"Work For Hire" legal issues with sound design (specifically involving library sfx)

Question

Hey folks, I've read a number of great posts here regarding library sfx usage and legal issues (such as this one, but wanted to focus on an aspect that hasn't come up so far in my readings.

I find on a number of freelance projects, the client wants some standard contract signed to some effect with a "work-for-hire" type clause in it - essentially stating any design work you do and audio materials you provide will be owned by them. Obviously this is something I avoid in general, unless the price is right, but the big question is how does use of library sfx in your work (either in whole or in part) effect one's ability to even officially sign something like this?

My typical response to clients in these situations is to try to explain to them that the nature of the work and source material prevents a "work-for-hire" agreement from being valid, being that I don't actually "own" the audio source material and therefore cannot transfer ownership to them even if I wanted to. This usually confuses and/or frustrates them, as they're typically used to dealing with visual artists or developers that aren't as library-centric, or worse other sound designers in the past who haven't made a fuss about this issue and probably signed off "ownership" of audio files consisting of some library sfx material.

My understanding is that even if a single snippet of library material is used in a sound/soundscape, that audio technically becomes an extension of the library sound and the library EULA applies. Obviously the way it is designed/utilized may be original and "your own", but you don't have the rights to do anything with that sound other than use it in a synced work, and are certainly not able to grant someone else (the client) the rights to use it as they please - to me that would clearly violate the repackaging/redistribution clause pretty much found in every sfx library EULA.

The other part of this issue is that the work-for-hire bit isn't simply to protect the client's exclusivity of the design materials, which is much more reasonable/realistic, but it's also to allow them to modify and reuse the provided material as they see fit in this/other/future projects. This perhaps isn't as big an issue in film/video projects where the deliverable is typically a fully synced soundscape or individual stems at the most, but in gaming projects with more individualized assets it presents a much larger concern.

I've turned down these projects in the past, and in some cases I've had clients willing to add a contract clause to the effect of "anything we can't own is properly licensed for use, but everything else we do own". Of course this just widens the potential for confusion and misuse in my opinion and I still try to avoid it entirely where possible.

So what do you all do when something like this comes up? Do you agree that under a work-for-hire contract you would be unable to utilize any library sourced audio material? Am I being overzealous in my interpretation? Anyone have any standard clauses or client disclaimers of their own that have proven effective and would be willing to share? Any good reading/articles out there that you point clients to in an effort to raise awareness and clarify the issues?

Answer 1

I find on a number of freelance projects, the client wants some standard contract signed to some effect with a "work-for-hire" type clause in it - essentially stating any design work you do and audio materials you provide will be owned by them. Obviously this is something I avoid in general, unless the price is right, but the big question is how does use of library sfx in your work (either in whole or in part) effect one's ability to even officially sign something like this?

You must preserve all rights that exist prior to you using the material. If you use material that has its copyright attributed to someone else and the material's license doesn't include an "attribution free" statement, you must preserve the copyright and cannot claim it to yourself by stating that something is yours, when it really isn't.

My typical response to clients in these situations is to try to explain to them that the nature of the work and source material prevents a "work-for-hire" agreement from being valid, being that I don't actually "own" the audio source material and therefore cannot transfer ownership to them even if I wanted to. This usually confuses and/or frustrates them, as they're typically used to dealing with visual artists or developers that aren't as library-centric, or worse other sound designers in the past who haven't made a fuss about this issue and probably signed off "ownership" of audio files consisting of some library sfx material.

You can transfer rights to everything you've done using 3rd party material (though of course you can't transfer rights to the 3rd party material itself), if your own work fulfills the requirements of the copyright notices of the 3rd party material that you've used. Many licenses of sounds and sound libraries state that it's ok to use the material for your own work and present the results as your own work, if your own work is something larger than repackaging those same sounds or presenting them as they are. You need to consult all of the licenses/copyright notices separately to know what your rights to use the sounds are, but in general the licenses state that it's ok to use the material however you want as long as you aren't simply presenting the sounds "as they are" or outside of a project/production context.

The other part of this issue is that the work-for-hire bit isn't simply to protect the client's exclusivity of the design materials, which is much more reasonable/realistic, but it's also to allow them to modify and reuse the provided material as they see fit in this/other/future projects. This perhaps isn't as big an issue in film/video projects where the deliverable is typically a fully synced soundscape or individual stems at the most, but in gaming projects with more individualized assets it presents a much larger concern.

The main concern for the client is to verify that the IP has been cleared of any 3rd party copyrights (it's basically made your responsibility by using a contract) and to get and verify the exclusivity to the IP, so that it doesn't get used by anyone else or for anything else. Whether you want to give that kind of rights is up to you, but it's a rather standard procedure and it protects the client.