Freelancers’ Questions: How to strike a deal to resupply all my work for the client?
I’ve been working for a particular client for nearly seven years and, after a very good run, I have been told that my services are no longer required.
I have some outstanding invoices that I am about to send into them, which they have asked for, but now they are asking for all of the previous artwork that I have produced for them. My filing system is pretty sound but the time retrieving and organising the data will be extensive.
So do you think it’s reasonable to ask a fee for doing this? I am also aware that if I give them my photographic library, then it can be used as the (now former) client sees fit. I would happily do this for an agreed fee (partly as I am not likely to need the images ever again as they are specific to this client), but am loathed to just hand it over.
What is the legal position? Am I obliged to hand over the artwork as they have paid all of their invoices to date? Or can I ask them to desist in using any of my photography, be that in print or online, until they agree on a fee? Or do I simply just have to hand it over as they would own the copyright?
There are quite a few points you raise, aside to the questions themselves, but both require some comment from us and consideration on your part, at what must be quite a stressful time for you.
Let’s address your last question first. The starting point in any discussion as to copyright and ownership is: are you an employee? If you are, the work is owned by the employer. But here you are acting as a sub-contractor so it is you who owns the work. This is always the case unless there is something to the contrary in writing, or in the course of your business dealings over the seven-year engagement.
You say, ‘I’ve been working for a particular client for nearly seven years.’ While you probably intended this statement as only a throwaway line, or to give us some context, this is very useful information, because this not insignificant timeline does indicate that you have a long and established course of doing business with this client.
Let’s return to the legal position, which you ask about. In short, you own the works until they are paid. Once they have been both provided and paid for, it is expressly stated that they – the client -- will then own the copyright, as they paid you for the works. If you wanted to retain the works, then you would give them what’s known as a ‘perpetual licence’ -- on a non-exclusive basis. What this permits is for them to keep using your work and you licence them to the customer -- forever. If you don’t want them to use the works, then it’s a matter of negotiation.
A good way of looking at this so you understand it fully is to take the example of websites. If you are a designer of a website who designs front and back-end websites, you would have no problem in transferring the copyright to the client as they have paid whatever fee you and they agreed, and you will not be creating the same website for another party. So you have no problem transferring these rights. However, there is also the back-end or the ordering ‘shopping cart.’ If you own the rights to the back-end, then it is your ‘bread and butter’ and you will not want to sell this to anyone. Instead, you would ideally license it on a non-exclusive basis. So, in the outlined instance, the client would not own it but would have a license to use it.
Back to your specific situation. My recommendation is that you seek to negotiate a fee for your time (you mention the data retrieval and organisation would be a lengthy process), and also expressly state the limits for what they can and cannot do with your works. You are in a good position and so be sure to enforce your Intellectual Property rights. The very best of luck!
The expert was solicitor-advocate Michael Coyle, director at Lawdit Solicitors, which specialises in IP and internet law.
13th June 2019