As filmmakers, it is important for us to understand the intricacies of contracts especially when it comes to intellectual property (IP) rights. Maintaining ownership or a stake in our creative work significantly impacts our success in the industry.
In East Africa, there’s a growing trend where filmmakers do 'work for hire'/commissioned projects, giving up their IP rights and missing out on the long-term benefits of their work.
To discuss this important topic, we brought in Millicent Ogutu, an experienced Intellectual property and entertainment lawyer as well as a filmmaker.
Millicent Ogutu is a defender and lover of the arts, an Advocate of the High Court of Kenya, an actress, thespian and Theatre/film producer.
Her work experience spans across various sectors in the creative and cultural industries in Kenya including engagement with Government. She has had the privilege of being the Managing Director - Phoenix Players Theatre (the first repertory theatre in East and Central Africa), Secretary of the Kenya Actors Guild, Board Member of the Performers Rights Society of Kenya (PRISK) – a Collective Management Organization, Governing Council member of The Kenya Cultural Centre – a state corporation which incorporates the Kenya National Theatre and Chairperson of the Kenya Copyright Board.
Millicent is a partner in Ogutu and Gichuhi Advocates LLP.
In this piece, she shares valuable insights on key contract clauses, the benefits of keeping IP rights, and tips for negotiating and using these rights.
- In the context of IP rights, what specific clauses in film contracts are often overlooked by filmmakers but are crucial to ensuring they maintain a stake in their work?
All contracts ought to make provision for who the people getting into the contract are, the ‘thing’ the contract is about, how much is paid for the thing and for how long, who gets to control how the thing can be sold to other people to make other things similar to or related to the original thing sold.
So it may be hard to pinpoint a specific clause because clauses inter-relate and how long one party can control the IP can affect what they do with it. However, it’s good to pay attention to:
- Background IP: any rights that existed before the contract/ or that made it possible to create this new work that is the subject of the contract
- Usage Rights: What the other party can do with the work. Can they sell it to others, create spin-offs, or develop related products like TV series or merchandise? If so, how do you benefit? Are you paid a one-off fee, or do you have ongoing rights and involvement in new deals?
Understanding who gets credit, who does what, and who gets paid helps you determine if you're getting a fair deal. Always negotiate to be part of any new opportunities, whether as a researcher, writer, talent, producer, or crew member.
If you pay attention to who gets the credit for what, who does what and who gets paid then you know if you are giving away too much for little consideration (what you get paid for the thing). Or if you are getting a fair deal. You should always negotiate to be part of any new opportunities that come up either by being a researcher, writer, talent, producer or part of the crew - depending on where your talent lies.
It's crucial to choose projects you are passionate about and willing to fight for. Not every project requires intense negotiations. When in doubt, consult a professional and don’t hesitate to ask questions if something doesn’t make sense.
- Can you discuss the long-term benefits for filmmakers in maintaining ownership of their IP rights, and how this can impact their career and financial success?
Continued credit - When you maintain ownership or part ownership of IP you get the advantages of always being associated with the product especially if it does well. This association with the creation can be bragging rights when you want to tap into New Opportunities.
New Opportunities - Engaging with someone new or pitching to someone who doesn’t know you can sometimes be daunting but being associated with a successful project can enhance your reputation and provide bragging rights when seeking new opportunities.
Earning Ability is open - When you retain IP to your work, it opens up the possibility of earning in future if the work is sold and any money spent to make it has been re-couped. While there is no guarantee that every project will make a profit- it is good to keep the door open.
Passion - Knowing you have a stake in a project can fuel your passion and commitment, often leading to higher-quality work.
3. What legal provisions or frameworks exist within the East African film industry that filmmakers can leverage to protect their IP rights, and how can they best utilize these resources?
Once a creative piece of work/idea has been reduced into writing or recorded, the IP in the work is automatic. Copyright protection is vested in the work once it is in a concrete form without need for registration. You only need to register the work for copyright protection when you want to leverage the ownership i.e. as part of your business assets and definitely necessary if someone infringes on your work and you need to use the registration certificate as evidence.
The Kenya Copyright Board has established a national rights registry which is an online platform that acts as a central repository with details of ownership of different copyright works. The portal is used by copyright holders of music, video, spoken word and literary works allowing them to register their work.
You can easily submit your work for protection by logging in and following the prompts at nrr.copyright.go.ke
4. How can filmmakers negotiate to retain IP rights when working on 'work for hire'/commissioned projects in the East African film industry?'
Work for hire' agreements can be tricky for retaining IP rights. If you're already being paid for your expertise, you need to demonstrate additional value to justify retaining any IP rights. It’s important to show why your continued involvement and ownership benefit the project.
5. How can filmmakers effectively balance the commercial demands of commissioners with their own need to retain IP rights, and what compromises or solutions have proven successful?
When going into a commercial transaction where the commissioning agent is paying to have you deliver a final product, you have to make a business decision about where that project will take you in your career trajectory. Is it a stepping stone to be able to do more independent work or do you already have a portfolio of work and reputation that can sell itself?
Avoid submitting passion projects for funding where you’ll be commissioned, as you might not be able to retain any IP. Instead, consider pre-licensing deals or co-production agreements, which offer more flexibility in negotiating IP rights.
Balancing these demands involves understanding what you’re willing to trade for experience, exposure, and career growth.
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