Ownership of work product

[#1]

How do I ensure that I own the work product developed by freelancers - especially if they reside in a different country.

[#2 · Accepted solution]

If you pay for it, you own it.

That is the default status according to Upwork's ToS and standard contracts, which are in place automatically when you hire freelancers.

It has nothing to do with where the freelancers live... in another country or down the street.

You may need to be more concerned about making sure you have posession and control of work product. That means you need a good project manager to ensure that all work product files are obtained, reviewed and stored. (If you are not working with a project manager, it means you'll need to do this yourself.)

[#3]

Thank you so much for your helpful and prompt response.

[#4]

Dear fellow Upwork User, interestingly, at some point between last summer (2017) and today (2018) Upwork may have changed its TOS language to no longer include what used to be section 8.6 Ownership of Work Product and Intellectual Property of the Upwork User Agreement. 

If this condition in the TOS has been deleted, i would consider that a material change to the user agreement for all upwork users.  I am in the process of contacting Upwork to determine how it explicitly addresses intellectual property rights transfer upon payment. 

When i last examine the TOS last year, section 8.6 read "Upon Freelancer’s receipt of full payment from Client, the Work Product, including without limitation all Intellectual Property Rights in the Work Product, will be the sole and exclusive property of Client, and Client will be deemed to be the author thereof. If Freelancer has any Intellectual Property Rights to the Work Product that are not owned by Client upon Freelancer’s receipt of payment from Client, Freelancer hereby automatically irrevocably assigns to Client all right, title and interest worldwide in and to such Intellectual Property Rights. Except as set forth above, Freelancer retains no rights to use, and will not challenge the validity of Client’s ownership in, such Intellectual Property Rights. Freelancer hereby waives any moral rights, rights of paternity, integrity, disclosure and withdrawal or inalienable rights under applicable law in and to the Work Product. If payment is made only for partial delivery of Work Product, the assignment described herein applies only to the portion of Work Product delivered."

[#5]

Hi Bill,

Yes, Upwork ToS was updated earlier this year and you can find the announcement here. Section 8 of the User Agreement used to list out the default terms between Clients and Freelancers if they didn’t make another arrangement. We broke these out as a new agreement named the Optional Service Contract Terms. You can still find all the terms regarding Intellectual Property rights there.

[#6]

Not to be disrespectful but i asked this question to Upwork directly.  I am not interested in unoffical answers although i do appreciate you getting back to me.

I find your announcement of the TOS change to be wholly inadequate.  Why you did not require consent by users to the changes in TOS in order to continue using your platform is shocking. your changes to TOS are material.   

Your TOS states "if and to the extent that the Users who are party to a Service Contract have not agreed to different terms, then they agree to incorporate these Optional Terms."

what it means to "not agree to different terms" is ambiguous.  

i doubt there are ANY circumstances in which your "Optional Terms" would become effective given that freelancers and clients would never start a project without agreement on essential contract terms (offer, acceptance and consideration)

i would urge you to make all users aware of this significant change immediately.  

sincerely, bill

[#7]

re: "Not to be disrespectful but i asked this question to Upwork directly.  I am not interested in unoffical answers although i do appreciate you getting back to me."

Bill: Valeria is a senior moderator and one of Upwork's highest-ranking official representatives.

[#8]

Hi Preston, thanks for the reply. if that's the case, then I would hope Valeria would present a title and make reference that she is speaking on behalf and with authorization from Upwork. I may have missed this.  i sent my original complaint directly to Upwork and somehow it was channeled to the community.  Sorry if my tone is terse. I think Upwork is an absolutely amazing economy-changing platform but i do believe that Upwork has made a grave mistake

Someone from Upwork (Brittany Sullivan) has emailed me a response and i am thankful for that.  Upwork seems to think that "the Terms of Service that contain provisions that apply to the contract between you and your freelancer are now located in Section 2.4"  Based on my reading of section 2.4 this is clearly NOT THE CASE.  Upwork is mistaken.  

This was my response to Brittany - 

"Hi Brittany, i don't believe that what you said is correct.  section 2.4 relates to the relationship between the users of upwork and upwork and not, as you said, the relationship between client and freelancer."

"Please express my dissatisfaction to you management.  without informing me of your changes, you've reduced the protections of the significant amount of intellectual output that i have commissioned and paid for" using the upwork platform.  

I think enough has been said.  Upwork's inconspicuous announcement of the changes they made to TOS has undermined client protections.  The way client protections were originally incorporated directly into the orignal TOS (in section 8.6) made them rock-solid.  now, they are incorporated into an "optional agreement" that, because of its stipulations, will likely not apply to most consumated contracts.  or at the very least it has been left ambiguous.  

i think upwork made a big mistake.  it opened the door to potential IP disputes -- probably only a hassle to Upwork's biggest clients.  sincerely, bill

[#9]

---

@Bill F wrote:

Not to be disrespectful but i asked this question to Upwork directly.  I am not interested in unoffical answers although i do appreciate you getting back to me.

I find your announcement of the TOS change to be wholly inadequate.  Why you did not require consent by users to the changes in TOS in order to continue using your platform is shocking. your changes to TOS are material.   

