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blackteddi
Member

Who Owns the Design?

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.

34 REPLIES 34
petra_r
Member

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.

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.

vladag
Community Manager
Community Manager

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.

~ Vladimir
Upwork

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


@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....


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

Thanks for your input Michael.

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.

Thanks Tiffany. I will check out the link.

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.

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.


@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.

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.


@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.

 

 

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. 

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.

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?

Hi Sherif,

 

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

~ Valeria
Upwork

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
Member

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.

Thanks Daniel.

ericarmaier
Member

Good discussion! Thanks for asking about this, Teddi!

Thanks Erica.

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? 

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

 

No.

 

This is between you and the client.

This article may help. I learned that book cover designers are considered work-for-hire. Still that doesn't mean that the client owns the design. 

 

https://www.charmcitylegal.com/book-cover-art-ownership-use-copyright/

I know this is an old thread by I wanted to ask about this issue as it is something that I was wanted about by other freelance illustrators when I said I might be using Upwork. They told me to avoid using Upwork due to this legal aspect.

I was really shocked by this as everything I was taught at university told me that you should avoid as much as possible ever signing over the full rights to your illustrations. I would be a very special case and one where you charged a substantially higher rate for them to be able to buy out the whole illustration.

Even just agreeing for the illustration to be used in additional countries or further print runs makes for a higher free. The fact that upward already takes 20%, then charges you to buy additional ticks, then with the ‘race to the bottom’ that seems to be the case on most of the jobs I have seen, especially as I am starting out, means that there is no way that the correct price is being made for freelance illustrations.

It means that there is a whole generation of people who did not study illustration, and companies who have not used illustrators before, who don’t realise they are being ripped of or vice versa.

I’ve seen a fey mentioned from people in this post that asking for standard illustration rights that you would expect outside of Upwork will “scare away prospective clients.” This just makes me very concerned about the kind of clients that upward is likely to attract. I’m still planning on using Upwork for a few jobs, but I very much down when I sign back up with the Association of Illustrators next moth and they will be recommending I use the sight long term now I’ve discovered this legal default.

The point of an agent is to back up the freelancer. That is after all what the commission is for, that and finding the work. But it just seems that Upwork is defaulted legally on the side of the clients, which seems completely the wrong way around.

I was simply hopping you could elevate my fears, and see if any other more experienced artist could chime in here.

This is a very old post and you might want to take the time to review Upwork's Terms of Service for yourself.

 

How you handle the rights to your work is between you and your client.

 

Upwork isn't an agent. They're an online platform that connects freelancers with clients. Clients and freelancers aren't like t-shirts—one size doesn't fit all. It's up to you to find the kind of clients you want to work with and the jobs that match your skill set.

 

Personally, Upwork has been a very positive experience for me and a great benefit to my business.

Upwork is not acting as your "agent" ... and the fee is not a "commission". You're an independent freelancer/contractor, using a service that merely enables the opportunity to connect with clients.

 

Freelancing online is not the same as selling artwork in the real world. I won't speak to the legal issues you're concerned with, but I believe you're confusing real-world terminology that does not apply to online freelancing. Clients are not going to use this site without agreements in place that state what they're getting for their money. If someone needs a book cover illustration, then of course they don't want that same artwork showing up on posters being sold in unlimited numbers. It's no different than when a designer creates artwork for a client logo - it belongs to the client and can't be used anywhere else (except your portfolio if the client agrees to that).

 

I guarantee clients do not think you should continue to make money off of whatever they're selling with your artwork on it. They paid for it, it belongs to them. If you were to put restrictions on how your artwork can be used, I doubt clients would agree to those restrictions.

When calculating the cost of a commission I was always taught that this is not how illustrations works however. The illustrator retains the rights to the artwork and is simply licensing it to the client.

Factors include:
Usage- A product for a wine bottle will be charged less than for a Television add.

Geography- The licence will be based on the number of countries is will be used in. A worldwide license will cost more than one only shown in the UK.

Time limits- You sing the license for the work for a limited time. The longer the time frame the larger the fee. If they come back and want to use it again in the future, they have to sign a new contract and pay a new fee.

Exclusivity- Are you allowed to sell prints of your artwork on your online shop? This is a large revenue steam for illustrators and if you are not allowed this then the fee should be higher.

Number of copies- The larger the print run the more varied the fee, this one again is something in the contract.

Additional rites- such as being able to request alterations, add text over the top from a graphics designer, to use it on their website as well as their book cover and other promotion.

Work for Hire-
I’ll quote this directly from the bellow website.

“Speaking of all-rights buyouts, we should also talk about Work for Hire. Some clients will try to commission you under a Work for Hire agreement. What this means is that they will own all the rights to the work, including the copyright and maybe even your original art in some circumstances. Your name may not even be associated with the image. In a Work for Hire agreement, your fee should be considerably higher to account for these things.”
http://businessofillustration.com/pricing-your-illustration-work/

Such contracts are to be avoided in the Illustration industry and are considered to be bad form if they are the default. Wizards of the Coast for example has gotten a lot of complaints due to adopting this policy.  For some companies it is reasonable for a Work For Hire arrangement to exist. For example if I did the Illustration for a large shopping companies brand logo. I would expect that to be the case. But I would also expect to charge a substantially larger fee. This might change a £3,000 fee into easily a £5,000 fee.

I’ll give you another quote from an Association of illustrators interview with the Handsome Frank agency.

“Another concern, which again I think is mainly a US thing, is engaging an illustrator on very general ‘Work for hire’ contracts. (Work for Hire is an American legal term which means that the client is the legally recognised creator of the commissioned work and owns all rights in the work (effectively a copyright assignment). Work for Hire is not recognised under British law, however if the phrase appears in a British contract alongside wording stating that the rights in the commission will be assigned to the client as a copyright assignment, then unless challenged, the commission becomes a copyright assignment. Often a Moral Rights waiver is added alongside copyright assignments so the artist does not have to be credited and the work can be adapted without them being able to say that it negatively affects their reputation.)
Such contracts are not really designed or suitable for working an artist, they’re typically designed to be used when hiring freelance admin or IT professionals. So it’s important to flag with the client when you’re sent a generic contract which isn’t appropriate for the services you’re offering. Nine times out of ten it’s just an oversight and a bespoke contract is sent in it’s place.”
https://theaoi.com/2018/07/19/handsome-frank-agency-talk-illustration-pricing-and-licensing/

Though I agree that default contract might be fine for someone who is doing proof reading or something else, it is set up poorly for illustrators. You might “guarantee” me that it is different, but everything every professional illustrators has taught me says that this is not the case.
Again from the same interview.


Why is licensing a commissioned image so important?


Retaining the rights to an image is incredibly important for an illustrator, because over time it opens a potentially huge secondary revenue stream for them. By retaining the rights, and building up a library of images that are commercially available once existing licenses expire, you have a way of monetising your previous work without having to create new images.


Licensing tends to come about one of two ways, either a client will see an existing image which is perfect for their requirements. They fall in love with it and if it’s available to license then the illustrator can agree a fee and grant a license with out having to do any additional work. The second scenario we see, is when a client wants to commission an artist but they’re too busy or unavailable to work to the clients deadlines. In this case we would look back through the artists folio of work and suggest some images which might work instead.
The great thing about licensing are that it allows you earn more income without having to create new work – but also the longer you work in the industry the bigger your back catalogue of images becomes. A bigger back catalogue obviously increases your chances of having an appropriate image for a client’s requirements.”

I jsut get the idea that the people at Upwork don't know much about the illustration industry. And it puts me off using the site to find any illustration work. It will be fine for concpet art jobs as those are Work For Hire, but having to teach cliants that the default UpWork contract is wrong and why they need to pay more is jsut ahrd work.

re: "I just get the idea that the people at Upwork don't know much about the illustration industry."

 

Upwork isn't an illustration industry website. It's not an illustrator website.

 

Upwork is a general purpose freelancer platform.

 

If anything, it is a programmers/developers website that lets illustrators use it.

 

re: "but having to teach clients that the default Upwork contract is wrong and why they need to pay more is just hard work."

 

You don't have to do this hard work if you don't want to.

Anonymous-User
Not applicable

Being a former Copyright and Trademark Paralegal, I can confirm for you that once you receive payment for a project, you no longer own the design and do not have any claim of copyright. 

A lot of clients will pull random "contract samples" off the internet which are choppy and generalized. 
For that reason, they sign my contract, I do not sign theirs. I keep control of the terms so there is no confusion.

On or off UW, as a freelancer, you "work for hire". Don't get me started on Trademarks. 

On or off UW, as a freelancer, you "work for hire". 

 

If that's what your contract says. I've just agreed a contract giving me an advance on sales plus royalties AFTER I was paid a flat fee for the original copy. 

 

Although working for hire may be the most common scenario, it isn't a rule.

I know this is an old thread. My question is - do you have the freelancer sign an additional (your own) contract in addition to the one that you have with them through Upwork to retain all rights to the work?

Hello Elena,

 

Thank you for your message. You do not need to sign any additional contract to retain the work rights.

 

Thank you.

Pradeep


Upwork