Back-of-an-envelope design commission agreements

We don't have a portrait
photo of Barbara, but this
is her mugshot ...

The Class 99 weblog received this observation yesterday from Barbara Cookson (Filemot Technology Law Ltd):

"Relationships with freelance designers are frequently informal and therefore I was immediately attracted to the draft precedent agreement being promoted by ACID - a champion of all things design, in an @ACID_tweets tweet. Designed to save ££s so that usually means the you won't need to consult a lawyer. Now the trouble with paid-for precedents without legal advice is that they often raise more questions than they answer. That's why the Riverview model of giving away the precedents is much to be preferred (though I can't tell you whether they have a freelance designer agreement because I respected their admonition that competitors should not register). 

An agreement is arrived at between two parties after a negotiation where each party concedes some issues in return for better terms in relation to others. 

Any precedent is written from the perspective of one party only. I was slightly surprised to see that ACID had taken the side of the employer of the freelance designer, the entity that is going to bring it to market, rather than the designer, so let's make this post a little freelance focused. 

Let's suppose you are doing some design work for a company that is going to sell a product. ACID is quite right that most of their members are going to need to own the intellectual property (copyright design right, the right to apply for registered designs and rights of a similar nature throughout the world- IP for short), especially if they ask you to design it. That implies that you have been paid a fair price for the job. The ACID precedent doesn't deal with that fair price and makes the assignment for a pound. On balance, I think you would be better served by dealing with the IP assignment in the document that deals with how and what you get paid. You can then make it clear that the IP rights transfer once your final bill has been settled. Note that you can assign IP in work not yet done. However, when working on such a commission, make sure that you keep all the work that client project separate and identifiable. 

It seems that the ACID agreement seeks to cover follow-on designs. At this point most designer’s alarm bells are going to be ringing. Most designers have a style and one piece of work relates to and is developed from and in others. Selling away your copyright makes many designers feel that they have sold their birthright and may not be able to work in future. If the work exists at the time you're entering into the agreement (which it wouldn't if it were a real commission agreement, but which ACID seem to assume it does, since it is going to be included in the schedule) then you can assign the IP in a specific work which is attached to the agreement. This is ideal, say, for a photograph and won't prevent you taking similar shots -- always assuming that you aren't taking the new shots to copy the old assigned work. IP in design work is usually pretty limited and that panic that you are selling your soul is usually unjustified. 

Is this the final work-- does the company have the right to develop and amend it? If so you may be asked to waive your moral right to object to such changes. 

There is nothing particularly difficult legally about an IP assignment. If it identifies the parties, the IP and is in writing (which includes exchange of emails) and makes it clear that it is an assignment (as opposed to a licence) then it's good to go. You should be able to fit it on the back of an envelope, though choose an A4 one. 

So did you want in an assignment or did you want a licence? What's the difference? You can terminate the licence and get your IP back. You can make the licence cover just a part of the world or grant it for a limited time. If it's an assignment its gone for good and can only be retrieved by another assignment. 

If you're keen to see your work marketed and mass-produced and have not yet got a name, then you're going to have to assign your IP. If you're working in a market where the manufacturer bears all the risks you'll probably end up assigning, but like anything else it's a deal and both parties have to feel that it works for them. So, by all means start from a precedent but don't be deluded into thinking that because it comes with a brand it must be the right one for you".

The comments of Class 99 readers from all sides of the spectrum are welcomed on this issue.

The mug illustrated above originates from the UK-designed Leonardo collection.