Your TOS states "if and to the extent that the Users who are party to a Service Contract have not agreed to different terms, then they agree to incorporate these Optional Terms."

what it means to "not agree to different terms" is ambiguous.  

i doubt there are ANY circumstances in which your "Optional Terms" would become effective given that freelancers and clients would never start a project without agreement on essential contract terms (offer, acceptance and consideration)

i would urge you to make all users aware of this significant change immediately.  

sincerely, bill

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I would interpret it as the client and freelancer having terms within a separate legal document that outlines ownership differently than the standard terms of UW. I see no reason why UW has to govern ownership rights. They have a default in place but a client and freelancer would be free to negotiate something different. Really UW's interests are related to payment, not ownership, non-disclosure, etc. 

That said and none of this can be answered in this forum. Bill you are right to seek a legal response from UW and otherwise from your own legal counsel to get a proper understanding. I don't know if you are a lawyer, but if not I would reserve coming to a conclusion about ToS change materiality without proper legal interpretation. 

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[#10]

I'm totally new to Upwork, the CEO/Founder of my company, and a lawyer.

Easy questions on this matter, for Valeria, whom I will take as speaking on behalf of Upwork:

1) Does the current ToS + Optional Service Contract ("OSC") Terms = the previous version of the ToS?

2) Is it easy (hopefully automatic) to have both the ToS and OSC excuted at the time I hire a Freelancer (which I was hoping to do so in the next few days)?

If UpWork isn't facilitating the ownership and protection of the work for which I paid, then, respectfully, this diminishes (if not outright eliminates altogether) the value of using this platform.  I hope that isn't the case because so many othe aspects of the platform I am finding useful and potentially additive to my business.

[#11]

Hi Valeria,

If clients and freelancers don´t make another arrangement, the Optional Service Contract Terms are automatically in effect by default?

Thanks,

Nicolas

[#12]

re: "If clients and freelancers don´t make another arrangement, the Optional Service Contract Terms are automatically in effect by default?"

Yes.

[#13]

Furthermore, I believe that the overwhelming majority of Upwork freelancers understand that the work product they produce belongs completely to the clients who pay for the work to be done.

I have personally hired over 70 freelancers on Upwork, for projects that include the creation of original graphics, design, illustrations, writing and more.

Not once have I had a problem regarding ownership. The freelancers produced work that I own completely and do whatever I want with.

I know that there ARE some freelancers who come to the Forum and wondered about this and have asked if things must be this way. The advice they are given is always the same: Work product and all rights associated with it belong entirely to clients, unless the client and freelancer enter into an alternative contract.

[#14]

This is separate to the issue of being concerned that Upwork made a substantial TOS change, but regarding the agreement itself - you could ask the freelancer to sign an agreement with your company regarding confidentiality and ownership of materials.

[#15]

I just found this discussion because I had the same question as others.  Read together, the responses are a bit confusing.  So are you suggesting that each person posting a job needs to come up with their own confidentiality agreement and terms to get signed separately by any freelancer in order to be confident about owning the work product and maintaining confidentiality?  If so, that does take away an advantage that was there in the past when everyone had confidence in the same set of clear rules.

[#16]

re: "So are you suggesting that each person posting a job needs to come up with their own confidentiality agreement and terms to get signed separately by any freelancer in order to be confident about owning the work product and maintaining confidentiality?"

No, not at all.

I'm sorry that this thread was confusing.

The situation is actually quite simple. As experienced Upwork clients already know, you do NOT NEED a separate contract or a confidentially agreement or terms. You don't need any of that. All of that is already provided by default.

Moreover, freelancers know this and respect this.

There IS a clear set of rules. Upwork freelancers respect confidentiality and undestand that the work product belongs entirely to the client.

When Upwork freelancers accept a hire offer, the user interface has buttons that they click which acknowledge that they know and agree with these things.

If you have any doubts about this at all, feel free to ask any freelancer you are working with before you enter into an agreement. All you would need to do would be to say something like this before sending an official hire offer:

"Janice, I'm looking forward to working with you. Upwork's default contract says that all work product belongs to the client. Is that how you understand things, and is that okay with you?"

[#17]

re: "So are you suggesting that each person posting a job needs to come up with their own confidentiality agreement and terms to get signed separately by any freelancer in order to be confident about owning the work product and maintaining confidentiality?"

No, not at all.

I'm sorry that this thread was confusing.

The situation is actually quite simple. As experienced Upwork clients already know, you do NOT NEED a separate contract or a confidentially agreement or terms. You don't need any of that. All of that is already provided by default.

Moreover, freelancers know this and respect this.

There IS a clear set of rules. Upwork freelancers respect confidentiality and undestand that the work product belongs entirely to the client.

When Upwork freelancers accept a hire offer, the user interface has buttons that they click which acknowledge that they know and agree with these things.

If you have any doubts about this at all, feel free to ask any freelancer you are working with before you enter into an agreement. All you would need to do would be to say something like this before sending an official hire offer:

"Janice, I'm looking forward to working with you. Upwork's default contract says that all work product belongs to the client. Is that how you understand things, and is that okay with you?"

[#18]

I have to agree with the others here who are confused. Establishing unambiguous terms about who owns the work product is fundamental to any job. I'm shocked that Upwork doesn't make this easy for clients to understand. If I were the product manager for Upwork's client experience, I'd put in big bold letters, "Unless you and the freelancer execute your own agreement, these are the terms which will govern your engagement. You [do] / [don't] own the work product." And link me straight to the relevant section of the TOS. Don't make me guess or hunt for it. Don't put it in unecessary legalese. Upwork PMs and UX designers, y'all have work to do. 

And I did read Upwork's current TOS and to paraphrase, the agreement essentially says to users, "You're on your own. We take no part in this."