Agreements should grant a licence to carry out the full purpose of the agreement and should also recognise the freedom of the photographer to do things that are not prejudicial to the purpose of those agreements. In other words, a mutually beneficial relationship must be achieved.
Assignments and licences
Some clients who deal directly with photographers insist on retaining full control of all rights as they did before August 1 1989. They can seek to achieve this in two ways; either by requiring the photographer to sign a full assignment of copyright or, increasingly, by means of a `grant-back licence’. An assignment of copyright is a legally binding document which may transfer all or selected rights from the photographer to someone else, could be hidden within the many clauses in small print on the back of an art order and may be worded in such a way that it becomes a one-time agreement covering everything the photographer does for the client for the rest of what could be a long working life. It might not be binding but this would be for the courts to decide, would take a long time and cost a great deal of money – all of which could be avoided by reading the small print first. Every order should be carefully studied to ensure that there are no such clauses included.
The BPLC advises photographers to think very carefully before signing or agreeing to a full assignment of copyright. Control of material will be lost if such an assignment is signed before payment is received. Major bargaining counters will be lost. If the client later extends the use of the material beyond the original brief, no legal claim for extra payment can be made, unless specifically agreed. Clients will own the material and can do precisely what they want with it, including licensing it on to a third party or reassigning copyright. The client will have no obligation towards the photographer who will have no legal right to any further payments. Nothing remains but the moral rights.
And thereby hangs a tale. Amongst the acknowledgements in the first edition of this publication, and indeed in this new edition, was `Demis Roussos -for his continuing inspiration’. This has caused endless speculation. In fact the reason is simple. Some years ago, a photographer photographed Demis Roussos, who was attired in a splendid smoking jacket. The work was commissioned, it was before the 1988 Act and the photographer was not in a position to retain copyright. Shortly afterwards, Demis Roussos was involved in a spectacular hijacking. The commissioners cashed in and sold the pictures worldwide. The photographer got nothing. He was converted and became heavily involved in the production of the first edition of this book. Demis Roussos continues to be an inspiration!
A more sophisticated way of doing things is for the client to insist on an exclusive licence in existing work, together with an assignment of copyright in future work yet to be created, which simultaneously agrees to licence back to the photographer all the rights the client doesn’t want since this gives the client the right to sue an infringer. This ‘grant-back licence’ can appear attractive, but it puts the client firmly in control of usage and if the rights the client doesn’t want are only vaguely specified or are listed too restrictively the photographer will have serious problems in exploiting work effectively. All photographers should be aware of the need to license their material correctly, be it direct to a client or to an agent for further licensing on their behalf. Photographers should retain copyright but allow client or agent specific rights to reproduce the work.
Where rights are sold directly to a client these are usually based on considerations of the uses the client wants for the work, where (geographically) it will be used and for how long. The licence is priced accordingly and granting of the licence can be dependent upon payment being made within a reasonable time, or before the work is used. The client will be unable to use the material for anything other than the purposes originally agreed, within the agreed geographical area and for the agreed time period. If the client wants to extend the usage, this can be negotiated, for an extra fee. Whatever the licence its terms must be clearly defined. It is essential to ensure that clients who request exclusivity are aware of the limits of their rights and are not left with the impression that they have bought the image outright. An exclusive licence which is in writing and signed by or on behalf of the copyright owner gives the client the right to sue third parties for copyright infringement, a right they would otherwise have only if copyright had been assigned. The proper way to ensure prompt payment is to state at the outset verbally, on quotations, or on the licence, that the licence will only come into effect when payment has been received and that if any use of the material is made before that time, it will be an infringement of copyright. This could ensure prompt payment, can make all the difference where an advertising agency, for example, is unable to pay the photographer, but the advertiser still wants to use the work and may also short-circuit any arguments based on an implied licence to use material by virtue of a commission.
Remember, copyright is a property right just like owning a house. The freehold can be sold outright or leases on part or parts or all of the property can be negotiated for varying periods of time.
Why copyright should be retained
Holding onto copyright provides both a sword and a shield. A sword, in that the rights owner can benefit financially by licensing further uses of the photographs to other parties; and a shield that can be used as a defence against the use of work in ways that were not agreed and paid for.
Assuming that copyright has not been assigned and a limited licence to use has been issued, dependent upon payment within a reasonable period, there are several advantages:
If the commissioning client gets into financial difficulties and doesn’t pay, permission can be refused for any further use of the photographs. If the material has been passed on to a third party – an advertising agency’s client for instance or the publisher of a book – it may be possible to claim payment direct from them, even if the third party has already paid the commissioning client.
