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Do all contracts need to grant full copyright ownership to the client?

Copyright ownership licensing contract legal

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#1 Luke Severn

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Posted 20 November 2013 - 04:03 PM

Hi everyone,

I’ve noticed that many media production contracts grant the client full copyright ownership. In my experience it doesn’t have to be this way. Does anyone have any experience in getting a license back clause inserted into their contracts?

Thanks!


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#2 Alessandro Machi

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Posted 20 November 2013 - 04:23 PM

I think it comes down to the fact that you are being paid.  Just reverse the scenario. You are a producer paying your crew, but your crew expects to be able to use the footage for their own purposes at a later date.

 

I would suggest that what might be just as important is getting a clause in that you can use a short excerpt for demo reel purposes. This too is not as easy as it sounds, because is the clip coming from the finished piece, or from raw footage? The producer probably does not want to allow raw footage to be given out, but then using a finished portion of the piece may or may not suit your needs or even be possible depending on other legal issues involving sound and location rights issues.

 

The other issue to consider is "access". If the only reason you were able to get the shots you got was because the producer created the necessary access, or the funds to create the scene that you are filming, than most likely that won't be given up.

 

So much for the "no" side, would love to read comments from the "yes" side as well.


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#3 Richard Boddington

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Posted 20 November 2013 - 05:38 PM

I can't see any producer with half a brain granting any sort of rights back the DOP.  And what would the DOP do with these rights, expect a royalty on every DVD sold because it's "his" footage?

 

I know we've had discussions on here before regarding movements to have the DOP listed as the "author of the film."  This is really ridiculous, if anyone is the "author of the film" that would be the writer.

 

The DOP isn't an above the line position, and therefore doesn't share in back end revenue.

 

R,


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#4 Luke Severn

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Posted 25 November 2013 - 05:37 PM

I think my question might be a bit misleading. I wouldn't expect anyone to assume earning royalties on DVD's sold or royalties related to the final project. Rather, I'm specifically curious about the content that doesn't make it into the final project and ends up on the cutting room floor never to be seen again. Often this footage is good, usable content that could be used to license later on by the content creator, but producers of said content aren't granted any sort of copyright ownership of this content.


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#5 Richard Boddington

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Posted 25 November 2013 - 07:54 PM

Typically anything you shoot for a producer becomes the property of the producer, whether it makes the final cut or not.  I can't see Disney handing off footage to the DOP that didn't make it into one of their movies, and telling him to do what he wants with it.

 

R,


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#6 Phil Rhodes

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Posted 25 November 2013 - 08:32 PM

Almost all work that is done, with a few exceptions such as photography, writing of novels and musical performance and composition, is done on the basis that all rights are owned by the person paying the bill.

 

That's the practical situation.

 

There is of course nothing stopping anyone attempting to negotiate an alternative contract, but you might find it difficult to establish and then enforce such an agreement.


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#7 Eric Harrison

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Posted 31 December 2013 - 04:26 PM

Hi Guys,  I am an Attorney for Nimia and we've seen some recent shifts in the industry in respects to the ability in getting a license back from a client.  I've recently helped production companies get limited license backs to use footage they shot that is not used in the final cut. The production companies have then gone on to monetize the unused footage through licensing on Nimia.com  (sorry about the shameless company plug).

 

Here are a couple of example legal clauses I use:

 

EXAMPLE LEGAL CLAUSES: 
 
Company grants Contractor an exclusive, worldwide, sublicenseable, transferable, royalty free license to media that is not used in the final completed work.
 
Or
 
Company grants Contractor a non-exclusive, worldwide, sublicenseable, non-transferable, royalty free license to media that is is not used in the final completed work.
 
Hope this helps!  Eric

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#8 Richard Boddington

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Posted 31 December 2013 - 04:42 PM

Well Eric as a producer I can't see that I would ever agree in 1000 years to either of those clauses above.  First off, I paid for all the footage so if anyone is going to back end and monetize the un-used footage into stock it's going to be me, not the DOP.

 

Secondly, the un-used footage is going to look identical, to viewers, to the shots in the movie.  So I don't want that footage going into the stock footage market to be used in other productions, while at the same time it's being seen in one of my movies.

 

I can't imagine any experienced producer ever agreeing to either one of those clauses.  I mean good grief, what does the producer have to gain by agreeing to such a clause?

 

R,


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#9 Eric Harrison

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Posted 31 December 2013 - 06:18 PM

Hi Richard,

You're right that it doesn't work for every project, but it does work some of the time.  An example would be a production company producing media for Starbucks, the production company requests rights back to footage not used by Starbucks during the project contract negotiation stage (starbucks remains the copyright owner of all footage but grants a license back for unused footage to production company).   Another example is worked produced contractually for National Geographic, or Discovery Channel.   I've successfully helped get license back clauses into contracts for production companies that use Nimia.  You're right that it doesn't work every time, but it doesn't hurt to ask.

