A hired creative claims ownership over work after exiting agreement

[FutureSense]

I, as a brand, have hired  a creative for a list of deliveries on invoice base (so without a contract).  The invoices for the work delivered don't specify anything about the terms or use. And referring to verbal agreement the assets delivered to me as client were up to now, my ownership. With some exceptional content we had agreed on crediting the hired party.

 

The collaboration had a long-term vision and therefor the rates for deliveries mutually agreed upon were "friendly" (below regular). Unfortunately we have come to terminate the collaboration mid way as the process is too conflictuous (I spend too much time to argue and justify what I need as a brand and the hired creative is stubborn and tries to push for their "vision" by adding a lot of free work to the initial brief (in order to fulfil their vision) which I as a client did not ask for. 

Now that I want to terminate this collaboration and settle for the work already done and left to pay for, the hired creative considers having given too many hours for free (majority of which from their own initiative) and comes up with new terms about keeping all intellectual property rights and a system of fines in case me or a third party would modify (that means even cropping a picture) the content I've bought from them or not credit them. This is unacceptable and in my opinion not legal (to add terms after having started working just because the collaboration has to be ended - for  the best of both sides). 

I want to leave this conflict peacefully but don't want to compromise - I consider (from previous experience) that what I have bought is fully my property and free to use as I want to (especially as there were no binding terms discussed prior to delivering that work to me). This regards visual content and copy. You can understand that if I had known the use of material would be limited or not my ownership, I would have never signed up for this . 

 

Hereby an extract of the terms proposed by the hired party, hereby XXX, (after having started and delivered the work): 

Intellectual property right

                   All intellectual property rights, especially copyrights, remain with XXX. The customer receives a spatially and temporally unlimited license to use the end result. In factual terms, the license includes any commercial or non-commercial use of the end results briefed in by the customer. However, the granting of a sub-license by the customer to a third party for the commercial use of the end results by such a third party is excluded. 

 

The customer is obliged to state the authorship each time the final results are published and when the final results are used in the media digitally or in print. In the case of publication by a third party, the obligation to name the author is also imposed on such a third party. If the custom- er breaches the obligation to identify the copyright holder, the customer owes XXX a contractual penalty of eur 1000,- per case. The contractual penalty is also owed if the customer fails to impose the obligation in the event of publication by a third party. (this is the most crazy part as even as author of many assets I have no power over what press for instance decides to use/credit or not)

 

In the event of corresponding claims from third parties, the customer holds XXX completely harmless and supports in any process and/or enters the process. XXX will inform the customer immediately if and as soon as third parties assert corresponding claims.

 

Use of material

Use of material should always be following the purpose stipulated in the brief that led to execution and release. No changes, modifications, alterations, partial use of the work for a different purpose that was initially briefed is allowed without the previous consultation of XXX. This includes both visual, sound and written material.

 

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Do these changes in terms seem anywhere logical or legal to anyone here? 

Thank you I will be looking forward to your advice. 

[TwaBla]

48 minuten geleden, FutureSense zei:

I consider (from previous experience) that what I have bought is fully my property and free to use as I want to (especially as there were no binding terms discussed prior to delivering that work to me).

 

It is time you stop thinking you are God and start looking at business practice and the law.

 

If you haven't put anything in writing, all intellectual properity stays with the author / illustrator / photographer / designer / developer. That also applies to fashion design, so there is a plus-side! Just kick your supplier, do not use his/her material and start over again. And discuss licenses before you agree to collaborate, not afterwards.

 

Welcom in HL!

 

15 september 2020 aangepast door TwaBla
added a few afterthoughts

[FutureSense]

That would be the last solution. At this point I think I would like buy-out the rest of the work already started (it's not about one photo, it's a lot of material and brand executions) and settle for terms that are reasonable in respect to the fact that I am paying for the work I am ordering! Their terms appearing after delivering the work cannot be legal, can it?

 

And when you say "kick the supplier" - is that legal?

[FutureSense]

I ask that in the sense where their team have worked for about 4 months on different executions and 1/3 of them are already delivered and payed and the other 1/3 are delivered and left to be settled and the last 1/3 is yet to be executed  but because we want to stop - I consider that work I don't need to pay for and they consider it work/time/vision to be bought out. 

[RubenT]

Intellectual property rights belong to the designer, except if the design was created during her work as a designer as an employee of you. Since this designer isn't on your payroll but works as a freelancer, the intellectual property rights stays with the designer.

 

2 minuten geleden, FutureSense zei:

Their terms appearing after delivering the work cannot be legal, can it?

There aren't appearing any new terms after delivering the work, the designer just points out the law. In your opinion there are appearing new terms, because it seems like you weren't aware of the legislation regarding intellectual property. Unfortunately for you, the designer is allowed to propose anything if you want to use his/her work (by license). It is up to you if you agree on these terms.

 

8 minuten geleden, FutureSense zei:

And when you say "kick the supplier" - is that legal?

Violence isn't legal, but of course you are allowed to stop with your supplier, if you don't use their material and start over again, like TwaBla suggested.

[TwaBla]

 

That is a huge risk in a collaboration between two creatives. Clashes! 

 

You work within the legal boundaries of the creative industry so you need to get familiar with the laws that protect your work and that of others.

 

If your supplier over-delivered you are not obliged to pay for the extra. 

 

But a conflict seems to be a wayout that hurts both, so its time you get the honey out and patch-up that relationship, even if you agree to disagree.

 

Kiss and make up. 

15 september 2020 aangepast door TwaBla

[FutureSense]

I see. And I understand and don't disregard their author right (I don't mind crediting them) but I cannot be financially responsible if a third party decides to modify content for publication. Or if I as a brand need to modify something for specific use. This regards copy too (it is normal that wording is manipulated according to where it needs to be used).

The no-modification clause with fines seems like an outrageous request that no one would sign  for. 

15 september 2020 aangepast door FutureSense

[RubenT]

24 minuten geleden, FutureSense zei:

The no-modification clause with fines seems like an outrageous request that no one would sign  for. 

I agree with you on that. Like TwaBla suggested, try to agree on terms that you both can work with, it is in your both interest to come to an agreement. I suggest that you do a counter-proposal in which you remove those unreasonable clauses and try to create enough 'space' for you(r brand) to use the intellectual property without having to pay them for every adjustment and publication. Make sure you only sign an agreement that doesn't contain any clause which could get you in trouble in the future, that can be very pricey.

 

After that, good luck with your search for a new creative (company) with who you can agree on these kind of terms before you start a collaboration!

[FutureSense]

53 minutes ago, RubenT said:

you are allowed to stop with your supplier, if you don't use their material

Does this mean there is no legal persecution they could start if I exit the agreement without settling (and thus without payment) after their 4 moths of work of which we have email correspondence showing briefs, quotes and approval confirming starting the execution ?

[RubenT]

2 minuten geleden, FutureSense zei:

Does this mean there is no legal persecution they could start if I exit the agreement without settling (and thus without payment) after their 4 moths of work of which we have email correspondence showing briefs, quotes and approval confirming starting the execution ?

No, that was not wat I meant. You have to fulfill your part of the agreement: receive the products and pay for them, as agreed. Otherwise an agreement would be completely worthless. TwaBla gave that example referring to  the plus-side. My comment followed on that.

 

You mentioned that a third of the products isn't produced yet, right? Maybe you can agree with them to cut that third out of the agreement: they don't have to produce it, you don't have to pay for it. It seems like they aren't that eager to work with you anymore, so maybe that can be best for both.

[FutureSense]

12 minutes ago, RubenT said:

You have to fulfill your part of the agreement: receive the products and pay for them, as agreed

Well that's were it's tricky - I am willing to buy the products already produced but cannot agree to the licence terms (that appear after all work is done). Both of you also suggest in that case I should not accept the product , thus not use it,  but am I responsible for paying for the work that's done but cannot be put in use?

15 september 2020 aangepast door FutureSense

[TwaBla]

 

We don't really know what is being discussed. Photography, a website, copy for a website?

 

There are certain creative productions that come with an 'implicite license'. If you ask a photographer to make a number of pictures about detailed subject matter, that would be an assignment in a context whereby it is understood that you will use those pictures to sell clothes. In this context certain rights of the maker will be reduced, like for instance the right to be named as photographer or copyright owner.

 

I don't know the exact rules and how they work out in real life.

 

I do know that a lot of people attack each other with paperwork and imaginary claims, but they haven't got the budget to pay lawyers to fight it out in court. And if this case is unlikely to actually go to court: why bother?

