Ownership of Material

[Dave Frank]

Hi guys, I had a question about an issue that popped up at work lately. We have a client that has been horrible to deal with and its been looking like the end of the road was near with this long project. Basically they hired us to shoot, edit and create DVDs of an instructional program.

Now after we have finished all the DVDs and finished 2 of the 3 commercials for the product, the client wants all the tapes back and wants to cease working with us. Apparently they found another company that would do this work for cheaper and want to move forward with them.

Now nowhere in the contract did it say anything about ownership of materials which is why I wondered what the standard was. So if they ask for the tapes, would we necessarily be obliged to give them the masters free of charge?

Me and my boss actually disagreed about it, he felt that they were entitled to all their master tapes since they payed for the shoot. I thought that they could have them but were not entitled to them for free. Remember I am just talking about the original RAW tapes, not any of the FCP project files, motion graphics, or digitized video on hard disk.

I would love to hear people's take on this issue. Thanks!

[Mark Bournes]

This is specifically why I work out raw tape ownership in every contract. In cases like this I would argue that you need to keep the raw video, in case they would lose the tapes. Believe me this happens. I can't tell you how many times the client has lost the raw tapes, and then needed something else edited from them, good thing I always make backups.

[Mark Hislop]

Dave:

I think your boss is right. As long as your company has received full payment for the work you have done (and it sounds like you did), then the footage should belong to your client. If you had hired a company to produce a program for you, wouldn't you expect the footage?

I've been in business for 26 years. A standard part of our quotes and contracts is that all footage becomes the client's property once the entire project is approved and paid for. Not only is this the fair thing to do, but it also is a great source of leverage to get final payment.<g>

My .02 worth of advice.

Mark

[Steve House]

Originally Posted by Mark Hislop

Dave:

.... If you had hired a company to produce a program for you, wouldn't you expect the footage?

I've been in business for 26 years. A standard part of our quotes and contracts is that all footage becomes the client's property once the entire project is approved and paid for. ..

This is not universally true however. For example, if you hire an advertising photogrpher to shoot an ad campaign or when Sports Illustrated hires the photographer to shoot the Swimsuit issue, the photographer typically retains the copyright and what the clients gets is a license to use the photos for a specific purpose in a specific market and for a specific length of time.

[Peter Wiley]

Two issues here: 1) ownership of the physical tapes you shot (of which you or anyone can always make copies) and, 2) ownership of the rights to use what is on the tapes to make a commercial etc. 1 does not mean 2.

As I understand the U.S. copyright law in this area (and I am not an attorney) unless your contract explicitly states that your work was undertaken as a "work for hire" you retain copyright of the footage you shot and the client cannot use it without a specific grant of rights from you.

This is why video production contracts should be structured around rights rather than "ownership" of tapes.

[John Vincent]

I tend to agree w/ Mark H, with the caviat that if it's not spelled out in the contract, then you for sure could fight it out - But it sounds like it wouldn't be worth your time/money.

In terms of industry standards, they can be used by courts, although it's typically done in tort cases and UCC cases (between merchants in the same trade). If you are in an area where this type of business has been done on a regular basis for a long time, or there has been past practice between yourselves and the client, a court might well imply ownership (although most courts do not like to use either method, as they tend to interfer with the right to contract).

If you live in an area that does not truly have a standard (say a small town), then industry standards would likely no apply.

If you do release the master tapes, just be sure that when the tapes are released that you get a signed piece of paper saying that your company's obligations are over.

They may have also breached their end of the contract, so you may be able to squeze some dough out of them for this - ie - we'll let out of the contract for X amount of money. Good luck -

john
evilgeniusentertainment.com

[Richard Alvarez]

Talk to a lawyer, as only a lawyer will be able to give you an accurate reading on the contract you already have in place. And even then, it's going to be a fight.

Typically you own the copyrights to your work product, unless the contract specifically states that it was a "Work For Hire".

But the real question is to ask yourself what your 'needs' are. Is it to maintain the rights to this footage? Is it to get this client out of your hair? Is it to create and maintain an income stream from this work? Is it to 'make the client feel the pain he's put you through?'

Be honest with yourself, and you'll find the best course of action.

[Dave Frank]

Thanks for the input guys! The issue was already settled really, but I was still wondering about the "industry standard" approach to the issue.

The way I saw it was that they had all the intellectual rights to the material(we obviously couldn't start selling copies), but as clients who are paying for the final product(commercials, dvds, etc.) we did own all the original materials. For example, we would not hand over our FCP project files and all of our custom motion graphics, and other digitized media. There was no stipulation in the contract saying they would get all that data delivered to them on a hard disk at the end of the job. So why would the raw video tapes be any different? I feel that all the client is entitled to is the final products, which we delivered to them in full(well almost 90% of it until they decided to leave us).

