assignment of future copyright

Assignments of future copyright extend to rights that writers “may” own

The Court of Appeal has confirmed that the Performing Right Society owns rights in a piece of film music that the satellite broadcaster B4U had purported to own. The composers assigned rights generally in future works to the collecting society, but later agreed to transfer rights in future works to the film producers that commissioned the music.  The court found that copyright in future works vested in the PRS under section 91(1) of the Copyright, Designs and Patents Act 1988 (CDPA) because the PRS agreement covered music that the composers “may” own.  There was no requirement for the composers actually to own the rights once the music was created.  The case usefully confirms that prospective ownership of copyright is sufficient for an assignment of future copyright under English law – an important practical point for entertainment contracts, which often rely on assignments of future rights from writers.

In 2004 two well-known composers of Bollywood music, Salim and Sulaiman Merchant, entered into an agreement with the PRS, assigning to the PRS “absolutely for all parts of the world the rights which belong to you on the date of this agreement or which you may acquire or own whilst you remain our member”.

In 2008 the composers were commissioned by Dharma Productions Private Limited to write music for the Bollywood film Kurbaan.  Under the commissioning agreement, the composers agreed that the entire copyright in “all present and future work arising” out of the composers’ services, including the music (which had not yet been written), would vest in Dharma “as the first owner”. 

By a chain of licensing agreements (which were not material to the case), the satellite television broadcaster B4U acquired video rights to broadcast the song Shukran Allah from the score for Kurbaan.  B4U aired it in April 2010, and the PRS claimed infringement of its copyright.  In 2012 the High Court gave summary judgment in PRS’s favour, on the basis that B4U had no real prospect of successfully defending the claim.  

B4U appealed to the Court of Appeal, claiming that the copyright was in fact owned by Dharma under section 91(1) of the CDPA.  B4U contended that the rights in the song fell outside the scope of the rights assigned to the PRS under the 2004 agreement, as the composers never actually owned the rights in the song and so could not assign them.

The Court of Appeal rejected the appeal.  Lord Justice Moses, giving the leading judgment, considered the effect of section 91(1) of the CDPA.  This states that (with emphasis added):

“Where by an agreement made in relation to future copyright, and signed by or on behalf of the prospective owner of the copyright, the prospective owner purports to assign the future copyright (wholly or partially) to another person, then if, on the copyright coming into existence, the assignee or another person claiming under him would be entitled as against all other persons to require the copyright to be vested in him, the copyright shall vest in the assignee or his successor in title by virtue of this subsection.”

Moses LJ explained that, without a statutory provision, “a work must be in existence before ownership in the rights can be assigned at law”.  Equity, however, would “decree specific performance of the contract, provided it was for value and sufficiently specific”.   So, before section 91(1) came into effect, where a composer assigned the copyright in unwritten works: “… the assignment took effect only in equity as an agreement to assign future copyright in those works, should they be created.  Once the work was created, the legal title would have to be dealt with by a separate assignment.”   Section 91(1) ensures that legal title is vested in the assignee as soon as that work is created, meaning that there is no need for a separate assignment of legal ownership.

The parties accepted that both agreements took effect as equitable assignments of future copyright.  So the question for the court was whether the song Shukran Allah came within the scope of the 2004 assignment to the PRS.  If it did, the parties agreed that that assignment, as the first in time, took priority over the purported assignment to Dharma.

Moses LJ noted that the PRS agreement was designed to include future rights that “the composer may own”.  The category of future rights assigned to the PRS did not contain any requirement that, once the work is created, the rights “must be owned by the composer”.  It did no more than refer to rights “capable of being owned by the composer”.   The question posed by the PRS agreement was not whether the composers became owners, but whether, at the time the agreement was made, they “could have done so”.   Rights capable of being owned by the composers included music that they were yet to write, since an author is generally the first owner of copyright under sections 9 and 11 of the CDPA.