 

Just make the other party a fair offer and stop trying to outsmart each other.

[FutureSense]

8 minutes ago, TwaBla said:

Just make the other party a fair offer and stop trying to outsmart each other.

Golden advice !!! :) that was my first approach too but then the other side decided to come with a new invoice and these unrealistic licence terms that were never discussed before (with the idea to compensate their effort and disappointment the project does not go on I guess). 

 

And because of this unexpected attack  I am here, trying to figure out what protects me as client towards this supplier. 

15 september 2020 aangepast door FutureSense

[FutureSense]

10 minutes ago, TwaBla said:

We don't really know what is being discussed. Photography, a website, copy for a website?

 

There are certain creative productions that come with an 'implicite license'. If you ask a photographer to make a number of pictures about detailed subject matter, that would be an assignment in a context whereby it is understood that you will use those pictures to sell clothes. In this context certain rights of the maker will be reduced, like for instance the right to be named as photographer or copyright owner.

Crediting the author in brand's communication is not at all of issue. The unrealistic claim from the supplier is that I would be fined even if a third party uses the content without crediting them and that the content (3D visuals, videos with and without copy, articles) cannot be modified or changed for whatever reason/needs that were not initially briefed. This in my perception is an unrealistic claim when adapting content (visual or copy) is the daily business of any brand who puts anything out there on different platforms etc.  

[TwaBla]

Who would 'fine' you?

 

That seems an unrealistic claim. Some people expect some sort of police or maybe the headmaster to act on their behalf, but in real life when two parties quarrel they have to go to court or find another solution.

 

Does your opponent have the budget to seek legal support and take you to court, or is this all just bluf?

[FutureSense]

31 minutes ago, TwaBla said:

a context whereby it is understood that you will use those pictures to sell

I am trying to find some information on "implicit licence" but I don't seem to find anything.

Does it mean when content is created for selling  a product (in a form of an advertising or product imagery on a webshop), it is normally understood (preferably stated in a contract of course) that the supplier/author  (in my case render designer)  will not be credited? That is common sense to me in regards of advertising and product images for a webshop but I am just checking what the general licence terms for such content would be. 

[TwaBla]

 

Doing a quick search I found the correct term is probably 'implied license'.

 

Quote

The court explained that an implied license is created when (1) a licensee requests the creation of a work; (2) the licensor makes the work and delivers it to the licensee; and (3) the licensor intends that the licensee copy and distribute his work.

 

From an American case.

 

15 september 2020 aangepast door TwaBla
ie

[FutureSense]

3 minutes ago, TwaBla said:

Some people expect some sort of police or maybe the headmaster to act on their behalf, but in real life when two parties quarrel they have to go to court or find another solution.

The supplier writes in their new licence terms " If the customer breaches the obligation to identify the copyright holder, the customer owes XXX a contractual penalty of eur 1000,- per case. The contractual penalty is also owed if the customer fails to impose the obligation in the event of publication by a third party. "

[TwaBla]

 

These new terms were never part of the original agreement, so you are not bound to those.

 

In your case I would limit the choice:

 

• Accept a fair price for the remaining work to be used with the existing work as foreseen earlier
• Go to court and see what you get

 

Just call their bluf.

15 september 2020 aangepast door TwaBla

[FutureSense]

Its been great talking to you TwaBla! 

The whole point of sharing this story was to check if  there could potentially even be a "go to court" situation as there was no contract originally (so nothing to breach and nothing to go to court with) and terms appeared after delivering the work ..

 

Have a good evening!

[TwaBla]

 

They can go to court, as they are the original copyright owners. Question would be what is fair under an implied license and what the copyright owner can claim afterwards. If you are seen as respecting their rights, yet utilizing your license,  all should be fine.

 

Maybe this case is relevant to you: design agency LimeCoral versus CareerBuilder. That played in the US, but the UK is very similar.

[TwaBla]

15 minuten geleden, FutureSense zei:

Its been great talking to you TwaBla! 

 

This forum has a few real experts in IP law. They might have something to add or correct my mistakes.

 

Always a pleasure to see what they have to say. 

[FutureSense]

Will read into it (the case we are talking about today is different to the one you commented on yesterday regarding a supplier in UK :)) this one is a different supplier and in Netherlands.