If the client undertakes additional uses, reproduces the work in territories other than those agreed or outside the agreed time period, it will be possible to claim that copyright has been retained and any unauthorised use will be an infringement. Further fees can be recovered or additional uses prevented. Additionally, if the client goes into liquidation or is wound up, the licence will automatically revert to the copyright owner.
Retention of copyright provides an opportunity to use photographs in a portfolio or for exhibitions or publications of work. There will be no need to go begging to clients for permission, with the possibility of refusal. The copyright owner has a clear legal right of access to the material and will not have to rely on arguments about trade practice and implied rights. It may eventually be possible to offer the work to picture agencies. All libraries and agencies require complete copyright clearance for photographs and to date many photographers have been unable to give this. Now, after the original licensed use has expired, the copyright will be clear (subject to any prior agreement to the contrary with the commissioner) and will be available to lodge with an agency, thus creating welcome additional income. It should be noted however that the original use must have expired or be so limited that it will not overlap in any way the uses to which the agency may wish to put the photographs. It would be good practice to discuss further uses of the material with the commissioner who may have no objections at all but in fairness to the original client, if it would cause problems, don’t do it. Remember also that there may be third party rights involved – models, trade marks, etc. When the agreed time period has expired, insist that the client returns the originals in good condition. This has always been normal practice for illustrators and will ensure that, at the very least, a record of work is available for promotional and portfolio purposes as well as being a possible basis of further income. On retirement, or if disaster strikes and ill-health makes further work difficult or impossible, a sizeable collection of pictures will be available which may by then be of historic value and could well represent a substantial part of a pension.
After the death of a copyright owner, the heirs, whoever they may be, will be able to benefit financially for another 70 years. Copyright should be considered as part of a legacy, but be careful. When making a will, bequeath copyright to someone who will be able manage it intelligently. This may not be the same person to whom house, family silver or the contents of the piggy-bank have been bequeathed and it should be someone who wants it and will not consider it a tedious burden. Remember also that all of the moral rights except objection to false attribution (which lasts only for 20 years after death) are enforceable after one’s death for the same length of time as copyright.
Explaining it to clients
There will be times when clients may appear to be justified in insisting that the copyright be assigned to them. A pack shot where only their clearly recognisable, protected product design is featured is a case in point. There will also be times when a job simply will not materialise without a signature on the dotted line, assigning copyright. It is still essential every time to make the point that owning copyright is important and that it is the right of every commissioned photographer to retain it. Point out that maintaining control over the uses not required may result in a more competitive day or shot rate than if they want to buy all imaginable usage rights.
If the client later finds that the pictures are such a success that they want to do something more with them, agree a fee for further use. If they want to syndicate them, agree a percentage of sales. If they are worried that rival companies may later have access to work they have commissioned, agree not to sell anything to any client they care to name. If they want absolute exclusivity for a certain amount of time, agree to an embargo period, known as an exclusivity clause.
It is strongly advisable to get all these kind of things in writing so that there is a good chance that everyone will understand what is being agreed. It is possible to grant a client an exclusive licence for every form of reproduction known till the end of the rights expiry period and for all territories – and still retain copyright, thus keeping a degree of control over unanticipated forms of future exploitation. However, if this kind of licence agreement is considered, it is advisable to get good legal advice first if there is to be any hope at all of such an agreement holding good in the future.
Ownership of material
It is the usual practice in the UK for a fee to be charged for work done on commission plus expenses for film stock and processing. The client might assume that materials reimbursed in this way automatically belongs to them. It’s therefore advisable to agree a position on this at the outset and to include a statement of the photographer’s ownership of the materials in any terms and conditions of business that may be used.
It is difficult to administer rights if the physical property to which they relate is permanently in the hands of a client. It will also be difficult to license rights in photographs to other parties if they are unable to get access to the material. Despite everything, the legal position is that if copyright is retained by the photographer, the owner of the photographs must generally allow access to the material to enable the copyright owner to exercise legitimate rights. However, as clients may lose, damage or destroy the original material, parting with it is not recommended!
Supplying stock photographs
Never submit stock photographs to a prospective client without using a delivery note detailing the number of photographs supplied, a reference number for each item and a brief descriptive caption. Delivery notes with clearly written terms and conditions printed on the back are available from the Association of Photographers and from BAPLA, the NUJ and BIPP. Always ensure that a credit line or name and a means of contact are on every photograph and on the mount of every transparency.