Best,
Eric


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#10 Richard Boddington

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Posted 31 December 2013 - 07:10 PM

Waaaaa? I would think Starbucks would absolutely not want any un-used footage from one of their commercials used as stock.  I don't see what's in it for them?

 

I could see a prod-co that owns the rights to its footage back ending shots into stock, and then selling the final to Discovery or Nat Geo.  Especially if the prod-co raised the equity to make the shows.

 

Yes DOPs and prod-co's can ask, I should think that in the vast majority of cases the answer would be no.

 

The advantage to Nimia of course is that you may be getting access to premium content without investing a penny of your own funds.

 

R,


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#11 Keith Walters

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Posted 01 January 2014 - 09:26 PM

I don't know much about this particular subject, but this appears to be general malaise among Western corporations, where the Worst Possible Thing that can happen in corporate culture, is that somebody gets something or obtains some advantage from the company's intellectual or other property for nothing, regardless of whether there is any realistic likelihood of the company  of the company ever being able to profit by it.

So, what good is leftover footage from a Starbucks commercial, unless you have specific plans to make further commercials. Normally it will just sit in a vault for years until somebody decides to throw it out. But woe betide anybody with any notions of making any use of it without paying so much that they simply won't bother. One less thing for their board members to worry about....

It looks like Nimia are trying to do for stock footage what iTunes did for music downloads, and remember the howls of corporate outrage that that notion evoked 15 years ago.

 

As it happens I'm actually writing an article for an Electronics magazine about Lee de Forest, the supposed "Father of Radio" (who in reality appears to have had a technological vasectomy around 1905 :rolleyes:). What's eerie is the disturbing similarity of the end-of-civilization-as-we-know-it  hysteria that surrounded the notion of music downloads at the end of the 20th century, to the lurid visions-of-artistic-doom claims made about radio broadcasting in the early 20th century. In the early 1920s much of the music had to be broadcast live because the record companies refused to allow radio broadcasters to use any of their "intellectual Property". Then when they finally relented, the recorded music industry positively exploded, the exact opposite of what their overpaid and generally clueless pundits predicted.


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#12 Richard Boddington

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Posted 02 January 2014 - 12:42 AM

So, what good is leftover footage from a Starbucks commercial, unless you have specific plans to make further commercials. Normally it will just sit in a vault for years until somebody decides to throw it out. But woe betide anybody with any notions of making any use of it without paying so much that they simply won't bother. One less thing for their board members to worry about....

 

Well Keith here's the problem...commercials have very high ratios so there is a lot of un-used footage.  The footage all looks the same, take after take.  I did a series of food commercials a few years ago for a major Canadian food company.  I have tons of beautiful un-used shots of "food".  But it looks the same as the stuff that actually made the final cut.  The client will not want this footage being sold as stock and used in a competitors commercial, for obvious reasons.

 

Also, you certainly couldn't use outtakes of actors from one commercial and then put them in another commercial.  The reasons why are, again, obvious.

 

It's just not as easy as saying, "oh we didn't use this shot so let's sell it as stock, after all.....it's not being used so who will care?"

 

R,


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#13 Keith Walters

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Posted 02 January 2014 - 04:46 AM

 

Well Keith here's the problem...commercials have very high ratios so there is a lot of un-used footage.  The footage all looks the same, take after take.  I did a series of food commercials a few years ago for a major Canadian food company.  I have tons of beautiful un-used shots of "food".  But it looks the same as the stuff that actually made the final cut.  The client will not want this footage being sold as stock and used in a competitors commercial, for obvious reasons.

 

Also, you certainly couldn't use outtakes of actors from one commercial and then put them in another commercial.  The reasons why are, again, obvious.

 

It's just not as easy as saying, "oh we didn't use this shot so let's sell it as stock, after all.....it's not being used so who will care?"

 

R,

Er, yeah, but a lot of ads don't really feature "the product" much in the overall shooting package. An awful lot of commercials, you could just about attach any <product name goes here> in the appropriate places and nobody would know the difference. OK sure, somebody like Starbucks might not like you using footage that actually depicts their chain and its products, but, who would want to do that anyway?

 

Besides which, I don't think Eric is talking about discarded takes of scenes that actually appear in the final production; it's more about about scenes on the script/storyboard that never made the final cut. What's difference to Starbucks if someone else uses unused footage that Starbucks had shot, as opposed to somebody going to the exact same location and re-creating the same footage?

 

This raises another interesting question though. What if you were part of a film crew who had been flown to some exotic location at the client's expense, and you shot some of your own footage in your spare time on a 5D or even an Epic disguised as a stills camera, or whatever. Who would own that footage? And more importantly, how would the client be able to prove that it was shot on their dime?

