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Jan 20

Contracts – copyright, ownership and intellectual property

When you complete a piece of work and deliver it to a client can you re-use it with another client? Or, can the client then use it over and over? Can they on-sell it? Can you resell it to another client? All of these questions have, at their heart, the basic principles of copyright, ownership and intellectual property.

As a a freelancer, you need to decide whether a piece of work has any recurring or ongoing value.If it does then you need to protect that value by withholding copyright. That means making the terms of use clear for that piece of work to the client. Here’s an example.

Let’s say you take a photo at a sporting event and sell it to a newspaper. Will you give the newspaper ownership of the image, allowing them to use the image over and over with the newspaper and their other publishing properties? Or will you retain ownership and only license the newspaper to use that image under a specific set of circumstances?

Ali vs Liston 1965- from Philosofi

The image on the right is a great example. It’s one of THE iconic images of boxing legend Muhammed Ali at the peak of his powers. He destroyed the champion Sonny Liston in one round of boxing. Ali glowers over his opponent, seeming to to be taunting him to get up after a devastating blow.

Now, imagine if you were the photographer of that image and saw it being reused all over the place for close to 50 years. I imagine that you’d like to receive a commission each time that image is used. Well, if you shot such an iconic image, or wrote a brilliant story, then you can write a contract that restricts your client’s use of your work so that either you received a payment for each re-use (if you’re a journalist, these are usually called reprint fees).

When you negotiate a contract with your client you need to take matters like this into consideration. Are you selling the work to a client of granting them a license that limits use of your work in specific ways? The following is an example of the intellectual property clauses from a contract I have with a consulting client.

9.         INTELLECTUAL PROPERTY RIGHTS

9.1      <my company>:

(a)       agrees to assign to <the client>, all existing and future Intellectual Property Rights in existing or future Materials;

(b)       acknowledges that no additional documentation is necessary to complete the assignment made under paragraph (a) and that by virtue of this Clause all existing Intellectual Property Rights in existing Materials vest in <the client> and all future Intellectual Property Rights in all future Materials, on their creation, will vest in <the client>; and

(c)       must do all things reasonably requested by <the client> to ensure that the Intellectual Property Rights are assigned to  <the client> under this Clause

9.2      <my company> warrants that the Intellectual Property Rights assigned to <the client> under Clause 9.1, and <the client> use of those rights, do not and will not infringe the Intellectual Property Rights of any other person.

9.3      <the client> grants <my company> a royalty free licence to use any generic models or methodologies that are not confidential, provided the use of those materials are not used for or in relation to a customer or competitor of <the client>.

In this case, I’ve sold the my intellectual property rights to the client. This suited the terms and the nature of the engagement.

Here’s an example of a similar clause from another agreement I’ve previously used – this time from a publisher.

I hereby assign a license in the attached article (in all printed and electronic forms including internet distribution) for a period of 120 days from submission to <the client>.

<the client> may not on-sell or provide a usage license to another publication without the express written consent of <my company>

If a license to re-use the work is granted, <the client> will pay the author 50% of the amount of the agreed fee shown on this order upon each re-use of the enclosed article.

In this case, I didn’t sell the work – I licensed it. If you think the work you’re producing is likely to have some ongoing value then it’s important to protect that value.

Do you have any advice you’d like to share? Do you dig your heals in with your clients over intellectual property issues?Lets chat about it in the comments.

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