I do agree that by giving the tapes over to the client, we ended our involvement in the project. But I don't think we were legally obligated to do so. But sounds like you guys disagree.

And this is in LA by the way if that makes a difference, which it sounds like it does.

@Peter - in a contract would you not even include ownership of the raw tapes? Just include the rights to the material? To me it seems like you would have to include both.

[Dave Frank]

Originally Posted by Richard Alvarez

Talk to a lawyer, as only a lawyer will be able to give you an accurate reading on the contract you already have in place. And even then, it's going to be a fight.

Typically you own the copyrights to your work product, unless the contract specifically states that it was a "Work For Hire".

But the real question is to ask yourself what your 'needs' are. Is it to maintain the rights to this footage? Is it to get this client out of your hair? Is it to create and maintain an income stream from this work? Is it to 'make the client feel the pain he's put you through?'

I was trying to ask this question void of any type of emotions, feelings, and just in legal terms. In reality, we are giving them the tapes and ending our involvement in the project. Obviously in the future there will be wording about this in the contract, but like I said I was just wondering about industry standard as far as pure ownership of the physical raw tape.

[Richard Alvarez]

Dave,

Typically the production company retains the copyrights and ownership of stock... UNLESS OTHERWISE EXPRESSLEY STATED.

[Don Donatello]

"if you hire an advertising photographer to shoot an ad campaign "

they didn't hire a still photographer - still photographers are a different ballgrame that has always had more rights then videographers ....

off hand why wouldn't you want to give the tapes back to client ?
copyright ? can you use the shots for other projects ? can you make any $$ off the shots ?

over in the hi $$$ end commercial world - client gets EVERTHING ....

[Dave Frank]

@Don - I'm not saying I didn't want to give them back, I was soley asking about ownership if for some reason the client demanded them back. Like I said, this specific situation was handled, I am just wondering about general stanadards.

That's a good point about higher end gigs. In the past I've worked at several shops where the client got everything including hard drives, etc. But I never knew if that kind of thing was written into the contracts that they get it. The issue never came up then.

[Steve House]

Originally Posted by Don Donatello

"if you hire an advertising photographer to shoot an ad campaign "

they didn't hire a still photographer - still photographers are a different ballgrame that has always had more rights then videographers ....

off hand why wouldn't you want to give the tapes back to client ?
copyright ? can you use the shots for other projects ? can you make any $$ off the shots ?

over in the hi $$$ end commercial world - client gets EVERTHING ....

The point is that whether we are talking about a still photographer or a videographer, we're talking about an independent contractor who is a vendor of custom produced images and has been retained by a client/customer to produce create certain images. Whether those images are stills or moving, the issues around their ownership and who has the right to reproduce them is the same and AFAIK the law doesn't make any distinction between still and video. If there is a difference, it's because years ago the ASMP published some guides to industry standard practices that most name photographers began to adhere to in their contracts but they're only a guide and there's nothing to prevent videographers from adopting similar practices as industry norms. As I understand copyright law, the creator of the images, not the customer requesting them, owns them UNLESS there is a contract in writing that says the work is produced as a "Work For Hire" or the photographer/videographer chooses to assign those rights to the customer in writing. I'm using the term 'customer' intentionally because there is a clear distinction between an employee performing duties in the course of his employment and a vendor selling services on the open market. The relationship between an independent videographer contracted to produce a commercial and the client is one of vendor and customer, not employee and employer.

It's an issue in the case the original posted related because the client contracted for them to produce X DVD's and commercials. The original tapes were only the raw materials to accomplish that, not the product that they agreed to purchase. So what they're asking is to be given the tapes at cost, depriving the firm from the revenue they would have otherwise received from their use in completing the contracted-for product. (And also the ability to charge the client for any further use of the materials for new commericals and DVD's in the future that use footage from the original.) It's really no way different from a wedding photographer being told after the wedding that he charges too much for prints so "we'll pay for the raw film and lab to develop it and you hand over the negatives and we'll have all the prints we want to send to the family printed ourselves at Wal-Mart." Or producing a commercial at one rate understanding it was for local use only, then discovering it running nationally which would otherwise have occasioned a much higher fee.

You asked why NOT give the tapes to the client, "can you make any $$ off the shots?" impying you can't. But of course you can! He contracted with you to produce 5 commercials at $1000 a piece. If later on he decides he needs more similar commercials and you've retained masters and the rights to them, he has to come back to you and pay you another $1000 each for the additional new ones. That's fair isn't it? After all, you would have charged him $10k if he'd ordered 10 variations the first batch wouldn't you. But if you've given him the tapes and the right to reproduce them as he wishes, he's free to take them to your competitor who's only too happy to undercut you and get the new spots for only $750 a piece.

[Paul Gale]

Interesting thread - does anyone know the situation in the UK?