Who Owns the Design?

[blackteddi]

Who Owns the Design?

I’m a graphic designer specializing in book cover design. In my Terms & Conditions, I state that I retain copyright of the design but grant the client the right to display the work and reproduce it.

In Upwork’s User Agreement section 8.6, it states that the client owns the design after it has been paid in full. Is this correct or am I misinterpreting it?

Under US copyright law, all rights and ownership belong to the creator of the work. The exception to this is work-for-hire, which means if the designer is a full time employee then the work the designer creates is owned by the employer. A freelancer is not a work-for-hire.

Unless I'm misinterpreting this, there seems to be a conflict. I'd appreciate any help in clarifying it.

[petra_r]

Once paid for the client owns it, in full, unless both parties agreed something different in advance.

"Work for hire" is not just in the course of employment. You are free to negotiate your own terms before a contract starts, but this may put you at a competitive disadvantage compared with other freelancers who do not impose conditions that differ from Upwork's.

[blackteddi]

Is it Upwork's place to say that a client owns a design? Whether we like it or not, we have to abide by copyright laws.

[VladimirG]

Hi Teddi,

Unless you create your own agreement with the client to retain the ownership of the work you created and received payment for, the copyright will be transferred to your client after receiving the payment, as outlined in the ToS article you mentioned.

[blackteddi]

How are typefaces and royalty-free images supposed to be addressed? I’m not trying to be difficult. My goal is to protect myself.

Here’s what the AIGA says about Work for hire.

Work-for-hire

This is also called “work made for hire.” It refers to original work made by an employee, in which copyright ownership automatically belongs to the employer. It can also refer to original work made by an independent contractor or a design firm, in which copyright ownership might automatically belong to the client, but only under certain limited conditions. If your work doesn't meet all of the criteria, copyright will belong to you unless you assign it to your client. The work must be specially ordered or commissioned, a written agreement must be signed saying that it is a work made for hire, and the work must fall within one of the following nine categories:

• A contribution to a collective work (such as a magazine, an anthology or an encyclopedia)
• A work that is part of a motion picture or other audiovisual work (such as a website or a multimedia project)
• A translation
• A supplement prepared as an adjunct to a work created by another author (such as a foreword, an appendix or charts)
• A compilation (a new arrangement of preexisting works, such as a database)
• An instructional text (whether it is literary, pictorial or graphic)
• A test
• Answer material for a test
• An atlas

[researchediting]

---

@Teddi B wrote:

....Here’s what the AIGA says about Work for hire.

Work-for-hire

This is also called “work made for hire.” It refers to original work made by an employee, in which copyright ownership automatically belongs to the employer. It can also refer to original work made by an independent contractor or a design firm, in which copyright ownership might automatically belong to the client, but only under certain limited conditions. If your work doesn't meet all of the criteria, copyright will belong to you unless you assign it to your client. The work must be specially ordered or commissioned, a written agreement must be signed saying that it is a work made for hire, and the work must fall within one of the following nine categories....

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Teddi,

OK, let's agree that work done for Upwork clients does not "automatically" belong to the client as "work made for hire."

It doesn't matter. It's a red herring.

Upwork's default terms say the client owns copyright upon payment. That is, our default contract with the client treats creative work done here as if it were work for hire. There's your "automatic," de facto work-for-hire.

If you wish to retain rights, you must specify them, as you say you already do. Upwork has confirmed many times what you have been told here, that such retention of rights supersedes Upwork's default terms. (If you do have your own standard contract, you might want to include a supersession clause in it; chances are Upwork has one somewhere in their ToS, despite repeated assurances here by their agents that in instances like those we are discussing, our individual freelancer-client contracts hold sway.)

Obviously you would want to make your retention of rights clear to prospective clients during negotiation; some prospects may not find your terms acceptable.

Best,

Michael

[blackteddi]

Thanks for your input Michael.

[tlsanders]

I haven't had occasion to research this issue in any depth, but I would think that a book cover would fall under "supplemental materials" as defined by the U.S. Copyright Office here: https://www.copyright.gov/circs/circ09.pdf

Of course, you are still free to contract otherwise, but I do believe that a work-for-hire agreement could properly apply to such work.

[blackteddi]

Thanks Tiffany. I will check out the link.

[jcullinan]

From AIGA: "copyright will belong to you unless you assign it to your client."

By using Upwork, you agree to the Terms and Services, which specify that the rights belong to the client - so you've "assigned" copyright for all intents and purposes.

Typefaces and royalty-free images have their own licenses that allow you or the client to use them as part of the overall work. In most cases, a freelancer can't transfer those licenses, so the client is responsible for having them. Part of my service is to lay out for the client what licenses they'll have to purchase if they don't have them already, before work begins. If they want special fonts or licensed stock images, they must supply them. Otherwise I use only materials that are freely licensed for commercial use.