The rights conferred to reproduce photographs are called `reproduction rights’. For a mutually agreed fee a licence is granted to reproduce for a specified purpose, in a specified territory and for a specified period of time. The granting of such a licence does not involve the assignment of copyright. When licensing reproduction rights, it is essential to ensure that conflicting rights are not licensed to two or more clients at the same time and that restrictions imposed by, or agreed with, the original commissioner are observed. Models may place certain restrictions on use. They may prefer not to appear in tobacco promotion or advertising for furs. Not only should their wishes be respected but you may also be sued for breach of contract if you ignore any agreement reached with them.
Remember, copyright is not assigned, moral rights are not waived and photographs are not sold when reproduction rights in stock photographs are licensed.
Licensing reproduction rights
When a licence is granted, the following types of question should be asked in order to provide a basis for calculating the fee:
Who exactly is requesting the licence?
How will the photograph be reproduced or shown and at what size will it appear?
For what purpose will the work be reproduced?
Over what time period will the work be available?
What is the print run?
In what territories will the work be available?
How many editions or impressions are intended?
Will the author of the work be identified?
Does the client require an exclusivity clause?
Will the work be used to advertise the final product?
Will the work be stored electronically?
Will the work be masked or adapted in any way?
How to protect your work
Under UK law, there is no requirement to take any formal steps (such as depositing a copy or registering anywhere) to establish copyright. It is important though to take certain precautions in order to inform other people of the legal position and it is essential to assert, in writing, the moral right to a credit where applicable.
To help protect work, every photographic print, transparency mount and negative bag (assuming an obligation to supply negatives, which should be resisted if at all possible), should carry the Universal Copyright Convention symbol; © followed by the name of the copyright owner. The wording Copyright, or its official American legal abbreviation `Copr’, may also be helpful, especially if it is intended to operate in North America or the Russian Federation. Strictly, a date should be included if operating in a territory which applies the Universal Copyright Convention rules but is not essential elsewhere. The same principles apply to electronic or digital versions. A reliable, permanent telephone or fax number or e- mail address should ensure that the photographer can be contacted, material returned and payments made.
Adding `credit required’ or similar words will often in practice result in a credit even if it does not amount to a formal assertion of the moral right to be identified.
To prevent confusion, a brief caption is vital. Work submitted to picture libraries and agencies requires a fuller caption which can be provided separately. There is a limit to what can be written on a transparency mount but there should be enough to identify both the image and its orientation, if this is likely to be ambiguous. Whatever is written should always be legible.
Remedies against infringement
Copyright is a property right. The owner, the owner’s heirs or anyone to whom copyright has been assigned can take action against someone who has infringed copyright just as action can be taken against a squatter who has invaded private property. If a possible infringement is discovered in advance, an injunction to stop the use may be obtainable. If it’s too late, it is possible to sue for damages to compensate for the loss and to apply for an injunction to stop any repetition. Except in minor cases, it is generally advisable to seek legal advice or consult a professional association such as those represented in the BPLC before doing anything alone. The period of time within which action must be taken is generally six years from the date of infringement.
If someone, as a business venture, knowingly pirates or bootlegs copyright work, it is a criminal offence punishable by a fine and/or up to two years in jail. The copyright owner is entitled to apply for a court order to have all the copies delivered up to him or her and, if that doesn’t work, to have them seized. Infringing copies can be seized by the rights owner so long as the local police station is told first, a prescribed notice is served and force isn’t used. Although a court order isn’t needed for this remedy, it’s essential to get legal advice before acting.
Bear in mind that the pirated item may be thousands of books which, whether delivered according to a court order or seized, will have to be stored. Thousands of books are heavy and bulky. Will the floors take the weight? What will it cost to store elsewhere?
lt is also worth bearing in mind that the most usual pirated items are posters which are sold in city streets and at car boot sales. Those selling such posters are likely to cut and run if challenged but are usually managed by the unscrupulous who will not take kindly to any efforts to assert rights. It would be a great mistake to tackle them without legal backup. Local Trading Standards Officers may be prepared to help but by the time they have got their act together, the bird is likely to have flown – to a pitch in the next borough. Unfortunately, the police generally think they have better things to do and are unlikely to be helpful without persuasion. They are far more likely to become interested if solitary efforts to assert rights lead to bloodshed – but they may not support the ‘right’ side.