and i know this upfront, i might use that as a selling point (if you choose us, we'll include the unrestricted license to use this work in any other future projects). if it gets out of hand, and third party buyers/sellers are involved, you have recourse with the law you've researched, which, as you've stated, unless you discuss otherwise in the contract, holds true.

in other words, if i've learned anything so far in this business, the most important thing is getting a client signed. you can't quibble about copyrights if there are no clients to do work for

[hothousegraphix]

pheck - point well taken!

This research, though, was more of an exercise on my part to find out exactly where the designers’ rights lie.

I was motivated by a post I read several weeks ago in which the poster stated that they felt their former client had used the work produced for them in a manner that it had not been intended. The finer details of that specific situation I know nothing about. I just thought, after reading some of the comments made in response that maybe it would be nice to know all the legal possibilities with respect to "rights" and the designer/client relationship.

[pheck]

yeah i hear ya, and i'm glad you did take the time. i learned something for sure. thanks.

[hothousegraphix]

Just posting the info for those who might be interested.

[TheOriginalFlashDavo]

Originally posted by pheck
i think you might run the risk of losing clients if you aren't a little more flexible. for example, if a client want to use some website content for a future brochure, and i know this upfront, i might use that as a selling point (if you choose us, we'll include the unrestricted license to use this work in any other future projects). if it gets out of hand, and third party buyers/sellers are involved, you have recourse with the law you've researched, which, as you've stated, unless you discuss otherwise in the contract, holds true.

in other words, if i've learned anything so far in this business, the most important thing is getting a client signed. you can't quibble about copyrights if there are no clients to do work for

Which is where the grey area comes in when weighing up the importance of keeping the client happy and the value of your intellectual property.

For example, my "perfect" client (yes, I have one!) I have no qualms at all about where he re-uses the designs I've done for him, since we have a great relationship, and he'll always ask for my advice even if I'm not the actual person doing the work.

On the other hand, I've had a previous client who - basically - was just a fool out to try to get "something for nothing", who we did some elearning work for a bargain basement price, and he then took out part of the image of the interface we designed for that, and provided to someone else who developed his site. Now, these "developers" obviously had no idea, and that image is shown in a distorted way on their main site (see http://www.apmtraining.com.au, and resize the window and see how that top image squashes up.... it's farcical). So now I'm loath to ever show that interface to anyone since if they then do further research and visit the APM site they'll see that goddamn ugly site featuring my image and presume I did that - which as you could imagine would say very bad things about my abilities.

So yes, not always black and white, but don't disregard your copyright solely to get a client to sign. Most clients will sign with no questions about copyright, so then you're in the barganing chair, as it should be.

[pheck]

good story davo. that resizeable header graphic is something else!

to everyone, i have had an interesting experience in recent months working with another firm with a mutual client. they were inflexible and at times deceptive. today i am still working with the client, but it doesn't look so good for the other group. lesson learned: take my mom's advice to heart. treat people as you would want to be treated