difference between assignment and licensing of copyright

Copyright Licenses and Assignments

One of the primary benefits of copyright ownership is the ability to transfer some or all of those rights to third parties. These transfers can be for all of the copyright rights in a work (which is generally referred to as an outright assignment), or can be for a limited portion of the rights provided by the Copyright Act (which usually takes the form a copyright license).

The BitLaw discussion of assignments and licenses is divided into the following four sections:

• transfers in general
• implied licenses
• termination of transfers
• recordation of transfers

Transfers in General

Copyright is a personal property right, and it is subject to various state laws and regulations that govern the ownership, inheritance, or transfer of personal property. It is probably best to view copyright as a bundle of rights. The rights included in that bundle are the rights granted by the U.S. Copyright Act, as described in the BitLaw discussion on the scope of copyright protection . Any or all of these rights, or any subdivision of those rights, may be transferred.

A transfer of one of these rights may be made on an exclusive or nonexclusive basis. The transfer of exclusive rights is not valid unless that transfer is in writing and signed by the owner of the rights conveyed. Transfer of a right on a nonexclusive basis does not require a written agreement. For example, the author of a novel, as the original copyright owner of the novel, could transfer to a publisher the exclusive right to copy and distribute a novel (under the right of reproduction and distribution ), and also grant a screen play writer the nonexclusive right to create a movie script based on that novel (under the right to create derivative works ). The author's agreement with the publisher would have to be in writing to be valid. However, the agreement with the screen play writer could be oral and still be enforceable.

A transfer of copyright rights is usually either an assignment or a license. An assignment of copyright rights is like the sale of personal property. The original owner sells its rights to a third party, and can no longer exercise control over how the third party uses those rights. A license (or more properly "an express license") is an agreement where the copyright owner maintains its ownership of the rights involved, but allows a third party to exercise some or all of those rights without fear of a copyright infringement suit. A license will be preferred over an assignment of rights where the copyright holder wishes to maintain some ownership over the rights, or wishes to exercise continuing control over how the third party uses the copyright holder's rights.

A typical software license agreement is a copyright license agreement. The owner of the copyright in the software wishes to grant the end-user the right to utilize the software in a restricted manner. In return, the end-user may agree to limit its use of the software in a variety of ways and to pay a license fee payment to the copyright owner.

Implied Licenses

An implied copyright license is a license created by law in the absence of an actual agreement between the parties. Implied licenses arise when the conduct of the parties indicates that some license is to be extended between the copyright owner and the licensee, but the parties themselves did not bother to create a license. This differs from an express license in that the parties never actually agree on the specific terms of the license. The purpose of an implied license is to allow the licensee (the party who licenses the work from the copyright owner) some right to use the copyrighted work, but only to the extent that the copyright owner would have allowed had the parties negotiated an agreement. Generally, the custom and practice of the community are used to determine the scope of the implied license.

Implied licenses have been used to grant licenses in situations where a copyrighted work was created by one party at the request of another. In one case, a special effects company was hired to create a specific effect for a horror movie. The contract through which the special effects company was hired did not assign the copyright in the effect, and did not provide for a license for the effect to be used in the horror movie. The court ruled that the effect could be used in the horror movie through an implied license, since the effect was created with the intent that it be used and distributed in the movie.

A commonly discussed scenario where implied licenses are destined to play a major role is on the World Wide Web. When a Web page is viewed in a Web browser, the page is downloaded through the Internet and placed on the user's screen. It is clear that a copy of the Web page is being made by the user. It is also clear that the Web page is protected against unauthorized copying by copyright law. But it would not make sense to allow the author of a Web page to sue a user who viewed her page, since the author intended that the page be viewed by others when she placed it on the World Wide Web. Rather, attorneys argue, courts should find that the Web page author has given end users an implied license to download and view the Web page. The extent of this implied license is unclear, and may someday be defined by the courts.

Termination of Transfers

Although a copyright owner is free to transfer her copyright rights as she sees fit, the Copyright Act contains a non-revocable right for a copyright owner to terminate any copyright transfer. The purpose for this is to give the creator of the work or the creator's heirs a second chance to exploit the work in situations where the value of the work may have been significantly enhanced since the original transfer. Generally, there is a five year window of time to accomplish the termination beginning either at

• 35 years from the assignment if the transfer was made on or after January 1, 1978; or
• 56 years from the date copyright was originally secured if the transfer was made before January 1, 1978.

The ability to terminate a transfer cannot be negotiated away. Thus, the author of a valuable book has the right to reclaim the copyright in the book by terminating the transfer, even if the agreement signed by the author stated that the assignment of her copyright rights was permanent and irrevocable. Exceptions to this ability to terminate a transfer are made for those parties who created derivative works prior to the termination (see the BitLaw discussion on derivative works for more information on this subject). In addition, works made for hire are not subject to this termination of transfer right (works made for hire are discussed in the BitLaw section on copyright ownership ).

Recordation of Transfers

A document that transfers copyright ownership or any other document pertaining to a copyright may be recorded in the Copyright Office. Although recordation is not required to make a valid transfer of a copyright, recordation of the transfer document does provide certain legal advantages and may be required to validate the transfer as against third parties.

The Difference Between Copyright Assignments and Licenses

The Difference Between Copyright Assignments And Licenses

There are two ways that a copyright owner can transfer some or all of his or her copyright rights: through a license or an assignment.

In an assignment of copyright rights, the owner sells his or her ownership rights to another party and has no control over how the third party uses those rights. A copyright assignment is sometimes referred to as a sales agreement for copyright.

The buyer (assignee) can then use the copyrighted work or do whatever he or she wants with it. He or she all of the assigned rights that the original owner had.

A valid assignment of copyright must be in writing and signed by, or on behalf of, the copyright owner/assignor. The subject of the assignment must be clear as to what copyright is being assigned in which work(s).

In a license of copyright rights, the owner maintains his or her copyright ownership rights, but allows another party (the licensee) to exercise some of those rights without the licensee’s actions being considered copyright infringement. A license is often preferred over an assignment when the copyright holder wishes to maintain and exercise some ownership control over the rights and how the licensee uses the copyright holder’s rights.

For example, a typical software license agreement is a copyright license agreement. The software copyright owner grants the user/licensee the right to use the software in a specified, restricted manner. In return, the user/licensee may agree to limit his or her use of the software in various ways and to pay the copyright owner a license fee.

Unlike a copyright assignment, a copyright license does not have to be in a signed writing. A license can be oral or arise by implication when considering all of the facts and circumstances surrounding the transaction between the copyright owner and the purported licensee.

If you own a copyright in a work that you are thinking about assigning, you should consider whether to license your copyright instead, thus allowing you to retain ownership, and license only certain rights to the other party.

For additional information about the difference between copyright assignments and license, please  contact us .

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Assignment of Copyrights & Legal Implications

Copyright gives authors a bundle of personal property or economic rights in an original work of authorship. These rights include the rights to reproduce, create derivative works, distribute work to the public, publicly perform a work, publicly display visual works, and digitally transmit sound records. They belong exclusively to a copyright holder.

Usually, the copyright holder is the person who created the work. However, any of these economic rights, or any part of these economic rights, can be transferred. Under the Visual Artists Rights Act (VARA), an artist’s moral rights in a work of fine art can be waived but not assigned.

An original owner who assigns their copyright to someone else will not retain any right to control how the work is used.

The transfer of economic rights may be on an exclusive basis, which requires a written agreement, or a non-exclusive basis, which does not require a written agreement. Most commonly, this transfer is accomplished by assignment or license. Unlike a license in which the copyright owner maintains their ownership, an assignment is similar to a sale. The original copyright owner sells the rights to a third party and cannot control how the rights are used, just as they would not be able to control how personal property that they sold was used once it was transferred.

Generally, a license is preferable if a copyright holder expects to continue exercising interests and control over the work. For example, if you assign your copyright in a song to a music producer, the decision about whether to allow a film studio to use your song in a film will belong to the producer, not to you. If you license your copyright in a song in a limited capacity to a music producer, however, you will continue to be able to license your copyright in the song to a film producer.

Assignments can be used for many different purposes, such as security for debt, as an asset passed to heirs, or as part of the distribution of assets after a bankruptcy proceeding. Once you assign your rights to somebody else, however, you are permanently giving away your right to control the work. That means if you try to exercise any of the rights you have assigned, you are committing copyright infringement even though you created the work. If you assign your copyright to somebody else and regret the loss, you may be able to buy your copyright back from that person, but whether or not to sell it back to you is up to the assignee.

How Is Copyright Assigned?

Under Section 204 , a transfer of ownership is only valid if the instrument, note, or memorandum of transfer is in writing, signed by the copyright owner or their duly authorized agent. Generally, a certificate of acknowledgment is not required for the transfer to be valid, but it can be used as prima facie evidence that a transfer was executed if it is issued by someone authorized to administer oaths in the United States or, if the transfer is executed abroad, if the certificate is issued by a United States diplomatic or consular official, or a person authorized to administer oaths who also provides a certificate.

Formally recording an assignment with the Copyright Office is not required but can be advantageous.

You do not have to record an assignment in order to assign the interest. However, there are advantages to recording the assignment, such as creating a public record of the transfer details, giving constructive notice to members of the public, establishing priority of rights when there are conflicting transfers of ownership, validating the transfer of the copyright against a third party, or in some cases perfecting a security interest.

Last reviewed October 2023

Intellectual Property Law Center Contents   

• Intellectual Property Law Center
• Copyright Infringement & Related Lawsuits
• Copyright Ownership Under the Law
• Assignment of Copyrights & Legal Implications
• Copyright Licensing Under the Law
• Copyright Registration Under the Law
• Safe Harbors for Online Service Providers Under Copyright Law
• Criminal Copyright Infringement Laws
• Enforcement of Copyrights Through Lawsuits & Criminal Charges
• Fair Use Defense to Copyright Infringement Lawsuits
• Software Development Agreements & Related Legal Concerns
• End-User License Agreements Imposing Legal Restrictions on Software
• Lists, Directories, and Databases Under Copyright Law
• Photos of Buildings and Architecture Under Copyright Law
• Photos of Copyrighted or Trademarked Works & the Fair Use Defense to Infringement Lawsuits
• Works in the Public Domain After Copyrights Legally Expire
• Copyrights and Credits for Songwriters Under the Law
• Music Samples and Copyright Infringement Lawsuits
• Playing Music in Stores or Restaurants — How to Avoid Copyright Infringement Lawsuits
• Consignment Sales by Artists to Stores & Legal Protections
• Destruction of Copyrighted Works & Limited Legal Protections
• Copyright Legal Forms
• Trademark Law
• Trade Secret Law
• Choosing Among Patent, Copyright, and Trademark for Legal Protection
• Intellectual Property Law FAQs
• Find an Intellectual Property Lawyer

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The Difference Between Assignment and License of Copyright

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The Difference Between a License & Right of Entry

How to obtain a clothing store license, kinds of copyrights.

• Punishment for Violating Copyright Laws
• How to Move an Office 2007 License to Another Computer

A copyright is an ownership interest in a creative work that gives the owner exclusive rights to use the work. A small business interested in using an image or a piece of music in its advertising, for example, will need to acquire the rights to those works either by buying them completely and getting an assignment, or by purchasing a license to use the works for a specific purpose.

Assignments

An assignment is a permanent transfer of one or all of the copyright rights, similar to the sale of personal property. Assignments are normally more expensive because the purchaser has total ownership and can resell or license the works themselves.

A license is a temporary or limited transfer of certain copyright rights. It can be made on an exclusive or non-exclusive basis, meaning the copyright owner can license the work to more than one person at the same time. As a result, licenses are more economical ways for small businesses to use copyrighted content.

• United States Copyright Office Circular #1

Kevin Doran has been a writer and editor since 2009 whose work has been published in the "Southwestern Journal of International Law." He received a BA in Classics from USC and a JD from Southwestern Law School and is currently pursuing an MA in History at Western New Mexico University.

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Copyright assignment and licensing

Published by a lexisnexis ip expert.

Copyright is a property right and may be transferred by assignment, testamentary disposition or by the requirements of law such as on bankruptcy . The benefit of the right can also be licensed to third parties by the owner.

Ownership of copyright and ownership of the physical subject matter of the copyright works are separate. For example, a sculpture may be enjoyed and admired by the purchaser but it is unlikely that the copyright in terms of the right to reproduce the work will have been transferred at point of sale. If someone wishes to make a copy of the sculpture or otherwise exploit the work, then this has to be expressly or impliedly authorised by the owner of the copyright by the granting of an assignment or licence.

Transferring ownership by assignment

Copyright notices are published by the Intellectual Property Office to help explain specific areas of copyright in the UK. For a simple guide to assignment of copyright, aimed at small businesses and individuals who may wish to assign their own copyright to another person or have been asked

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Related legal acts:

• Copyright, Designs and Patents Act 1988 (1988 c 48)

Key definition:

Copyright definition, what does copyright mean.

Any property right over certain creative works, which grants exclusive right to the owner.

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Assignment and Licensing of Copyrights under Copyrights Act

• Intellectual Property Rights Subject-wise Law Notes
• January 8, 2021

Introduction

IP is an intellectual work which is produced by intellectual human brain. For e.g. literary work, musical work, inventions, etc. it is an intangible property. It is described as property because it is capable of sale, purchase, mortgage, etc. the owner if IP has rights over his intangible property. No one can make use of IP without the consent of the owner. IP is made to protect their rights and the infringement.

Copyright is a protection given to the creators of certain types of works as an acknowledgment to their intellectual input [1] . The objective of copyright has always been the protection of the interest of a creator, coupled with dissemination of knowledge. Though this protection started with the recognition of rights of authors in their books, but modern technology has substantially changed the nature of work and its mode of exploitation.

Economic rights allow an owner to reap economic benefits from his intellectual creations. According to section 14 of the Copyright Act, 1957, different rights are recognised with respect to the nature of the work. As per this section, it is the exclusive right of the owner to do or authorise the doing of the acts provided thereunder.

Today copyright includes a variety of industries like: the information industry and the entertainment industry and industrial design.

Assignment of Copyrights : Section 18 of Copyrights Act

The owner of the copyright of a work has the right to assign his copyright to any other person. The effect of assignment is that the assignee becomes entitled to all the rights related to the copyright to the assigned work. [2] However, mere grant of right to publish and sell the copyrighted work amounts to publishing right and not assignment of copyright.

Where the assignee of a copyright becomes entitled to any right comprised in the copyright, he shall be treated as the owner of the copyright in respect of those rights. The assignor shall also be treated as the owner of copyright with respect to unassigned rights. The legal representatives of the assignee shall be entitled to the benefits of assignment, if the assignee dies before the work comes into existence.

In  Video Master v. Nishi  Production [3] , the Bombay High Court considered the issue whether assignment of video rights would include the right of satellite broadcast as well. The Court agreed with the contentions of defendant that there were different modes of communication to the public such as terrestrial television broadcasting (Doordarshan), satellite broadcasting and video TV. The owner of the film had separate copyright in all those modes, and he could assign it to different persons. Thus, satellite broadcast copyright of film was a separate right of the owner of the film and the video copyright assigned to the plaintiff would not include this.

Mode of Assignment: Section 18 of Copyrights Act

As per section 19, assignment of copyright is valid only if it is in writing and signed by the assignor or his duly authorized agent. The assignment of a copyright in a work should identify the work and specify kind of rights assigned and the duration and territorial extent of such assignment. Further, it should specify the amount of royalty payable, if any, to the author or his legal heirs during the continuance of assignment and the assignment will be subject to revision, extension or termination on terms mutually agreed upon by the parties.

If the period of assignment is not mentioned it will be deemed to be taken as five years from the date of assignment. If the territorial extent of such assignment is not stipulated, it will be taken as applicable in whole of India.

Also, Section 19(8) contemplates that the assignment of copyright work against the terms and conditions on which rights have been assigned to a particular copyright society where the author of the work is a member shall be void. Further, Section 19(9) and section 19(10) opine that the assignment of copyright for making cinematograph film or sound recording shall not affect the right of the author to claim an equal share of the royalties and consideration payable with respect to use of his protected work.

In  Saregama India Ltd v. Suresh  Jindal [4] , it was held that the owner of the copyright in a future work may assign the copyright to any person either wholly or partially for the whole of the copyright or any part thereof and once the assignment is made the assignee for the purpose of this Act is treated as the owner of the copyright.

Licensing of Copyright

The owner of copyright may grant a license to do any of the act in respect of which he has an exclusive right to do. The license can be classified into following categories:

Voluntary license: : Section 18 of Copyrights Act

The author or the copyright owner has exclusive rights in his creative work and he alone has right to grant license with respect to such work. According to section 30 of the Copyright Act 1957, the owner of the copyright in a work may grant any interest in his copyright to any person by license in writing, which is to be signed by him or by his duly authorised agent. A license can be granted not only in existing work but also in respect of the future work, in this situation assignment shall come into force when such future work comes into existence. Where a licensee of the copyright in a future work dies before such work comes into existence, his legal representatives shall be entitled to the benefit of the license if there is no provision to contrary.

The mode of license is like an assignment deed, with necessary adaptations and modifications in section 19 (section 30A). Therefore, like an assignment, a license deed in relation to a work should comprise of following particulars:

• Duration of license
• The rights which have been licensed
• Territorial extent of the licensed
• The quantum of royalty payable
• Terms regarding revision
• Extension and termination

Voluntary licenses can be:

Exclusive –  The term exclusive license has been defined in Section 2(j) as a license which confers on the licensee and persons authorized by him, to the exclusion of all other persons, any right comprised in the copyright work.

Non-exclusive  – It does not confer right of exclusion. It is mere grant of an authority to do a particular thing which otherwise would have constituted an infringement. When owner grants an exclusive right, he denudes himself of all rights and retains no claim on the economic rights so transferred.

Co-exclusive –  Here the licensor grants a license to more than one licensee but agrees that it will only grant licences to a limited group of other licensees.

Sole license  – Where only the licensor and the licensee can use it to the exclusion of any other third party.

Implied license –  Author impliedly allows or permits the use of his work. For example, he had knowledge that someone is using his work but he did not take any action.

Compulsory Licenses

 Compulsory and statutory licenses can impact both the identity of the licensee who the owner chooses to deal with and the terms, including rates of royalty, that the owner may stipulate for such dealing. Viewed from this perspective, compulsory licenses are less of an infraction on owner autonomy, on both these counts. The owner does retain a fair bit of autonomy to enter into appropriate licensing arrangements with those who he may deem fit, and he is also permitted to negotiate on the terms of the license within the zone of reasonableness. Normally, it is an unreasonable refusal to deal with a person that gives rise to a compulsory license. This brings us to the third important distinction between a compulsory and statutory license. The former is always granted upon specific application by an individual to the competent authority. The latter, on the other hand, is a blanket fixation of rates of royalty by the authority and a grant of standardised licenses to all those who are interested in availing the same. The owner, as a necessary corollary, has no autonomy on the identity of those who obtain the license, or what they pay as royalty for the same.

 Categories of Compulsory Licenses

There are five main categories of compulsory licenses currently operating in India.

 These are:

1. Licenses in respect of works unreasonably withheld from the public;

 2. Licenses in respect of orphan works;

 3. Licenses in respect of works for the differently abled;

 4. Licenses in respect of translations;

5. Licenses in respect of reproduction and sale of works unavailable in India.

Statutory Licenses

 As seen from the above discussion of compulsory licenses, such licenses can be understood as a particularised expropriation of owner autonomy in respect of the copyrighted work. The need for such expropriation arises only upon acts or inaction on the part of the owner that render the work unavailable to the public or differently abled persons. Statutory licenses, on the other hand, do not require any examination into the conduct of the owner. It attempts a wholesale expropriation of owner autonomy, once the work fits within the broader class of works that can be so licensed.

There are two such categories of statutory licenses, namely cover version recording licenses (Section 31C) and broadcasting licenses (Section 31D).

 The first has existed, though as part of the fair dealing exceptions in Section 52, from the very beginning. The second is a very recent addition to the Act vide the 2012 amendment.

The term ‘assignment’ and ‘license’ are not interchangeable. An assignment is different from a license. Generally, in absence of any provision to the contrary the assignee becomes the owner of the assigned work, whereas in case of a license the licensee gets the right to exercise particular rights only.

An assignment may be general, i.e. without limitation or an assignment may be subject to limitations. It may be for the whole term of copyright or any part thereof. An assignment transfers an interest in and deals with copyright itself as provided under section 14 of the Act, but license does not convey the copyright but only grants a right to do something, which in absence of license would be unlawful. An assignment transfers title in copyright, a license merely permits certain things to be done by licensee. The assignee being invested with the title in the copyright may reassign [5] .

[1] This is known as the ‘Doctrine of Sweat of the Brow’, whereby a work is given copyright protection if the author has applied ‘labour, skill or judgment’ in creating the work irrespective of the level of originality in the work. Evolved from the decision in Ladbroke v William Hill, [1964] 1 All E.R. 465.

[2] Section 18(2); Copyright Act, 1957.

[3] 23 IPLR 388 (1998).

[4] 2007 (34) PTC 522 (Cal).

[5] Deshmukh & co (publishers) pvt ltd v/s avinash vishnu khadekar 2006 (32) PTC 358 (Bom)

Author Name: Muskaan Mathur [Student, Savitribai Phule, Pune University (SPPU)]

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Licensing v. Assignment

Contributor

Indian law provides intellectual property protection in the form of copyright to the creators of original works of authorship such as literary works (including computer programs, compilations and tables including computer databases which may be stated in codes, words, schemes or even in any other form, including a machine-readable medium), musical, dramatic and artistic works, sound recordings and cinematographic films.

The owner of copyright work can generate monetary profits not only by taking advantage of it himself but also by co-sharing it with others for mutual benefits. This can be done by way of licensing or assignment of copyright. For example, a small business interested in using a copyrighted work in its advertising will need to acquire the rights to that works either by buying them completely and getting an assignment or by buying a license to use the works for a particular purpose.

What is an assignment agreement?

As assignment agreement is a contractual agreement that assigns or transfers intellectual property rights from one person or entity to another. It is also a legal record that verifies the transfer of ownership of intellectual property rights. There are two parties in every assignment agreement, one party is the giving party i.e. assignor and the other is the receiving party i.e. the assignee.

It is the right of the owner of the copyrighted work to assign his copyright to any other person. The effect of the assignment is that the assignee becomes entitled to all the rights related to the copyright to the assigned work. Where the assignee of copyright becomes entitled to any right comprised in the copyright, he shall be treated as the owner of the copyright in respect of those rights. The assignor shall also be treated as the owner of the copyright for unassigned rights. If the assignee dies before the work comes into existence then the legal representatives of the assignee shall be entitled to the benefits of the assignment.

The Bombay High Court in  Video Master v. Nishi Production  considered the issue whether the assignment of video rights would include the right of satellite broadcast as well. The Court agreed with the contentions of the defendant that there were different modes of communication to the public such as terrestrial television broadcasting (Doordarshan), satellite broadcasting and video TV. The owner of the film had separate copyright in all those modes, and he could assign it to different persons. Thus, satellite broadcast copyright of film was a separate right of the owner of the film and the video copyright assigned to the plaintiff would not include this.

Mode of Assignment (Section 19)

Section 19 of the Act states that the assignment of copyright is valid only if it is in writing and signed by the assignor or his duly authorized agent. In assigning the copyright of a work, it should identify the work and the duration and specify kind of rights assigned and territorial extent of such assignment. Additionally, it should specify the amount of royalty payable, to the author or his legal heirs, if any, during the continuance of assignment and the assignment will be subject to revision, termination or extension on terms mutually accepted by the parties.

If the period of assignment is not mentioned in the agreement then it will be deemed to be taken as five years from the date of assignment. If the territorial extent of such assignment is also not stipulated in the agreement, it will be taken as applicable in whole of India.

In  Saregama India Ltd v. Suresh  Jindal, it was held that according to the provisions of this act, the owner of the copyright in a future work may assign the copyright to any person either wholly or partially for the whole of the copyright or any part thereof. If an assignment is made to the assignee then he is treated as the owner of that copyright.

What is a license agreement?

A license agreement is a contractual agreement that authorizes or licenses another person or entity to use the rights of a protected IP. A license is nothing but a contract that certifies the shared use of IP rights. There are two parties in a licensing agreement. The party that gives the license is called the licensor and the party who receives it is the licensee. The copyright owner also has the right to license the work to more than one person at the same time, meaning it can be granted on an exclusive or a non-exclusive basis. As a result of which licenses are more economical ways for small businesses to use copyrighted content. The conditions essential for grant of such a License are as follows:

(a) The work must have been performed or published in public.

(b) The author must have refused to allow the performance of the work in public or must have refused to allow the republication of the work and because of which the work is held back from the public;

(c) The author must have denied communication of a work to the public by broadcast on terms which the complainant considers reasonable.

Types of Copyright Licensing Agreement

• Voluntary License
• Compulsory licensing

The term 'assignment' and 'license' cannot be interchanged. A license is different from an agreement. Generally, in absence of any provision to the contrary, the assignee becomes the owner of the assigned work, whereas in case of a license the licensee gets the right to exercise particular rights only.

An assignment may be subject to limitations. It may be for the whole term of the copyright or it can be for any particular part. An assignment transfers an interest and deals with copyright. However, the license does not convey the copyright but only grants a right to do something, which in the absence of license would be unlawful. An assignment transfers title in copyright, a license merely permits certain things to be done by the licensee. The assignee being invested with the title in the copyright may reassign.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Intellectual Property

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Copyright and licensing

Copyright is a type of intellectual property, aiming to protect creative works. Academic articles are protected by copyright, and authors can decide how their work may be used, published or shared by readers and other researchers. When publishing via open access, authors can either retain copyright in their work and license it, or transfer copyright or commercial rights to a publisher. Open access journals are ideally placed to raise awareness of licensing options and to encourage authors to apply permissive licensing terms.

Copyright gives its owner the exclusive right to copy, distribute, adapt, display and perform a creative work, usually for a limited time. In the context of academic publishing, copyright is an essential concept, as it has long underpinned the traditional subscription model: in this case, publishers own the copyright of published work and are able to sell it via subscriptions or on a per-article basis. In recent years, the move to open access has challenged this approach, introducing decision points for journals and authors alike and a breadth of new business models ( see Flipping a journal to open access ).

The difference between subscription and open access journals

In the case of subscription journals, authors have two mechanisms to transfer copyright to their chosen publisher. The first option is called copyright assignment and consists in signing a contract that transfers the copyright from the author to the publisher (which may also be a learned society). The second option is to grant the publisher an exclusive licence to publish, whereby the author would retain copyright but give the publisher exclusive rights to publish and disseminate the work. In both cases, the publisher will handle reuse requests on the author’s behalf and protect the article by taking action if copyright is infringed or in cases of plagiarism.

When choosing to publish via open access, two possibilities exist. 

• Authors who keep their copyright choose a license and give the publisher the right of first publication. In this case, the authors will not be subject to the terms of the license chosen. Most frequently, journals opt to offer Creative Commons licences , which benefit from simplicity, standardisation and broad usage across scholarly communication. 
• When authors transfer their copyright or their commercial rights, the publisher can choose a license which will also apply to the authors themselves. For example, if the publisher has chosen to publish using a CC-BY-NC license, the authors can no longer use their own work commercially.

Helping authors choose the right licence

Picking a licence is not easy, as awareness of the implications of licensing decisions on reuse rights is limited. Open access journals are ideally placed to raise awareness on this topic, as authors are asked to choose what licence to apply to their work as part of the publication workflow. Journals can provide guidance on their websites, too, and encourage submitting authors to use the Creative Commons License Chooser to identify the most permissive licensing terms that they are comfortable with.

Importantly, journals and authors alike should be aware that permissive licensing and open access publication are never compatible with statements such as ‘All rights reserved’. By definition, the application of a permissive licence waives some rights (depending on the licence), which makes an ‘All rights reserved’ statement meaningless and not enforceable. Creative Commons describe their own licences as “ Some rights reserved ”, as authors are given a spectrum of choices between retaining all rights and relinquishing all rights (public domain).

Fair use is a crucial aspect of copyright law that allows for limited use of copyrighted material without requiring permission from the rights holder. This legal doctrine serves to promote creativity, innovation and public interest by providing a balance between the rights of creators and the needs of users. Fair use often applies in cases of criticism, commentary, news reporting, teaching, scholarship and research. To determine whether a particular use qualifies as fair, courts generally consider four factors: the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used, and the potential impact on the market for the original work.

Notably, fair use does not apply to the reuse of open access materials. However, the inclusion of copyrighted contents as part of a published open access article may require authors and journals to be aware of this mechanism.

• Wikipedia. (2023, May 02). Copyright.
• Creative commons. (n.d.). About CC licences.
• Creative commons. (n.d.). Choose a Licence.
• Creative commons. (n.d.). Frequently Asked Questions.
• Wikipedia. (2023, May 12). Fair use.
• Copyright alliance. (n.d.). What Is Fair Use?.
• DOAJ. (2018). Copyright and Licensing – Part 4.
• Simon Fraser University. The Intellectual Property Issues in Cultural Heritage (IPinCH). (n.d.). Traditional Knowledge Licensing and Labeling Website 1.0.
• Taylor and Francis. (n.d.). Understanding copyright for Journal authors.

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Twinkle Madaan

Assignment And Licensing Of Copyrights

Coverage of this Article

Key takeaways.

-The owner of a work's copyright has the ability to assign his copyright to anyone else. As a result of the assignment, the assignee acquires all rights relating to the copyright of the assigned work.

Introduction

-Copyright is legal protection granted to creators of certain types of works in recognition of their intellectual contribution.

Assignment of Copyrights (Section 18)

-The owner of a work's copyright has the ability to assign his copyright to anyone else.

Mode of Assignment (Section 19)

-According to section 19, a copyright assignment is only legal if it is made in writing and signed by the assignor or his lawfully authorized representative.

Disputes with Respect to Assignment of Copyright (Section 19a)

-According to Section 19(a), if the assignee fails to make sufficient use of the rights assigned to him and such failure is not attributable to any act or omission of the assignor, the Appellate Board may revoke the assignment after receiving a complaint from the assignor and conducting such inquiry as it deems necessary.

Assignment by Operation of Law (Section 20)

-If the owner of the copyright dies without leaving a will, the copyright will pass to his personal representative as part of his estate.

Licensing of Copyright

-The owner of a copyright may give a license to perform any of the acts over which he has sole authority.

Section 18 of the Copyrights Act defines a: Voluntary Licence

-The author or copyright owner has exclusive rights to his or her creative work, and he or she is the only one who may grant a license for it.

Compulsory license

-Compulsory and statutory licenses can affect the identification of the licensee with whom the owner chooses to do business, as well as the terms, including royalty rates, that the owner may establish.

Statutory license

-Statutory licenses, on the other hand, do not necessitate any investigation into the owner's behavior

-The terms "assignment" and "licensing" are not synonymous. A license is not the same as an assignment.

• The owner of a work's copyright has the ability to assign his copyright to anyone else. As a result of the assignment, the assignee acquires all rights relating to the copyright of the assigned work.
• If the assignment period is not specified, it will be assumed to be five years from the date of assignment.
• In the event of a dispute over the assignment of copyright, the Appellate Board may issue a proper order after receiving a complaint from the aggrieved party and conducting any investigation it deems necessary, including an order for the recovery of any royalties due.
• The owner of the copyright may also give a license to perform any of the acts over which he has sole authority.

Copyright is legal protection granted to creators of certain types of works in recognition of their intellectual contribution. The purpose of copyright has always been to safeguard a creator's interests while also disseminating knowledge. Though this protection began with the acknowledgment of authors' rights in their writings, contemporary technology has fundamentally altered the nature of work and the means by which it is exploited. An owner's economic rights allow him to profit financially from his intellectual contributions.

Different rights are recognized depending on the nature of the work, according to Section 14 of the Copyright Act of 1957. According to this provision, the owner has the exclusive authority to perform or authorize the performance of the activities listed.

• The owner of a work's copyright has the ability to assign his copyright to anyone else. As a result of the assignment, the assignee acquires all rights relating to the copyright of the assigned work. The mere grant of the right to publish and sell the copyrighted work, on the other hand, is a grant of publishing rights rather than a copyright assignment.
• When an assignee of copyright becomes entitled to any of the copyright's rights, he is treated as the copyright's owner in respect of those rights. In the case of unassigned rights, the assignor is also considered the copyright owner. If the assignee dies before the task is completed, the legal representatives of the assignee are entitled to the assignment benefits.
• In Video Master v. Nishi Production, the Bombay High Court reviewed whether a video rights assignment would include the right to broadcast through satellite as well. The Court agreed with the defendant's assertions that there were various channels of public communication, including terrestrial television transmission (Doordarshan), satellite broadcasting, and video television. In all of those modalities, the film's owner owned distinct copyright, which he might assign to multiple people.
• As a result, the satellite broadcast copyright of a film was a separate right of the film's owner, and the plaintiff's video copyright did not include it.
• According to section 19, a copyright assignment is only legal if it is made in writing and signed by the assignor or his lawfully authorized representative. The assignment of a copyright in a work should identify the work and specify the type of rights given, as well as the assignment's duration and territorial scope. It should also include the amount of royalty payable, if any, to the author or his legal heirs during the time of the assignment, as well as the fact that the assignment may be revised, extended, or terminated on mutually agreed-upon terms.
• If the assignment period is not specified, it will be assumed to be five years from the date of assignment. If the territorial scope of the assignment is not specified, it will be interpreted to apply to the entire country of India.
• Section 19(8) also states that copyright work assigned in violation of the terms and conditions under which rights have been assigned to a particular copyright organization where the author of the work is a member is void.
• In addition, Sections 19(9) and 19(10) state that the assignment of copyright for the purpose of making a cinematograph film or sound recording does not affect the author's entitlement to an equal part of the royalties and consideration due for the use of his protected work.
• It was held in Saregama India Ltd v. Suresh Jindal that the owner of the copyright in a future work may assign the copyright to any person for the whole or part of the copyright and that once the assignment is made, the assignee is treated as the owner of the copyright for the purposes of this Act.
• According to Section 19(a), if the assignee fails to make sufficient use of the rights assigned to him and such failure is not attributable to any act or omission of the assignor, the Appellate Board may revoke the assignment after receiving a complaint from the assignor and conducting such inquiry as it deems necessary.

If the owner of the copyright dies without leaving a will, the copyright will pass to his personal representative as part of his estate. Section 20 states that if a person is entitled to copyright under bequest and the work has not been published before the testator's death unless the testator's will or any codicil thereto expressly states otherwise, such person is considered to have copyright in the work to the extent that the testator was the owner of copyright immediately before his death.

The owner of a copyright may give a license to perform any of the acts over which he has sole authority. The following are the different types of licenses:

• The author or copyright owner has exclusive rights to his or her creative work, and he or she is the only one who may grant a license for it.
• The owner of the copyright in a work may give any interest in his copyright to any person by license in writing, which must be signed by him or his duly authorized representative, according to Section 30 of the Copyright Act 1957.
• A license can be issued not only for existing work but also for future work; in this case, the assignment will take effect when the future work is completed. If there is no stipulation to the contrary, a licensee of the copyright in a future work who dies before that work comes into existence will be entitled to the benefit of the license.
• The license mode is similar to an assignment deed, with section 19 providing the appropriate changes and alterations (section 30A). As a result, just like an assignment, a licensing deed for a work should include the following information:
• Duration of license
• The rights which have been licensed
• Territorial extent of the licensed
• The quantum of royalty payable
• Terms regarding revision
• Extension and termination
• Compulsory and statutory licenses can affect the identification of the licensee with whom the owner chooses to do business, as well as the terms, including royalty rates, that the owner may establish. Compulsory licenses, when viewed in this light, are less of a violation of owner sovereignty on both grounds.
• The owner does maintain some liberty in terms of entering into proper licensing agreements with those he sees fit, and he is also allowed to negotiate the terms of the license within reason.
• A compulsory license is usually triggered by an unjustified refusal to deal with a person.
• This takes us to the third key difference between a mandatory and statutory license. The former is always granted after an individual makes a specific request to the appropriate authority.
• The latter, on the other hand, is the authority's broad setting of royalty rates and the issuance of standardized licenses to all those who wish to use them. As a necessary corollary, the owner has no control over the identities of persons who receive the license or the amount of royalties they pay.
• Statutory licenses, on the other hand, do not necessitate any investigation into the owner's behavior. Once the work fits into the broader class of works that can be licensed in this way, it tries a wholesale expropriation of owner autonomy.
• Cover version recording licenses (Section 31C) and broadcasting licenses are the two types of statutory licenses (Section 31D).
• The first has existed since the beginning, however as part of the fair dealing exceptions in Section 52. The second is a relatively new addition to the Act, as it was amended in 2012.

The terms "assignment" and "licensing" are not synonymous. A license is not the same as an assignment. In general, unless otherwise stated, the assignee becomes the owner of the assigned work, but in the event of a license, the licensee merely receives the right to exercise specific rights.

An assignment might be broad, i.e. without restrictions, or specific, i.e. with restrictions. It could be for the entire copyright term or just a portion of it. As stipulated by Section 14 of the Act, an assignment transfers an interest in and deals with copyright, whereas a license does not convey the copyright but merely offers permission to do something that would be illegal otherwise. An assignment grants copyright ownership, but a license just allows the licensee to do specified things. The assignee who has been given the copyright title may reassign it.

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What is the difference between a Copyright Assignment and a Copyright Licence?

What is Copyright?

Generally speaking, the creator of an original work is the copyright owner of such work. Therefore, copyright is an automatic right that exists from the moment the author expresses the novel piece of work, whether that’s a book, a piece of classical music, or a complicated piece of coding for software.

A common question that frequently arises in practice is how to generate income or monetise my copyright while still retaining ownership? This is where the distinction between the assignment of copyright and the licence of copyright becomes critical.

What is a Copyright Assignment?

Assignment of copyright essentially means a copyright holder (the assignor) is transferring all its rights to another party (the assignee) usually in return for a fee or perhaps some form of royalty payment.

“Moral Rights” must also be considered in the context of a copyright assignment. Such rights go beyond pure economic considerations and are focused on the often-emotional connection the author has with his piece of work. As such, moral rights will survive a copyright assignment unless such rights are expressly waived as part of the assignment. Moral rights include: the right to attribution; the right to object to derogatory treatment of a work; and the right to object to false attribution.

When a copyright in assigned, the creator of the work no longer owns the work and will not be entitled to use it in the future. For example, if the original creator subsequently uses the copyright material in the future, it will have committed a copyright infringement.

So, what if the creator of the copyright material wishes to generate revenue from its works, but does not want to necessarily give all of its rights away through an assignment? That’s where the concept of licensing comes into play.

To put this concept in basic terms, “copyright” is made up of a bundle of rights. When you grant a license to use your copyright you are essentially retaining most of those rights and granting the licensee a limited form of interest in your copyright. It is not dissimilar to a landlord granting a lease to a tenant. Yes, the tenant can occupy the house, but the landlord still owns the house and the tenant can continue to live in the house so long as it abides by the rules of the lease.

Common forms of licensing

• Exclusive licensing: meaning that the license will not be granted to another licensee.
• Non-Exclusive licensing: meaning that the copyright holder is free to grant a licence to another party.
• Perpetual licensing: meaning the license will be continually available to the licensee, perhaps based on the condition that the licensee continues to pay a support fee. This form of licensing is frequently encountered as part of software licensing agreements.
• Term Licensing: meaning the license will cease to exist after a defined period of time.

Of course, many combinations of the above are possible and many other forms of licensing are possible.

From the copyright holder’s perspective, licensing also allows it to add additional rights to the licensing arrangements. For example, in the software industry, it is common practice for software vendors to include an audit clause allowing it to scan a customer’s IT estate to determine if such customer is in fact respecting the terms of its software licensing .

The main difference between an assignment and a license is who owns the copyright. In an assignment the copyright holder gives up ownership and in a licence, the copyright holder retains it.

Given the confusion concerning assignment and licensing of copyright and given the dramatically different effects of the legal instruments, it’s important that copyright holders are careful when considering generating revenue from their creations. It is possible to assign ownership of your copyright when the intention was to create a simple license to your copyright.

Deciding whether you should have a copyright assignment or a copyright license for your work can be a complicated decision that should be evaluated carefully, with the assistance of a copyright solicitor who can explain your options and write effective and appropriate contracts for you.

If you would like to learn more about any of the issues raises in this article please contact [email protected]

The content of this article is provided for information purposes only and does not constitute legal or other advice.

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Can I Assign or License Copyright?

By Sophie Pemberton Senior Lawyer

Updated on July 5, 2021 Reading time: 5 minutes

This article meets our strict editorial principles. Our lawyers, experienced writers and legally trained editorial team put every effort into ensuring the information published on our website is accurate. We encourage you to seek independent legal advice. Learn more .

How Do I Licence My Copyright?

• How Do I Assign My Copyright? 

Can I Include Restrictions When Licensing or Assigning My Copyright?

What if someone breaches the licence or assignment agreement.

• Key Takeaways 

Frequently Asked Questions

In Australia, copyright ordinarily grants you, as the copyright owner, an exclusive right to the creative expression of your work. If you want to allow others to use or reproduce your copyrighted work, you may decide to license  or assign your copyright for a specific purpose. This article sets out the differences between a copyright licence and a copyright assignment and when you might want to use them. 

If you licence your copyright, you are allowing another person or company to use your copyright, but you are not giving them ownership of your work. A copyright licence should be clearly drafted to set out the terms and conditions of your agreement. It should clearly identify: 

• who the copyright owner is; 
• who you are granting a right to use the copyright work;
• the exact copyright material that the licensee may copy; 
• how the licensee will be able to use the copyright material; and 
• whether there will be a distribution of profits, if the work will produce revenue while being licensed. 

For example, if you want to licence the copyright in part of your website, the licence should include details about: 

• which exact parts of your website you will licence; 
• how long the licence lasts; and 
• where the licensee can reproduce the content.  

A licence for copyright material can often be very detailed, so it is important to have a lawyer specialising in copyright look over the terms including whether any warranties apply. 

There are also different types of licences that are available, including:

• exclusive licences (a licence that only permits the licensee to use the copyright material the licence covers, and also excludes you as the licensor from using the copyright material);
• non-exclusive licences (a licence that allows multiple people to use your material); 
• sole licences (a licence that allows you to use the copyright material at the same time as the licensee); and
• implied licences (in certain circumstances where you permit the use of your copyright material, you may be granting an implied licence; for example, where you have consented to them using your work, but not by way of formal agreement). 

How Do I Assign My Copyright? 

When you assign your copyright, you are effectively transferring your ownership. The person who receives the transfer of the copyright becomes the new owner. You may want to assign your copyright as an individual to your business, to add to your business’ IP portfolio . 

A valid assignment of copyright must be made in writing, usually in the form of a deed or agreement. This agreement should include: 

• what you are assigning; 
• when this assignment will take place; and
• any warranties, including guarantees that you are the sole owner of the copyright and you have the authority and capacity to assign the copyright. 

It is also possible to assign copyright in material that is yet to exist or you are currently creating.

You will often want to include certain limitations or conditions in your licence or assignment agreement, so that you have more control over how others can use your intellectual property . 

For example, you could limit the use of the copyright by:

• geography (e.g. in Australia only);
• a period (e.g. for 12 months only);
• sub-license (e.g. prohibiting the licensee to allow others to use the material);
• the application of the rights (e.g. to publish online only, and not in print); or
• requirements for payment (e.g. flat-fee, periodic fee or on a royalty basis).

If someone uses your work beyond the terms of your agreement, they are doing so without your permission. This is likely to be considered copyright infringement and a breach of your intellectual property rights. 

Where someone has infringed your copyright, you have a number of options. 

For example, you may be entitled to:

• an injunction to stop the licensee or assignee from continuing to use your work; or
• seize the offending material from the licensee or assignee. 

If you believe someone has infringed your copyright, or if you are not sure whether you may be operating outside of the terms of your agreement, it is best to speak to a copyright lawyer to work out what you should do next. 

Key Takeaways 

If you are planning to give permission to another to use your copyright, you will need to enter into a licence agreement. If you would prefer to transfer complete ownership of your copyright work now that you have built up its value, you can enter into an assignment agreement instead. You should write and draft these agreements carefully to give you as much control as you would like. If you have any questions or need assistance drafting an assignment or license agreement, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

Copyright is an automatically created intellectual property right. It exists in your creative works as soon as you create them. 

When you licence your copyrighted work, you allow someone else to use it under certain conditions. When you assign your copyrighted work, you are effectively transferring ownership.

Yes, you can. For example, you can include restrictions on how, where or for how long the other party may use your work.

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• Assigning and Licensing
• About Copyright

Copyright owners may assign or license the rights to their work to others.

Assignment of copyright and licences can include a number of limitations and conditions. These can include limitations on the type of use that can be made of the work, the period of time for which a licence applies and requirements for payment. Whether you are granting or getting a licence (clearance), it is always a good idea to record the details of the licence in writing. It is also a good idea to date the written record of the licence, and have it signed by both the licensor and licensee.

Licence Terms

The document recording a licence would usually include the following:

• who the rightsholder is and your details, including relevant names and contact details — use letterhead if appropriate;
• precisely identify the material to be copied, including which part or parts of the work you want to copy, page numbers, chapter titles, or any artworks included. This avoids confusion later, and allows the rightsholder to quickly identify the work, especially if they control a lot of material (such as a publisher);
• how the material is going to be used, including information such as number of copies made, who they will be distributed to, where they will be distributed (for example, to staff in overseas offices) and whether the work will be distributed free of charge or for profit;
• how long the permission lasts (eg, is it a one-off copy or will the material continue to be copied for a set period of time?);
• will copying be paid for? And if so how and when will the charges be calculated?
• will the rightsholder be acknowledged as the author or publisher in any way on your copies?
• a warranty (which is a legal guarantee or legally binding promise) that the person granting permission does in fact control the copying rights in the work and that the work does not infringe any existing copyright.

This information is for guidance only. It is not legal advice.

related links

• Blackline Masters
• Creative Commons licences
• Website Terms
• Membership with the Copyright Agency

MORE FROM AUSTRALIAN COPYRIGHT COUNCIL

The Australian Copyright Council publishes information sheets  (such as ‘Assigning and licensing rights’, ‘Fees and royalties for the use of copyright material’, and ‘Permission: how to get it?’) and detailed guides , offers a  legal advice service and runs an annual training program .

28 August 2015

IP Assignment and Licensing

IP rights have essentially transformed intangibles (knowledge, creativity) into valuable assets that you can put to strategic use in your business. You can do this by directly integrating the IP in the production or marketing of your products and services, thereby strengthening their competitiveness. With IP assignement and IP licensing, IP owners can also use your IP rights to create additional revenue streams by selling them out, giving others a permission to use them, and establishing joint ventures or other collaboration agreements with others who have complementary assets.

  Expert tip: Assignment, license and franchising agreements are flexible documents that can be adapted to the needs of the parties. Nevertheless, most countries establish specific requirements for these agreements, e.g. written form, registration with a national IP office or other authority, etc. For more information, consult your IP office .

IP rights assignment

You can sell your IP asset to another person or legal entity.

When all the exclusive rights to a patented invention, registered trademark, design or copyrighted work are transferred by the owner to another person or legal entity, it is said that an assignment of such rights has taken place.

Assignment is the sale of an IP asset. It means that you transfer ownership of an IP asset to another person or legal entity.

IP for Business Guides

Learn more about the commercialization of patents, trademarks, industrial designs, copyright.

Read IP for Business Guides

IP licensing

You can authorize someone else to use your IP, while maintaining your ownership, by granting a license in exchange for something of value, such as a monetary lump sum, recurrent payments (royalties), or a combination of these.

Licensing provides you with the valuable opportunity to expand into new markets, add revenue streams through royalties, develop partnerships etc.

If you own a patent, know-how, or other IP assets, but cannot or do not want to be involved in all the commercialization activities (e.g. technology development, manufacturing, market expansion, etc.) you can benefit from the licensing of your IP assets by relying on the capacity, know-how, and management expertise of your partner.

  Expert tip: Licensing can generally be sole, exclusive or non-exclusive, depending on whether the IP owner retains some rights, or on whether the IP rights can be licensed to one or multiple parties.

Technology licensing agreements

Trademark licensing agreements, copyright licensing agreements, franchising agreements, merchande licensing, joint venture agreements, find out more.

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