THE TRANSFER OF RIGHTS IN A WEB DESIGN CONTRACT
IVAN HOFFMAN, B.A., J.D.
When designer and site owner
contract for web design services, there are essentially 3 forms of transfers
that may take place in and to the creative copyright and other proprietary
rights of the designer Which form, or combination of forms that the parties
agree to depends upon the relative strength of the parties' bargaining
positions. It certainly is very important that each side know their respective
rights but in the end, all deal making is about who wants who more, who
needs who more.
The 3 basic choices, all of which presume that
the site owner and designer are not in an employer-employee relationship,
are as follows:
A work made for hire.
A transfer of all the rights of the designer for
A partial transfer of the rights of the designer
for the limited purposes of the web site.
A Work Made for Hire
A work made for hire under United States Copyright
law is a formal relationship that must comply with all the requirements
of the statute. (For more on these requirements, read "Work
Made For Hire Agreements"). In this form of relationship, the site
owner becomes the owner of all the rights in and to the creative contributions
of the designer and the designer has only those limited rights granted
to the designer in the contract. Indeed, if the agreement is in the form
of a work made for hire, then the designer has no rights under the statute
in her or his creativity at all since the site owner becomes the "author"
for the purposes of the copyright law and in such a case, the only rights
that the designer can have are those granted in the contract. Therefore,
if the agreement is in this work made for hire format, it is very important
to the designer that the designer's rights be spelled out carefully.
This form of relationship is often entered
into when the "site owner" is actually a broker for the actual site owner.
The broker has presumably signed up the owner and entered into an agreement
with that owner to have the broker create the site. But the broker actually
has the work done by third party designers, with or without the knowledge
of the site owner. In such an instance, the broker does not want and likely
will not allow the designer to have any sort of credit on the site and
in such an instance the broker must obtain all rights from the designer
so that the broker can pass those rights along to the site owner. For additional
information on this situation, read "The Gap Trap".
A Transfer for All Purposes
This relationship is much like the work made for
hire relationship. The designer grants to the site owner all the rights
of the designer in the designer's creations for all purposes. This means
that the site owner owns the rights to not only use the designer's work
on the web site but in all other media as well. If the form of agreement
does not fit into one of the statutory kinds required by the United States
Copyright law for a work made for hire, the site owner can end up with
essentially the same rights via this assignment of all rights. There are
some differences between the two deals, differences that deal with rights
of termination and "moral rights" among other issues, but the important
point here is that the designer is still giving up all rights to her or
his creation not only for the web site but for all other uses as well.
This means that if the web site becomes the basis for a feature length
motion picture, or a video game, or is used in any other medium, the designer
may not receive any money at all.
In this instance, as in the first, the terms
of the deal as set forth in the written contract are all important. Even
though the designer may be granting all the rights, it does not mean that
the designer is not entitled to bargain for a participation in the income
from the site owner's exploitation of those rights.
A Partial Transfer For Use On The Web Site Only
The most advantageous relationship for the designer,
and the least advantageous for the site owner, is the one in which the
designer grants to the site owner the right to use the designer's creativity
on and for the web site only and for no other purposes. This means that
the designer retains all other media uses of the designer's creativity.
Should the site become successful and should the site owner wish to use
the designer's creativity in the above-mentioned video game or as the basis
for a movie or in any other form, the rights to those other works, called
"derivative works" under the United States Copyright Law, belong to the
designer and so the designer is in a position to capitalize on the exploitation
of those rights.
It is of course important to note that the
ability of the designer to achieve this sort of agreement depends upon
how strongly the designer has marketed his or her talents. If the designer
needs the work more than the site owner needs the designer, this form of
deal may be hard for the designer to achieve. However the designer must
keep in mind that all creativity is unique. Merely because there are a
zillion other web site designers out there does not mean that all can do
the same job for the site owner. Thus, it is up to the designer to create
a sense that the site owner should use only this particular designer for
no one else can do the work. If someone wants a Picasso, then only a Picasso
will do. Art is not interchangeable.
These are but a few of the variations on the rights
themes. There can be many others and many sub-variations on these as well.
Both parties should keep in mind that nothing follows like day does night
merely by a particular categorization. It will be the exact terms of the
agreement between the parties that determines who owns what, who can do
what with what they own, and how much each party gets from what they own.
It's all in the negotiation and the deal.
© 1997 Ivan Hoffman
This article is not intended as a substitute
for legal advice. The specific facts that apply to your matter may make
the outcome different than would be anticipated by you. You should consult
with an attorney familiar with the issues and the laws.
No portion of this article may be copied, retransmitted,
reposted, duplicated or otherwise used without the express written approval
of the author.
FOR MORE INFORMATION: