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Intellectual property advice for an illustrator

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Five years ago, I was beginning life as a freelance illustrator. Because I was naïve, and had no idea what I was getting into, my first commissions were undertaken without contracts. One of those jobs just reared its head – in an unexpected way.

 

I was commissioned by an agency in London to illustrate DVD covers for one of their clients. The work was presented in PDF format but was rejected by the client, who proceeded with a different design.

 

I was paid my day rate for the time spent doing the work but, since it wasn’t used commercially, there was no sign-off for print and no documents or written statements were drafted transferring rights.

 

Years later the agency has adapted my long-unused artwork for a different series of DVDs, for the same client, almost entirely unchanged – only the titles have been altered. I was not contacted for permission, and only found out because the DVDs are now on sale from several outlets. Although the work is for the same client, I’m aggrieved because my illustrations are being used on a different set of titles to those we originally agreed. It seems a little underhand.

 

I'm quietly confident ownership of the artwork resides with me, but is there anything I can do – what are my options?

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I know you said there was no sign off or documents about transferring rights but did you have a contract for that work and were there any clauses in that about IP?

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Five years ago, I was beginning life as a freelance illustrator. Because I was naïve, and had no idea what I was getting into, my first commissions were undertaken without contracts. One of those jobs just reared its head – in an unexpected way.

 

I was commissioned by an agency in London to illustrate DVD covers for one of their clients. The work was presented in PDF format but was rejected by the client, who proceeded with a different design.

 

I was paid my day rate for the time spent doing the work but, since it wasn’t used commercially, there was no sign-off for print and no documents or written statements were drafted transferring rights.

 

Years later the agency has adapted my long-unused artwork for a different series of DVDs, for the same client, almost entirely unchanged – only the titles have been altered. I was not contacted for permission, and only found out because the DVDs are now on sale from several outlets. Although the work is for the same client, I’m aggrieved because my illustrations are being used on a different set of titles to those we originally agreed. It seems a little underhand.

 

I'm quietly confident ownership of the artwork resides with me, but is there anything I can do – what are my options?

Assuming that you are correct about ownership (check and double check the paper trail for any IP clauses...and bear in mind not all such clauses are valid and enforceable), then first decide for yourself what outcome you require.

 

Then approach the agency with a letter before action setting out facts with supporting evidence, the legal basis of your (potential) claim, what outcome you require, and give the agency 14 days to reply.

 

If they comply (there might be some horse-trading along the way), all good.

 

If they ignore, resend the LBA as a 'final' letter before action on day 15, with a 7 day deadline.

 

If they still ignore, or don't comply, bring your claim to the IPEC, small claims track if you DIY, normal track if you are represented. And don't forget to state that you have complied with the Pre-Action Protocol (that's what the LBA/final LBA are for).

 

The above is procedural advice, not legal advice (I practice IP for a living).

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The default position (ie without a contract saying otherwise) for commissioned work is that the IP belongs to the company paying for the work.

I write code for a living, code that I write for a company on their time belongs to them, not me, even if they reject that code or choose not to use it.

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The default position (ie without a contract saying otherwise) for commissioned work is that the IP belongs to the company paying for the work.

I write code for a living, code that I write for a company on their time belongs to them, not me, even if they reject that code or choose not to use it.

This 'default position' used to be true in relation to design rights (not anymore since the IP Act 2014), but not to copyright.

 

Ownership of design rights and/or copyright must be transferred in writing (as part of the commissioning contract), else -the default position is- it stays with the designer/author. This has always been the case for (most types of-) copyrights.

 

What the commissioner may enjoy, is an implied non-exclusive license in respect of the commissioned IP ('may' because, whilst there is case law to the effect, it certainly doesn't amount to a certitude).

 

As to whether such an implied license would extend to permitting modifications of the IP by the licensee and commercial use thereof without compensation...ask your local friendly IP specialist ;)

Edited by L00b

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I was paid my day rate for the time spent doing the work but, since it wasn’t used commercially, there was no sign-off for print and no documents or written statements were drafted transferring rights.

 

 

If you were paid I am not sure what the issue is (unless your 'contract' included an on going royalty fee for your work if it was ever used commercially)?

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This 'default position' used to be true in relation to design rights (not anymore since the IP Act 2014), but not to copyright.

 

Ownership of design rights and/or copyright must be transferred in writing (as part of the commissioning contract), else -the default position is- it stays with the designer/author. This has always been the case for (most types of-) copyrights.

 

What the commissioner may enjoy, is an implied non-exclusive license in respect of the commissioned IP ('may' because, whilst there is case law to the effect, it certainly doesn't amount to a certitude).

 

As to whether such an implied license would extend to permitting modifications of the IP by the licensee and commercial use thereof without compensation...ask your local friendly IP specialist ;)

 

I'm fairly sure I read a case where an IT contractor had sued for ownership of the code they'd written and lost, they were not allowed to resell the code, the commissioner had (at the least) an exclusive right to use the code, perhaps full ownership. They also had the right to modify the work, obviously, without that in the IT industry it would be impossible to enhance a system or even to fix a defect.

Re:without compensation, the OP was compensated, he was paid for the work at the time it was done, he makes no mention of any part of the contract that specified further payments if the work were used.

 

https://www.gov.uk/guidance/ownership-of-copyright-works

 

This is contrary to what I believed though.

 

Where a person works under a ‘contract for services’ he will usually retain copyright in any works he produces, unless there is a contractual agreement to the contrary...

However, in some circumstances, for example when copyright is not dealt with in the contract to commission the work, courts may be willing to find that there is an implied licence allowing the commissioner to use the work for the purpose for which it was commissioned. This does not necessarily result in a transfer of ownership. Instead, the commissioner of the work may only get a limited non-exclusive licence. This situation demonstrates the importance of establishing who owns copyright through a contract.

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I'm fairly sure I read a case where an IT contractor had sued for ownership of the code they'd written and lost, they were not allowed to resell the code, the commissioner had (at the least) an exclusive right to use the code, perhaps full ownership. They also had the right to modify the work, obviously, without that in the IT industry it would be impossible to enhance a system or even to fix a defect.
Decisions are reasoned and precise, particularly in IP matters, and as always turn on the specific facts of the case. So I'm afraid I can't comment 'in the void', without sight of the relevant decision or case summary.

 

EDIT - that is precisely why the page which you linked and excerpted, uses caveats ("he will usually retain", "in some circumstances", "may only get ") quite liberally, rather than absolutes :)

Re:without compensation, the OP was compensated, he was paid for the work at the time it was done, he makes no mention of any part of the contract that specified further payments if the work were used.
You're making the classic mistake of equating "payment for work" (the 'price' of authoring the work) with "consideration for assignment" (the 'price' of proprietary (IP) rights in the work).

 

Depending on the facts (but in reply to your hypothesis in the above): it would not the OP's fault, if the commissioning agency was careless in failing to secure licensing or ownership of t IP in the commissioned work, with failing to include relevant and valid clauses in its own contract.

 

Beyond that, as I put in my original reply post on here, it's up to the OP to check his paper trail of the time for any clauses relating to IP in the commissioned work.

 

Beyond that, it then pays to check the legality of such clauses: oftentimes, and still to this day, they have been lifted wholesale from some online template or similar resource authored in and for another jurisdiction (typically, the US), and contravene unalienable rights under UK statutes (...and, as such, are not worth the paper they're printed on - written and signed contract or not).

Edited by L00b

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It sounds like there was no written contract and no paperwork to check.

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Assuming that you are correct about ownership (check and double check the paper trail for any IP clauses...and bear in mind not all such clauses are valid and enforceable), then first decide for yourself what outcome you require.

 

Then approach the agency with a letter before action setting out facts with supporting evidence, the legal basis of your (potential) claim, what outcome you require, and give the agency 14 days to reply.

 

If they comply (there might be some horse-trading along the way), all good.

 

If they ignore, resend the LBA as a 'final' letter before action on day 15, with a 7 day deadline.

 

If they still ignore, or don't comply, bring your claim to the IPEC, small claims track if you DIY, normal track if you are represented. And don't forget to state that you have complied with the Pre-Action Protocol (that's what the LBA/final LBA are for).

 

The above is procedural advice, not legal advice (I practice IP for a living).

 

Thank you for this, it's very much appreciated. There's a short paper trail, but no contractual terms were covered (at least not by email). I'm going to think carefully about what to do next, but drafting a letter to the agency seems the right way to go – even if it's just to let them know I'm not happy.

 

If you were paid I am not sure what the issue is (unless your 'contract' included an on going royalty fee for your work if it was ever used commercially)?

 

The issue is they've used my illustrations for another purpose, on a job I haven't agreed to work on – and credited it to someone else.

 

Normally I would discuss with the client or agency how they intend to use the work, whether they prefer a flat fee or licensing agreement and so on. The point with this work is we didn't get to that stage, because the client didn't like the ideas – so my work on the job stopped at that stage. That should have been the end of it.

 

For the work to reappear years later, without even a courtesy call, doesn't seem all that reasonable.

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The issue is they've used my illustrations for another purpose, on a job I haven't agreed to work on – and credited it to someone else.

 

 

I get the issue re someone else taking the credit but if they are using the illustrations for another purpose; why does this matter if you've been paid for the work?

 

When we design a product for a client, once we have been paid, the rights to the design belong to them and they are within their rights to do whatever they see fit with it.

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I have a question about paper trails. (I know nothing about the design industry)

 

Is it standard to do "paper" trails via email or would you expect and request something in the post?

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