intellectual property...who owns the files?

[John Bigboote]

Hello esteemed forum folk! Gotta a legal Q for you...

 

After 8 years working with a large regional retailer, doing their 3D character TV spots and various support animations, the client has developed 'wander lust' and, since they work closely with the broadcaster to buy all their media airtime, someone has sold them on the idea that they can do a much better job than is currently being done.

 

Little research time showed that they ARE a highly capable production house, having done the superb animation in the past. Their first action was to call me and say 'send us the files.'

 

I dragged my feet and grouped with my Company peers, who recommended that to avoid friction and possibly retain what little of the account we could, we comply. They asked for Max or C4D files and I explained that I worked in A:M(never heard of it) and the best I could supply would be an OBJ that they would need to re UV/material/rig.

 

I then got into a conversation with the actual client who insisted 'We own all your files, we paid you to make them- you'll send whatever we ask for wherever we tell you to.'

 

This has gotten me looking into 'intellectual properties' and 'trade secret' laws... which is way over my head. I need to prepare myself for the possibility of them coming for more- like my action files converted to mdd or even my A:M model and project files. When I obtained the account in 2006, it was because I had demonstrated my 3D abilities by modeling their character, rigging and animating it to their approvals. It's odd that someone else says 'we can do better- give us your progress'.

 

I see this as a chef who bakes a meal, and the customer- who legally paid for the meal, feels they can get it cooked better elsewhere, thus demands the recipe and ingredients to take to another chef. In my view- they OWN the VIDEO FOOTAGE that I produced with my computer, software, and files... NOT the computer, software and files. (Altho A:M can be purchased easily enough)

 

Anyways... I value your opinions.

 

 

[itsjustme]

Here is a discussion that I think applies, Matt: http://forums.creativecow.net/thread/17/867925

[John Bigboote]

Thanks Dave... that is pretty much spot-on conversation(altho 1 sided all artists- no lawyers or legal experts)... informing me what I feared- I never should of sent the file over!

[itsjustme]

One of the posters said they spoke with a legal expert:

 

Re: on the other hand...
by joel jackson on Nov 19, 2009 at 3:11:37 pm

I acctually spoke with a copyright attorney yesterday about the issue. She said that unless I have a written contract stating that the project files (ie my intellectual property) was to be part of the deal then I have very good ground to stand on in either denying the files to the client or selling them to them as a buy out. She also mentioned leasing the files. This means they are allowed to use the project files for X seasons of the show for a certain fee. This would work a lot like licensing music.

Anyway, just thought I'd relay what the expert had to say about it.

[zandoriastudios]

I would let them have the files, as is (the A:M files). They are going to have to either redo everything from scratch--or hire you as a consultant!

[Fuchur]

yes... give them the files as is. you do not need to convert the files to anything they can work with. at least not if they do not pay you for the conversation...

 

nobody can ask you afterwards to use a software they are using.

 

not giving the files to them is never a good idea even if there are arguments against that. it means that you will be considered unprofessional and unworkable with.

 

in the end they very likely will ask you to help them converting it and you can ask for payment or they will redo it.

 

see u

*Fuchur*

[robcat2075]

That sucks.

 

I think they maybe own the files since they hired you to create a 3D version of the character. "Work for hire" and all that. It depends on what they hired your company to do.

 

Tell them "It's a standard Animation:Master file, which has been used in professional productions for years. If that other studio doesn't know how to use it they may not be as experienced as they claim.

 

"I'm providing you the actual files I created, there isn't a way to convert them to another format and I'm not legally bound to do that anyway."

[John Bigboote]

 

"I'm providing you the actual files I created, there isn't a way to convert them to another format and I'm not legally bound to do that anyway."

Thanks for the input, fellers. Yeah- I'm bumming. BUT- it's been 8 years of great stuff. Rob- I could'nt tell them that when they could easily visit Hash.com's feature page to see there are 9 export formats available.

[Fuchur]

That sucks.

 

I think they maybe own the files since they hired you to create a 3D version of the character. "Work for hire" and all that. It depends on what they hired your company to do.

 

Tell them "It's a standard Animation:Master file, which has been used in professional productions for years. If that other studio doesn't know how to use it they may not be as experienced as they claim.

 

"I'm providing you the actual files I created, there isn't a way to convert them to another format and I'm not legally bound to do that anyway."

 

Do not be snappy at any time and do not try to convince them how cool A:M is... that is nothing the customer will want to hear and it will not help you keeping him...

Just be professional... tell them the facts: "A:M project files can not be converted to C4d or Max format without most of the information being lost. I can provide you with the A:M files as they are. If you need my assistance in converting the files to the extend it can be done, I will charge the following per hour: XYZ....".

