I received the following e-mail from artist Ernie Kwiat:
Every company I work for seems to have a different Work for Hire contract for me to sign. Since I usually am dealing with licensed characters and have no claim to their copyright or trademark, I usually just sign the contracts and hope to get my money. Lately these contracts have been getting more and more objectionable to me. How do you handle them?
I’d have used that as a mailbag question but it needs a lot more than a quick answer. It also opens up the opportunity for me to write about the differences between independent contractor work, work for hire and joint venture works. First off, let’s look at the basic difference between a freelance independent contractor job, and employee/employer or work for hire job. Pre 1989 the differences were a lot murkier, but today they are reasonably clear cut thanks to some important court decisions.
Say you are contacted by a magazine to do a drawing of a toaster in drag to accompany an article. There is no formal agreement from either them or you (not a good idea) or there is an agreement detailing the usage of the image (good idea). The art director explains what he wants you to do, and gives you a deadline. Beyond the approval of the image and perhaps some modifications to the initial pencil drawing, you are in total charge of the execution of the illustration. You turn in the job, invoice the client and are eventually paid for the job. This is an independent contractor job. In this scenario you as the artist own the copyright on this image, and have sold some usage of that copyright to the client. That might include just one time publication rights, the rights for multiple publication and usage, or even total copyright usage. The point is you have control of where, how and when the image is used and sell those rights accordingly.
Now, say you are contacted by a magazine to do a drawing of a toaster in drag to accompany an article. According the the definition of Work for Hire in the 1976 Copyright Act, there are two ways that this could become a work for hire (WFH) job. One (clause one) is if the client, lacking an agreement with you, creates an employee/employer relationship with regard to how this image is created. Meaning rather than you having control over the execution of the illustration, the client has control over when, where and how the image is done. This might include where you do the work, how you do the work, when you do the work, how long you work on it each day, how you are paid for the work and exactly how the work looks and what methods are used to create it. These kinds of controls dictate an employee/ employer relationship. It is obviously very hard for this kind of control to happen outside of the artist actually working at a desk in the client’s offices, so it is unlikely that any work done by you, a freelance illustrator, would be proven to be a WFH job in the absence of any contract. The second scenario that identifies a WFH job (clause two) is simply that you sign a contract that says you agree it is a WFH job, and it meets the defined criteria including images for collective works (magazines). Under that scenario, all the same specifics of the job in terms of execution and control as the above mentioned independent contractor job may be in place, but because of that agreement it is now a WFH job. What that means is you are no longer considered the creator or author of that illustration of the toaster in drag. The client is considered the creator, and owns all copyrights to everything from rough sketches to finished art forever and ever, amen. You have absolutely no rights to use the image for so much as a portfolio piece (although you might have a fair use case there), and the client can use that image for whatever they want with no further obligations to you.
In essence, the difference is in one case you own the copyrights, and in one you do not. Thanks to a case called Community for Creative Non-Violence vs. Ried (490 U.S. 730) in 1989, the US Supreme court decided that the employee/employer relationship needs to include those specific elements I listed above with regard to controls. In other words, they determined that you have to sign a written agreement for the job to be WFH.
Work for hire is generally considered a bad thing for illustrators. Not only do you have no control over the use of your work, but no way to share the wealth if the work is used for some incredibly lucrative purpose you did not foresee (or even one you did foresee). There are even scenarios where you create your own competition with WFH jobs. Say you are well known as an artist that does outstanding cartoon animal illustrations. You create a large body of these for some client under a WFH agreement. Along comes another client that wants to use cartoon animal illustrations for a series of books. They give you a call, but the job is lost when your WFH client takes your images done for them and creates a stock art library of them, and sells the rights for them to the book publisher client for cheap. In that scenario, your own work is costing you a job. Admittedly, that is not a very likely scenario, but if it happened you would have no legal claims on the WFH illustrations you did. A more likely scenario is that you create a cartoon character for a corporation’s annual report under a WFH agreement, and they turn around and license that character to a manufacturer who makes it the mascot for a new line of hamburger restaurants, and suddenly you see your character design on everything from TV commercials to plush toys and happy meal boxes coast to coast with no compensation for you.
No, it’s bad because it’s never a good idea to create something and give total ownership to the client. Even signing over total ownership via a copyright agreement allows you to reclaim the ownership after 36 years, through a specific process, so if your corporate report character ends up as the next Mickey Mouse you can still get some financial love after a certain amount of time. Work for hire is forever. Illustration groups like the Graphic Artists Guild and the Society of Illustrators rightly disdain WFH agreements and widely suggest illustrators refuse to work under WFH agreements. That makes sense in a perfect world, but sometimes in the real world a WFH agreement is a necessary evil. The most obvious time that is the case is if you’re faced with the prospect of doing WFH jobs, or no jobs at all. Baby needs a new pair of shoes and you gotta eat, etc. Sometimes a client comes a-callin’ and your belt has been tightened a lot recently… it would be great to stick to your principals and say “I don’t work under WFH agreements” and turn your back on the job… but that is hard to do when the work is few and far between.
I think you have to realistically assess the amount of risk you are taking in doing a WFH job compared to not doing it. Faced with a WFH arrangement, the first thing I look at is what the likelihood this would come back to haunt me. If a client is asking me to do a single image of a toaster in drag for their magazine under a WFH, what kind of money might I miss out on? Maybe they would use it on their website or in some sister publication… but so far as I know there is no major market for illustrations of toasters in drag. I would still try and arrange for a normal copyright agreement, and grant them total usage for a long time, but failing that I would probably do the WHF especially if I needed the job. Now, if a client came to me asking me to design a cartoon character for a new candy product, I’d say no way to a WFH agreement even if I was starving. They would use that character in a million ads and product packaging. This happened to a friend of mine, who did a painting of a kid licking a type of candy for what he thought was a single ad under a WHF agreement. This was 10 years ago. I still see that image on point of sale displays and ads every time I walk into a Blockbuster. My friend got a couple of hundred dollars for that illustration, and the company got tens of thousands of dollars of mileage out of it. Bad deal.
There are some cases where a WFH agreement makes sense. For example, say Disney calls you to do an illustration of Mickey Mouse in drag (also known as Minnie Mouse) for the cover of a video box. There is no point in avoiding a WFH contract, as it’s impossible for you to own the copyright on an image where you are working with someone’s copyrighted character. The best you could hope for is a “joint works” and that’s another story.
Here’s the real rub… all MAD work is WFH. Take it or leave it. That’s the way it’s been since the early days of Bill Gaines. In that particular case I have no problem with it. MAD has never had an issue with my using the images I create for self promotion, or putting them on my site (once it’s been published), and they always let me keep my originals and sell them if I want to. Technically they own all that stuff on a WFH deal.
The bottom line is you need to assess each individual project as to whether or not an offered work for hire agreement is worth it. In most cases I will try and talk them out of it by offering total copyrights in a standard agreement, but usually they want a WFH agreement because they understand the difference and want the WFH deal. Failing that, I will charge significantly more for a WFH job, reasoning if they pay me enough up front I won’t care that much if they use the art over and over. If that won’t fly, then it’s up to whether I really need the job.
If your head isn’t already spinning from that brief synopsis of “work for hire” contracts, then there is an excellent source I would recommend. Legal Guide for the Visual Artist by Tad Crawford is an invaluable resource for understanding the business side of illustration, photography and visual arts. Upon looking some stuff up for this post I noticed my copy is 10 years old… I’ll be ordering a fresh one right away.