In this BookMachine blog post, Linda Secondari, our Editorial Board Member for Design, interviews Rebecca Blake, Advocacy Liaison at the Graphic Artists Guild, about work for hire and its implications for creators and publishers.
Linda Secondari: To start things off, I would love it if you would just tell us a little bit about yourself.
Rebecca Blake: I’m a graphic designer at a small firm in mid-town Manhattan, where we do a lot of identity design, collateral and websites for small- and medium-sized enterprises. I have been a Graphic Artists Guild member for many years, and currently I am serving as Advocacy Liaison. The Graphic Artists Guild works on hardcore advocacy issues for graphic artists. We support legislation that impacts how we earn a living. We contribute to Amicus briefs on copyright and other lawsuits. And we engage with the Copyright Office on behalf of graphic artists. We’re also involved on local issues such as tax equity and labour law. I’m also on the board for the International Council of Design, which is an umbrella organisation for design organisations and institutions globally.
LS: Great, thank you. I’m keeping in mind that this audience is international, so we’ll try to talk about these topics in a general way so they’re useful to the most people. Can you define what work for hire is?
RB: Work made for hire is a carve-out in US copyright law, and isn’t even recognised in many countries. By US law, and in fact in most countries, especially countries that have signed on to the Berne Convention, an original work is copyrighted to its creator as soon as it’s put down in tangible form. ‘Tangible form’ can mean anything from something that’s put down on paper, to a digital file. Once a creative concept is put down in tangible form, the copyright to that work is vested with the creator. Copyright is a bundle of rights to a work: the right to copy it, the right to distribute it, the right to display it, and the right to authorise other people to do any of these things with it. Work made for hire is a carve-out in that, in a work-made-for-hire agreement, the creator never owns the copyright; the hiring entity owns the copyright as if they were the creator.
The reason why this is significant is because by US copyright law, if you create a work you own the copyright to it, and you can then license or sell that copyright in an all-rights buyout. All-rights buyouts are pretty onerous for creators. In an all-rights buyout, a creator will sell all the copyrights, in perpetuity, to an organisation or client. But there’s a really crucial difference between an all-rights buyout and work made for hire. If you negotiated an all-rights buyout with your client, in 35 years you can go through a process to have those copyrights revert back to you. With work made for hire, you are not considered the creator. It’s as if you were immaterial to the existence of that work. If you’ve signed a work-made-for-hire agreement with a client, they own the copyrights to that work as if they were the creator. You cannot have copyrights to that work revert back to you, because you never had them to begin with.
In a work-made-for-hire agreement, the creator never owns the copyright; the hiring entity owns the copyright as if they were the creator.
LS: So ultimately why is this bad for creators?
RB: Work made for hire is bad for creators because you essentially lose any connection with that work. There’s no obligation to give you an attribution. There’s no ability for you to have those rights revert back to you.
Reversion of copyrights is very rarely done, and it’s not an easy process. But it exists because in the past there have been copyright holders who signed very onerous all-rights buyouts for works that became very lucrative. The example that’s often cited is songwriters who, in the mid-1900s, signed over the copyrights to their songs to music publishers. Those songs became incredibly popular and generated millions of dollars for the music publishers while the creators of those works – the songwriters — got pennies. The reversion of rights permits creators who signed all-rights buyouts to say, after 35 years, “we’re taking back our copyrights”. Under a work-made-for-hire agreement, an artist would never be able to have the copyrights revert to them because they never owned the copyright to that work, even though they created it.
LS: So I’m going to take the role of business because I’ve got one foot in my experience in-house as a creative director, and then my other foot as a small business owner running a creative agency. When you’re thinking about a work for hire in the design area as it applies to publishers, you’re typically thinking about a book cover design, or a cover design illustration. And the reason a publisher will request all rights, is because especially with the advent of digital publishing, you might be reprinting a book constantly. And with a traditional licensing agreement, often, once you’ve printed two or three times, or once you’ve reached a certain print level, you have to go back to renegotiate. And it’s just so much easier if you can just buy it outright, and be done with it. If you sell the French translation, you don’t have to worry about renegotiating those rights, you can give those files to the other publisher and know that you’re not doing anything wrong.
So that efficiency, in terms of time, money, effort, it’s incalculable, and that’s why publishers want a work-for-hire agreement. But it seems to me that there are things that perhaps we can do to improve a work-for-hire agreement to make it more humane, as it were.
RB: But here’s the thing about it. Many agreements that we’re seeing now do not meet the standards for work made for hire. You can’t simply say, you know, I really want to just own this copyright. A lot of people think that work made for hire is the equivalent of an all-rights buyout. But it isn’t. For one thing, for a work to be considered a work made for hire, it must meet specific conditions.
Many agreements that we’re seeing now do not meet the standards for work made for hire. You can’t simply say, I really want to just own this copyright.
LS: And those conditions are?
RB: There are two major conditions under which work made for hire can apply to a project: if the person creating the work is an employee and the work is created as part of their regular duties, or if the work is commissioned under certain conditions as defined by copyright law. For example, everything I do at my job is under work made for hire, because it meets the first condition: I’m on staff at Optimum Design and Consulting. Whenever I create something for a client in my capacity as Optimum’s Design Director, the copyright to that work is owned by Optimum. Optimum negotiates the transfer of the copyrights to that work with our clients. If your publishing house has a designer on staff, then everything that designer creates for the publishing house falls under work made for hire under that first condition.