 

This is really another example of the technology outstripping the legalities. In the past, the only realistic way for someone to do that would have been to borrow the"official" camera and lenses. Now, anybody can get cinema quality full HD cameras for next to nothing.


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#14 Eric Harrison

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Posted 02 January 2014 - 11:45 AM

Keith you're exactly right.   It is a case by case thing.  Could be 5 seconds of a coffee tree blowing in the wind. I will say that Starbucks may not have been the best example as I've been more successful negotiating the license back clause with smaller companies rather than publicly traded companies.   But it also depends on the creative.  Sometimes companies think that the creative agency is so amazing that they will agree just so they can work with them (note, if needed, it can be stipulated that its only certain types of footage and it won't be re-used until two years after the release of the project to make it more agreeable to the company).   Bottom line is that I've successfully negotiated the clause for companies/cinematographers that are members of Nimia, so it does happen.

 

This topic brings to light another change we are seeing in the industry - boutique production companies doing it all (coming up with the creative, bidding the project, producing project all in-house including post work, etc.).  Before there was more of - creative agency pitches project and wins bid, creative agency contracts third party production company to shoot the project, creative agency contracts third party for post production, etc.  I think we are seeing this change because there are more and more small to medium sized businesses that are needing video (commercials, product videos, pitch videos, etc.), and boutique production companies are providing a value solution.    


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#15 Keith Walters

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Posted 02 January 2014 - 06:22 PM

 

This topic brings to light another change we are seeing in the industry - boutique production companies doing it all (coming up with the creative, bidding the project, producing project all in-house including post work, etc.).  Before there was more of - creative agency pitches project and wins bid, creative agency contracts third party production company to shoot the project, creative agency contracts third party for post production, etc.  I think we are seeing this change because there are more and more small to medium sized businesses that are needing video (commercials, product videos, pitch videos, etc.), and boutique production companies are providing a value solution.    

Most of this comes down to the price vs performance of modern acquisition and editing systems shooting off in opposite directions.

An unfortunate side effect of this is that now, just about any idiot can shoot and edit cinema quality video, and sadly, far to many of them do. It runs the risk of doing to motion picture production what word processors did to book publishing. :lol:


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#16 Stephen Williams

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Posted 03 January 2014 - 02:22 PM

Funnily enough recently several clients have asked to only pay half price because it's only for the internet, my response is thats fine if I can retain the copyright for all other uses :D each time there has been some major back tracking & further negotiation. Luckily I am not the mug I used to be.


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#17 Keith Walters

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Posted 03 January 2014 - 07:36 PM

Funnily enough recently several clients have asked to only pay half price because it's only for the internet, my response is thats fine if I can retain the copyright for all other uses :D each time there has been some major back tracking & further negotiation. Luckily I am not the mug I used to be.

But again, what if say Richard was flown to some exotic location at client expense to shoot footage with his Alexa package, and he also slips something compact, cheap and nasty (like an Epic, say :P ) into his luggage, and when nobody is watching, shoots some of his own stock footage?

 

OK, it may not be up to the Alexa standard, but not everybody is that fussy :lol:

 

The question is, apart from them never hiring him again, is there anything they could legally do? Is there something in the contract that specifically covers this?


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#18 Eric Harrison

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Posted 03 January 2014 - 10:04 PM

I've seen many production contracts and no two are exactly alike.  If it is not clear by the language in the contract, the best thing to do is ask up-front while negotiating the contract.   What I've found helpful is if you have someone like myself negotiating the terms, that way the person negotiating is the 'bad guy', and you can stay the 'good guy'.   What I've found is that good, clear, upfront communication is best.   Here is a link to a production contract that I drafted and is written in a way most favorable to you in terms of:  if client fails to pay, contingency days,  weather delays, rights to unused footage, etc.  Feel free to copy and use it for your work ->  http://nimia.com/wp-...n-Contract.pdf .  Other random legal stuff you may find helpful -> nimia.com/legal   (yes another shameless plug, I know, but I think there is some helpful items there).


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#19 Gaspar Guerra

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Posted 14 January 2015 - 11:12 AM

Hi all,

I'm at a crossroads with a client that seems to fit within this discussion and wanted to see if anyone can shed light in the situation:

I was hired as producer to shoot a series of events and interviews and turn them into a web series for a music brand. The client stopped the project when we had about 70% completed and refuses to pay, they do however want the footage of the events. We had worked together for a long time and I thought I could trust them, my bad, but anyway there was no contract. The closest to a written agreement was my production bid in which I stipulated I wasn't granting exclusivity over the raw footage and that the rights over said footage where shared, now they are offering a rather small amount of money for the footage and want exclusivity. Does anyone know of a valid legal argument I can wave in this specific case so that I'm either paid fairly or keep a "joint ownership" over said footage???

 

Thank you!


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#20 Mark Dunn

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Posted 14 January 2015 - 11:20 AM

Please don't double post.


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