 

That is professional behaviour and will not result in any kind of unnecessary defense action by them or the customer.

And who knows: Maybe they will work with you in future again or you will meet someone again and you will be happy that you reacted professional then...

 

See you

*Fuchur*

[robcat2075]

What is left to keep of this account?

 

 

 

"I'm providing you the actual files I created, there isn't a way to convert them to another format and I'm not legally bound to do that anyway."

Thanks for the input, fellers. Yeah- I'm bumming. BUT- it's been 8 years of great stuff. Rob- I could'nt tell them that when they could easily visit Hash.com's feature page to see there are 9 export formats available.

 

 

OK

 

"There isn't a way to convert them to the format you are asking for."

 

I'm pretty sure A:M doesn't have a CD4 exporter.

 

 

What is left to save of this account besides the character commercials?

[robcat2075]

 

 

Do not be snappy at any time and do not try to convince them how cool A:M is...

 

 

Don't be snappy... deliver that in the most business-like and I-am-so--concerned-for-your-company's-well-being tone possible and let them know that that A:M file is a real thing, not a trick or deception you are trying to pull.

[fae_alba]

Unless you signed a contract specifically stating that when the contract is terminated you will deliver to them files in a certain format, you are not obligated to do so. It's the same with software. If I was hired to deliver a software product that did xyz, on the platform desired, the language I used was my preference, unless it was dictated in the original contract.

 

The tools used to produce media files, are the choice of the company/individual hired to do the job. Beyond that, if they want the source files (technically I'd say it is theirs under "Work for Hire", then they can either convert them themselves, or pay you time and materials to do it.

[Rodney]

I then got into a conversation with the actual client who insisted 'We own all your files, we paid you to make them- you'll send whatever we ask for wherever we tell you to.'

 

 

If you have already sent the files leave it at that. Your job is finished.

If the original contract stipulates you will deliver files in a specific format you may still be required to do that conversion but this doesn't appear to be the case. You'll have to review the contract to determine if that criteria exists.

 

Assuming you need to provide the files... which is highly debatable*... finish this matter.

Once they have your files they can export and modify the files as they see fit.

Concerning further modification of the files (by you) I would be very wary of such without a contract in hand for very specific deliverables.

(What Paul said above!)

*i.e. You very likely own those project files and as they are valuable intellectual property can charge for them.

I'm not entirely sure how one would go about determining the value and billing the client for use of the files.

Even if released, unless all rights are specifically purchased, you retain those rights.

[pixelplucker]

Customer buys finished work not the working files. This is true with the printing industry and screen printing industry and even the molding industry.

In other words if they went to a print shop and bought some business cards, they received a bunch of pretty business cards all nicely wrapped in a box that was eventually distributed amongst the masses and discarded on the street, convention floors and various trash receptacles. What they don't own are the printing plates, blanket on the press, inks purchased to match the idiotic color some designer spent 3-4 hours coming up in their "think tank" at the local over priced agency.

 

In the past I have turned over many years of work when one of my customers sold their business to another company. At that point I knew I didn't have the account but the workers there where hired and it secured their livelihood. I did own all the working files but I chose to give that to another company with no costs to help the people I had worked with.

 

Don't expect to get anything from them if you do. Your call but your not obligated to give them anything other than what they already paid for.

[largento]

I've been around this before and even had a direct confrontation.

 

The ad agency I worked at gained an account and we received files from the old agency. My memory was that we mostly received branding elements. Things like fonts, logos photos, etc. I have a memory of someone saying it was supposed to be everything.

 

I also had a direct showdown with a former client who demanded my files. Since I had specifically charged modeling fees, I agreed to hand those files only and explained they weren't compatible with other 3d apps. They demanded I convert them and I responded with an invoice for a very large sum of money for my time to do that. Which also included text to the effect that I didn't guarantee that the converted files would be usable.

 

They backed down and I kept my files.

 

However it goes down, I would try my upmost to be professional. It's a small world and an employee of that company could become an employee of another company and if they have a negative view of you, they are going to bring it with them.

[pixelplucker]

Legally the agency cannot just give fonts to another agency because the font usage is limited to reproduction purposes only. In other words when I was doing service bureau work, clients would supply fonts so I could output their jobs to film. I could not use those fonts for any other purpose other than that job and that output. This is one of the reasons many agencies will purchase the most expensive fonts as to keep the client tied to them.

 

Again the client typically only pays and has rights to the finished product or service but not all the components involved getting to the finish product. Just the end result. Unless there was some sort of contract or agreement to everything.

 

I had customers that tried to slime their way out and demanded working files and we would tag a price to it, very high price with a take it or leave it option.

 

If it is a good customer they wouldn't be shopping around or trying to go in house and chances are they are going to do the same thing again to who ever they work with next.

 

In rare cases it can be the result of a merger where your services become redundant or they change how they are doing business and your services aren't relevant anymore, in that case it wouldn't hurt to help.

[largento]

Maybe the fonts weren't included, Ken. It was back in 1999 and I was only on the peripheral of things. My vague memory was that we didn't get everything that was needed.

 

Likewise, there were Photoshop files that I used on the other job and a method that I had for rendering in pieces and putting the pieces together to get the best look I could. I had no intention of ever giving them those or telling them how I did it. I billed them for images and modeling, not for all the steps inbetween.

 

 

My client was already cheating me by trying to reuse images and put new labels on them in Photoshop. And charging the client the full amount. It was obvious (to me, anyway) which ones had been modified. Eventually they decided to go with photography instead. Had I continued, I'd made up my mind to have a written contract rather than the "gentlemen's" agreement I'd been working under before.

 

 

I briefly entertained circumventing them and going directly to their client, explaining the situation and offering to directly do the work for the same price I was being paid, but decided it wasn't worth it. That would have really caused bad blood and dealing directly with a client like that can almost be worse than dealing with a cheapskate intermediary.

[robcat2075]

I'd be curious to see what more they plan to do with these mascot spots. Maybe they are dreaming of something like the GIECO Gecko? It would be interesting to try to brainstorm some means to higher production levels and make it so in A:M.

 

I'm not sure it would sell more tires, though, no matter how polished it got.

[John Bigboote]

One problem with the mascot guy is that he ONLY says one thing... a very heavy 'BELLE TIRE' which they have had fun with over the years. The stores are plentiful here in Michigan and will expand another 20-30 stores into Indiana next year. They are still doing spot work with us, which is good... until they see what the other company does between now and the beginning of Red Wing Hockey, which is October 9... then they get to decide. I should post the 6 spots I/we (me and my video editor partner guy) made this last spring... combining Tireman into some 'lifestyle' TV spots interacting with people and comped to look 'real' as possible.

[robcat2075]

So the other company said they'd deliver something by Oct.9 thinking they'd get a free ride on your modeling and rigging but now they have to start from scratch because they can't use an A:M file.

 

Is that about it?

[jason1025]

Can you show us the work they are talking about, that they say they can do better?

[John Bigboote]

This is the calibre of stuff... I would supply the animation with an alpha channel, and they would comp it into their motion graphics. This one is for the Tigers... I've done Red Wings, Pistons, Griffons, Lions... it's all very 'sporty' stuff, for the hockey and baseball- I am lucky that I was an AA pitcher with a nasty 'hook' curveball when I was young... and for the hockey- I still play senior adult hockey... and I draw off that experience to make a convincing 'pitch' or to make the character stickhandle a puck and take a mean slapshot... their stuff I imagine will be more 'pose-to-pose' and slam-bamm fast paced.

BELLETIRE_PRESENTING SPONSOR_MLB_approval_42.mov

NHLG13_Open_Belle_Tire_ex12.mov

[pixelplucker]

I guess they would own the mascot in the sense it is a graphic but they would probably have to recreate it in another program since what you used is different than what they are using.

 

I would be annoyed if you lost the client to competition but less annoyed if they where simply going in-house. Going in-house you at least have a crack at consulting and backing up their people.

Competition typically comes about by undercutting and/or someones kid just got out of college and learnded this stuff off a bootleg software seat.

 

If they jumped to competition then you would probably lose the account anyways.

 

For myself I am strictly a contract worker, all my stuff comes in from brokers or printers. I shy away from agencies because most are slime with slime tactics and every time I had ever been ripped off it was by an agency. Recently one of my customers received a piece of work that an agency copy protected the art under their own name with the customers logo on it. I told them they were crazy to even use the art or pay for it. How can they get away with doing a job for someone and putting their own name on it? I guess it was a bluff since the copy write office wouldn't put it through.

 

Years ago we had a local agency that did a logo for one of the local colleges, charged over $25,000 for the design then took the exact same design and colors and changed the name for another college. This same agency ripped me right after signing off on press saying the customer wasn't happy with the colors and they had supplied the separations. Needless to say they are out of business now.

 

Typically if the customers nice I give them what ever they want. Not as if I am going to use the job somewheres else. In the case of the mascot you can't really sell that to the competiion unless you make drastic changes. Maybe move the eyes around a little and make the tire black (just kidding).