[blackteddi]

Thanks Jess. I always thought the same thing--the copyright belongs to the designer unless assigned to the client. Last night I discovered that Upwork was assigning the client ownership. I'm surprised that Petra said that I was putting myself at a "competetive disadvantage compared with other freelancers who do not impose conditions that differ from Upwork's."

My terms and conditions are set up so that the client and myself have an understanding of the scope of the project and what we expect from each other. It's to prevent any misunderstanding down the road.

[jcullinan]

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@Teddi B wrote:

Thanks Jess. I always thought the same thing--the copyright belongs to the designer unless assigned to the client. Last night I discovered that Upwork was assigning the client ownership. I'm surprised that Petra said that I was putting myself at a "competetive disadvantage compared with other freelancers who do not impose conditions that differ from Upwork's."

My terms and conditions are set up so that the client and myself have an understanding of the scope of the project and what we expect from each other. It's to prevent any misunderstanding down the road.

---

I'm sure what Petra meant, and I agree, is that if you present every client with an additional agreement to the standard Upwork contract, they may find that off putting and prefer to work with freelancers who don't attach any strings. And a moderator will have to answer this specifically, but I don't think any side agreement that overrules Upwork's terms of service is going to be binding on a client in any way - when you use this site, you agree to the ToS, period.

[blackteddi]

I don't attach "strings" to my terms and conditions. I want to protect myself and my client. I was surprised to learn that Upwork even addressed this matter in their TOS. I believe they are confusing “ownership” with “right to use.”

I don’t have a problem granting ownership when I can. If the work is mine—illustrations, photography, and typeface—I can grant ownership.

When I purchase (on behalf of the client) an image, typeface, or design element from iStock, Deposit Photo, Letterhead Fonts, etc. the license is transferable to the client. But the client doesn’t own it nor do I. The client is granted the right to use it according to the license agreement from iStock, Deposit Photo, Letterhead fonts, etc.

I have images, elements, and fonts, which I purchased for my library. They weren’t purchased for a specific job. I might use these elements multiple times on multiple projects, but I don’t own them, and I can’t transfer a license.

Some clients are misguided, thinking they own the design because they paid for it. They may own the design as a whole, but they don’t own the parts. If they request layered files because they’re the “owner” because Upwork said so, they now have access to elements that they don’t have a right to possess, re-use, share, or sell in any way shape or form.

[tlsanders]

---

@Teddi B wrote:

 I'm surprised that Petra said that I was putting myself at a "competetive disadvantage compared with other freelancers who do not impose conditions that differ from Upwork's."

---

 I think Petra is correct, but it shouldn't matter in the least. Your business model is your business model. Obviously, many clients will prefer outright ownership to a licensing agreement they have to understand and remember to abide by. Many will also prefer to ensure that they have perpetual, exclusive rights to the work. 

The fact that your standard arrangement outside of Upwork is something different than that shows that there are also many clients who are happy to work on a licensing basis. Those clients are your market.

[a189c93a]

Can you send me a link to where it is stated that the client retains the copywrite to the created work? I can't find it in the User Agreement. 

[blackteddi]

Hi,

It's such an old post, Upwork may have changed the agreement. Anyway, your
terms and conditions override Upwork's. But it really comes down to what
you and your client agree to.

[srifaat]

Hi,

I know this is an old thread, but I've just been offered a project
where a client is asking for me to create video course content which I would
like to retain ownership rights to, while giving rights of use to the client as well.
I understand that this needs to be mutually agreed to with the client. Is it enough if I get the clients
consent on Upwork's messenger or do I need to get the client to sign a document agreeing to this?

[kochubei_valeria]

Hi Sherif,

Thanks for asking. Different or additional terms can be stated and agreed to on the platform, in Messages.

[e3bfc007]

Yeah it’s a great idea :light_bulb: that it’s the Client that owns the design after it has been paid for, but it’s also a good way to make an advertisement of our work as a graphic designer 

[mrdanielprice]

Based on what Vlad had said, it sounds as though any private contract overrides Upwork's "default" contract, in the sense that if the client doesn't sign a personal/private contract that the freelancer provided, then they're assumed to have agreed to the terms and condition laid out in Upwork's contract.

[blackteddi]

Thanks Daniel.

[ericarmaier]

Good discussion! Thanks for asking about this, Teddi!

[blackteddi]

Thanks Erica.

[feed_my_eyes]

I'm interested in this issue too. I have no problem with the client owning the work that I've done for them, but I've seen project descriptions a number of times in which a client says that they expect to own all images, fonts, artwork etc. used in their project after it's finished. It's simply not possible to grant this request. For example, I've had clients ask me to send original jpgs of stock photos that I've used in a PowerPoint presentation, so that they can re-use them on their website or whatever, and they seem put out when I tell them that they have to purchase the photos themselves. Is there anything on Upwork to address this? 

[prestonhunter]

re: "Is there anything on Upwork to address this?"

No.

This is between you and the client.