A lot of freelance and independent contractor gigs involve the production of some kind of work – an article, a logo, a photograph, a video, a report, a blurb of copy, the list goes on. Creating and selling these works comes with intellectual property implications, particularly those within the realm of copyright. As the freelancer and creator of the work, you have first dibs on (and control over) authorship and ownership. On the flip side, as the client and user of the work, you want to ensure that you can actually use the work you paid for. This post will discuss some key IP contract terms you’ll want to keep in mind.
Signing the Dotted Line
Freelancer and independent contractor agreements come in all shapes and sizes. If you’re an established worker for hire, you might have your own standard contract that you present to clients. The more likely scenario is that you’ll be given a contract to sign from the company that wants to engage you. But in all cases, these agreements are important because they govern the IP rights of both parties involved.
Overlooking IP rights at the outset can lead to potential clearance issues, inability to use the work for the purpose it was commissioned, and even costly infringement claims down the line. Here are some things to think about when accepting or offering IP-heavy freelancer or independent contractor work.
Assignment or License
One of my law school professors always said that copyright is like a bundle of sticks: each stick is a discrete right that you can keep or give away. I prefer to think of copyright as a whole pizza. You can slice and dice the rights however you want. For example, you can carve out a slice to use and reproduce the work in North America for 10 years (i.e., a license with reproduction rights and time and geographical restrictions), or you can give away the whole pie (a full assignment).
Regardless of the analogy you want to use (cakes work too, come to think of it…), copyright is fairly flexible in allowing the owner to split up their rights as necessary. So, it is important to consider whether an assignment or a license makes more sense under the circumstances. The party receiving the rights will likely want an assignment. If that’s the case, it will likely demand a higher price point, and the freelancer might want to include a license-back to use the work for self-promotion. A license will have to specify where, when, and how the work is allowed to be used. The company will want to ensure that the scope of the license is broad enough that they can use the work as required. And remember, an “exclusive” license works to the exclusion of the original owner too.
If the work being produced by the freelancer/contractor requires the use of third-party materials, then it is imperative to obtain all the necessary permissions for those materials. This is especially true if the materials include other copyrighted works, trademarks, or someone’s name, likeness and personal information.
Consider which party is better suited to obtain the requisite permissions. Sometimes, the freelancer may have a better relationship with the third party. In other cases, the client hiring the freelancer may have the resources to obtain the permissions themselves or provide standard forms that the freelancer can use. The client may also want an indemnity to protect themselves if the freelancer fails to obtain the appropriate permissions and clearances.
In Canada, the author of a work has something called moral rights – this is the right to (a) the integrity of the work and (b) be associated with (or disassociated from) the work. An author cannot assign their moral rights; they can only waive them. So, if a freelancer is assigning the rights to their work product, the client may wish to include a waiver of moral rights as well.
The freelancer may want attribution rights to be credited as author of their work. If this is the case, the client should specify how the author wishes to be identified (specific wording is ideal) and where the attribution should appear.
On a related note, publicity rights are not strictly copyright, but they are worth mentioning. If the freelancer is going to be credited for their work, it’s a good idea to obtain permission to use their name, likeness, information, or any combination of the three, for the credit. As the author, you probably want to narrow the scope of these permissions to ensure that your publicity rights are not used outside of the context for which they were intended. For example, you may specify that your name and likeness may be used for attribution to your work, but they may not be used for general advertisement of the company.
This is only a general overview of IP rights in a freelancer/independent contractor agreement, and of course does not cover all the other issues relating to independent contractor status (for more on that, check out this post). If you don’t already have a freelancer/independent contractor agreement in place, you might want to think about having one. We can help with that.
Alex is a Lawyer at Spark LLP. Having joined the firm as its first articling student, Alex spearheads the firm’s video game and esports practice.