Does my client own my editable, native-format design files?

[tilunanda]

I have a long term client who just abruptly fired me. We have a contract which ends Aug 2009 which includes a list of expected projects & estimated fees. It has a clause that states that 30 days written notice must be given for either party to severe the contract. In addition they are asking for immediate delivery of all native-format, editable design files from the last 8 years which I believe is my intellectual property (of course, the final non-editable file IS their property). Worried about getting paid outstanding $. Not willing to give up files for free. Do I own these working files?

Here are the relevant clauses from my contract:

2. Fees & Billing. In consideration of the Services to be provided by Designer, and subject to the termination rights in this Agreement, Company agrees to pay ---- for services...Work for hire pursuant to clause 6 of this Agreement shall remain the intellectual property of --- up until such time as all invoices are paid in full.

5. Termination. Either party may end this Agreement by a written notice given by hand, by registered or certified mail, or by other commercially reasonable means, not less than thirty (30) days prior to the date of termination, for any reason or for no reason.

6. Work for Hire. To the fullest extent allowed by applicable law, and subject to clause 2 of this Agreement, all information or materials or results Designer prepares or works on for the Corporation pursuant to this Agreement (if any) shall be deemed works made for hire, and owned exclusively by Corporation, free and clear from all claims of any nature relating to contributions and other efforts of ---, Designer and/or any agents or assistants to Designer. --- will hold the Corporation harmless against ainfringement with respect to any materials prepared.

 

[Michael Wechsler]

Hmmm.... this is a good question. Without seeing the whole agreement and just reading what I see (and THANK YOU for doing such a good job of providing us the relevant paragraphs - other users, take heed!!!). Can I assume you're the Designer and client is the Company? I'm not sure how many parties there are here.

Paragraph 2 says "shall remain the intellectual property of --- up until such time as all invoices are paid in full." Let's assume this means it's yours until the client pays the bill, at which such time the client then will assume ownership - does that make sense?

Paragraph 6 says: "and subject to clause 2 of this Agreement, all information or materials or results Designer prepares or works on for the Corporation pursuant to this Agreement (if any) shall be deemed works made for hire, and owned exclusively by Corporation"

I see this paragraph presenting you with some problems. First, let's deal just with the workings of this paragraph and I assume you're the "Designer." This would mean that the Corporation (client) would own the materials and your work is a work for hire. They own the files, not you. But there is an additional problem. Second, see those words "subject to?" That means paragraph 6 is governed by whatever is in paragraph 2 which means they have to pay for the work. That doesn't mean you just own them. It would seem to me that if the client pays for the work up until the termination date, they will then own the files you've created. Does this make sense?