The High Court had taken the view that the composers had become first owners of the music when it was first written.  But Moses LJ found it unnecessary to consider the relationship between section 11 and 91, or whether the composers ever became owners of the copyright, even for a fleeting moment: section 91 is “concerned with a ‘prospective’ owner”, i.e. someone who is not an owner but “may become” an owner.   Accordingly, there was no need “to posit an owner for the purposes of section 91”.

Moses LJ recognised that it was strange to conceive of an assignor of a copyright who never became owner, but recalled that “the very concept of copyright, its ownership and its assignment is entirely statutory”.   He also considered it absurd “to suggest that a reasonable person would have understood the parties to have intended only to transfer rights in works of which they became owner once the works had been composed”: to do so would “turn the priority rules in relation to equitable assignments topsy-turvy”.

In conclusion, the Court of Appeal held that the rights came within the scope of the PRS agreement, and so vested in the PRS.  In the view of Moses LJ, that conclusion gave: “… full effect to the words of the 2004 agreement, without addition or substitution.  At the time of the agreement the composers could have become owners of the song.  As prospective owners, their assignment took effect under section 91 once the song had been composed.”

The decision is relevant to any writer’s grant of future rights in entertainment content under English law.  While the judgment is technical in nature, it has wider application in affirming that a writer need not actually own a future copyright (even for an instant) in order to pass good title to a publisher or other rights-owning entity.  That will be a comfort to investors in music, who rely on obtaining good title in building their catalogues – and so ultimately to acquirers of catalogues, who will want to ensure a clear chain of title, free of any third-party claimants with later purported grants of rights. 

Equally, it will assure administrators of copyright works, such as the collecting societies.  At the same time, it will be problematic for any producer or broadcaster attempting to rely, as in this case, on an alleged effectiveness of a later grant of rights – although it must be said that B4U’s stance is a highly unusual position to take, and most audiovisual companies accept music collecting societies’ customary prior rights as a matter of industry practice.

The case serves as a reminder to practitioners to draft present assignments of future copyright carefully, avoiding any potential gaps in the assignment.  One way to achieve this is, in the usual way, for the writer to assign all right, title and interest of any kind (whether vested, future or contingent) in  both existing and future works created by the writer, i.e. not to draft purely by reference to rights that are or will be owned by the writer – which could create a subtle lacuna of the type that B4U attempted to exploit, and one that would also be hard to bridge effectively through warranties of non-assignment to third parties.

In common-sense terms, the judgment places rather artificial emphasis on “may” [own] in the PRS agreement in this case – reading it in the sense of “could” [own], rather than its more natural subjunctive sense (in the context of the sentence) of “will (perhaps)” [own] – a reading that would have been awkward for the PRS as a matter of contractual interpretation, if construed over-literally (as B4U tried to do) as only passing future rights to the PRS if in fact acquired or owned by the composer – a problem at first sight if the composers never ultimately acquire ownership of the future rights.

But this convoluted logic surely reinforces Moses LJ’s intuition about what was really meant by the PRS agreement and what is meant by section 91(1) of the CDPA: the whole point of both is precisely to allow the present passing of ownership in works that do not yet exist – a paradox that works only by operation of law and is supremely useful for entertainment companies and administrators that need certainty at the time of contracting about their rights to exploit future works.

Ed Baden-Powell and Beth Lawson

Partner and trainee solicitor, michael simkins llp, article written for entertainment law review , news & insights.

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Dealing with future copyright works

Published by a lexisnexis ip expert.

Although subject to certain qualifications (discussed in more detail in Practice Note: Copyright—subsistence and qualification), copyright automatically arises once the protected work is recorded, or ‘fixed’, in a permanent form such as in writing, on film or in a sound recording. Up until that point the work remains a ‘future work’ and is not protected by the Copyright, Designs and Patents Act 1988 (CDPA 1988).

Where a work has not yet been recorded, but it is expected or anticipated, a prospective owner may deal with it as though it were already in existence. For example, they may assign or licence the future copyright in the future work, even though at the point of agreeing to do so the work in question does not exist.

