Freelancers' Questions: Does granting copyright have to be retrospective?
Freelancer’s Question: My client who I’ve been developing a Facebook game for since 2010 has never set up a proper contract with me -- until now.
The client wants to own the rights on the graphics to help him be protected in the event of theft by third parties. I don’t mind granting him certain rights but I’m reluctant to sign a contract that is backdated, given how long -- and hard -- I’ve worked on graphics and other areas of this game. How should I proceed?
Expert’s Answer: The graphics are an artistic work, and this means they will be protected under UK copyright law. However, where work is commissioned (the client) from a third party (you), the third party that created the work will be the owner of the copyright where there is not an agreement in place that provides otherwise. That being said, the commissioner will have been equitably granted a perpetual licence to use the graphics and the copyright subsiding in them. This means that although the ownership of the copyright has not formally passed, the client is able to use the work.
It is a common mistake for people to think that because they paid for the work they own the copyright. The courts considered this issue in the case of R Griggs Group Ltd and others v Evans and others (2005). In brief, the case revolved around an advertising agency that was commissioned to design a logo for the manufactures of Dr Martens Boots, but they had not obtained an assignment of the copyright in the work. In other words, they had not signed a contract to say that the commissioner would own the copyright, much like you and your client.
In the case, the manufacturer that commissioned the work successfully argued that it was the beneficial owner of the copyright and the court ordered that the advertising agency assign the copyright to the manufacturer. However, the matter was only resolved following expensive court action, if there had of been an assignment of copyright (a contract that transferred the copyright from the advertising agency to the boot manufacture), there would have been no need for the expensive court action.
To take action to enforce the copyright, a person needs to be the owner of the copyright or be the exclusive licensee of the copyright. This means that the client will need a document that will transfer or licence the copyright from you to the client. This is usually done in a copyright assignment or a copyright licence agreement.
Now, this is a legal document and it is required that such a document is evidenced in writing and will be signed by or on behalf of the assignor, or the person giving away the copyright. The good thing about the assignment and/ or licence is that it can take place whenever, so you will not need to sign a backdated document. The bad thing (potentially in terms of cost), is that a copyright assignment is a legal document so I would recommend that a legal professional draft you such a document in order to affect the transfer of the copyright.
The expert was Samuel O’Toole of legal advisory Lawdit Solicitors.
15th May 2017