Condition number two is that the work is commissioned as one of nine things: 1) a contribution to a collective work, 2) as part of a motion picture or other audio-visual work, 3) as a translation, 4) as a supplementary work, 5) as a compilation, 6) as an instructional text, 7) as a test, 8) as answer material for a test, or 9) as an atlas. In addition to meeting any of these conditions, both parties must also expressly agree in a written contract that the project is work made for hire. The client can’t spring work made for hire on the creator after the project is underway or completed. The problem is that a lot of clients – particularly those in self-publishing – are putting work made for hire language in their contracts. They’re picking it up because they’ve seen it somewhere. And it sounds really great because they gain everything by it and the creator loses everything. But their projects often don’t meet the legal requirements to be considered work made for hire.
LS: Right. So back to the application in design firms for publishers. I’ve certainly worked with work-made-for-hire agreements that were written by in-house counsel, who are very familiar with the laws pertaining to this. Whether we call it work for hire, or whatever we call it, the agreements that designers have with publishing houses typically state, this work is ours in perpetuity, we’re paying you once and we can do anything we want with it forever and ever. We can put it on posters, we can put it on the sides of buses, we can sell it on Mars. That’s the agreement.
It seems that the ethos of that agreement is running counter to a more generous view of the creator as an integral part of the of the process. Is there some sort of a compromise? What are the things that can be added to these agreements to make them more respectful of the designer? It seems to me that an attribution should always be offered. And the creator should always be allowed to use it in their portfolio. So that should be expressly stated. And perhaps we could allow for some sort of reversion of copyright at some later point.
RB: You’re now talking about a more traditional licensing agreement, which is far preferable to an all-rights buyout. There are ways to construct licensing agreements which aren’t all-rights buyouts. Maybe there’s no geographical limit, maybe there’s no usage limit, but maybe there’s a time limit – for example 5 years. That sort of agreement is no longer an all-rights buyout. It’s a very generous licensing agreement that grants pretty extensive rights, but in five years it would give the creator the opportunity to renegotiate the license, or to license the work to a new client, or to reuse it. Contracts can be constructed to give the publishers what they need without taking everything from the creator.
As artist advocates, the Guild supports more limitations in licensing agreements – in time, in media, in geographical distribution – and language that prohibits the alteration of the original artwork and provides attribution to the creator.
LS: I do think that these agreements that require all rights in perpetuity have to be generous enough to make giving over those rights reasonable.
RB: There are ways to work with artists you’re licensing from to figure out something that will work for the publisher, but permits the designer or illustrator to regain their copyrights at some point. Very often, what “in perpetuity” agreements mean the publisher is sitting on creative works they’re not using. The designer or illustrator can’t take those works and relicense them or use them, because they signed a contract with “in perpetuity” language in it.
There are ways to work with artists you’re licensing from to figure out something that will work for the publisher, but permits the designer or illustrator to regain their copyrights at some point.
LS: Yeah, and I do think in publishing, we have learned that books you thought were dead, are not dead. So I think you’re gonna have a hard time talking publishers out of that, because in, well, the past 30 or 40 years, publishers have made a lot of money on books that were out of print.
RB: So this is where more flexible contract terms could be introduced. Maybe the publisher can draft the contract so that they have really comprehensive rights, but they are compensating the creator for them, and they’re limiting those comprehensive rights to a certain number of years after publication.
Publishers can build language into their contract so that if they decide to resurrect the project after that length of time, they’ve got the right to relicense the work for a reprint at really favourable terms to them. But if the publisher doesn’t relicense the work, the illustrator regains their copyrights. There are creative ways publishers and illustrators can draft licensing agreements so that illustrators’ works don’t languish unused under contracts with in-perpetuity language.
LS: What you just described really relates to illustration, more than it would to a book design. I mean, once you’ve designed the book cover for The History of Culottes in Paris, 1680 to 1750, I mean, there’s not a whole lot of usage for that cover anywhere else.
RB: Well, design falls into a bit of a grey area. You can’t copyright just a layout. Designers do create copyrightable work, often incorporating existing works like typefaces and photographs. If you create a design with existing works you didn’t create, or if you’re using non-copyrightable elements such as common shapes, the originality of what you create is less than if you created something completely from scratch. The copyright to your design is thinner.
Retention of copyrights is more of an issue when the work can be relicensed and has value beyond a singular use, as is more often the case with illustration. I think designers are more inclined to sign a contract which includes, for example, their right of attribution and the right to display the work in their portfolios. But for many publication design projects, there’s less of a concern about regaining control of the copyrights because the work is so specific to the original project it doesn’t have as much relicensing value.
LS: Well, Rebecca, you’ve certainly given us all a lot to think about. I cannot thank you enough for your time and perseverance in working to defend the rights of creators all over the world.
Rebecca Blake works, sleeps, eats, and lives as Design Director at Optimum Design & Consulting, a small designer firm in mid-town Manhattan. There she oversees the creation of a wide range of print and web projects, including marketing materials, logos and corporate ID, website interfaces, and publications. In between cajoling demanding clients and consuming a steady stream of coffee, she volunteers as the Guild’s Advocacy Liasion.