This Practice Note covers a number of considerations when dealing with future copyright works, and for more information on other aspects of copyright more generally, see Practice Notes:

Copyright―protectable works

Copyright—subsistence and qualification

Transferring and licensing copyright—commercial issues

Copyright assignment and licensing

Prospective ownership and future copyright

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Related legal acts:

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

Key definition:

Copyright, designs and patents act 1988 definition, what does copyright, designs and patents act 1988 mean.

Copyright , Designs and Patents Act 1988 (CDPA 1988): the main source of UK copyright law , making provision for the operation of copyright and the protection of how ideas are expressed in a permanent form.

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Assignment of Copyright – Explained With Modes and Disputes

Original work may not be reproduced, distributed, or sold by anybody other than the copyright owner without that owner’s consent. As a result, the law allows the copyright owner to assign ownership to a third party.

The term “copyright assignment” describes the transfer of ownership or rights in a work that has been granted copyright from the original copyright holder (the “ assignor “) to a different party (the “ assignee “). Through a legal procedure, the assignor gives up their ownership of the work and gives the assignee the only authority to reproduce, distribute, display, perform, or alter it.

This article discusses the concept of copyright assignment, which involves the transfer of ownership or rights in a copyrighted work from the original copyright holder (assignor) to another party (assignee). The article also explains the various aspects of copyright assignment, including its mode of assignment and disputes with respect to the assignment of copyright.

Assignment of Copyright

(Section 18 of the Copyright Act, 1957 )

The owner of the current work or the potential owner of the future work may assign the copyright. It may be fully or partially allocated. Limitations may apply to all or a portion of the copyright.

Additionally, if future work is assigned, the assignment will become effective when the new work is created. In future works, “assignee” includes the assignee’s legal representative if they die before the work is created.

The court ruled in  Saregama India Ltd. vs Suresh Jindal And Ors.  that the copyright owner to a future work has the right to assign the copyright, in whole or in part, to a third party. This indicates that the owner may assign the copyright ownership for the entire term or only a portion.

The assignee is regarded as the legal owner of the copyright after the assignment is made, and the Copyright Act recognises all associated rights and benefits. As mentioned above, the ruling affirms that copyright ownership can be transferred by assignment, enabling people or organisations to obtain and exercise control over the rights connected to the copyrighted work.

Mode of Assignment of Copyright

(Section 19 of the Copyright Act, 1957)

Every assignment of the copyright to a work must be made in writing and be signed by the assignor or an authorised representative. Only that assignment will be accepted. Any assigned work must include all relevant information, including the assignment, length, rights, and geographic scope.

The amount of any royalties or other payments made to the author or his legal heirs during the assignment should also be specified. Any revisions, extensions, or terminations of the assignment are subject to the mutually agreed-upon terms and circumstances.

Let’s say the assignee fails to utilise the right granted during the assignment within a year of receiving it. If such a thing occurs, the assignment of those rights will be presumed to have terminated unless otherwise specified in the assignment. When the assignment time and geographical scope are not specified, they will be assumed to be five years from the date of the assignment and inside India, respectively.

The Bombay High Court considered whether the assignment of video rights included the right of satellite transmission in the case of  Video Master vs Nishi Production . The court accepted the defendant’s claim that several public communication channels, such as satellite broadcasting, video TV, and terrestrial television broadcasting, each constituted a distinct copyright.

As a result, the film’s owner may transfer these rights to other people or companies. The court concluded that the video copyright granted to the plaintiff was separate from the copyright for the satellite transmission of the movie. Consequently, the satellite broadcast right was not part of the assignment.

Disputes With Respect to the Assignment of Copyright

(Section 19A of the Copyright Act, 1957)

After receiving a complaint from the assignor and completing an investigation, the appellate board has the authority to revoke the assignment or issue any orders it sees suitable when the assignee fails to execute the powers granted to him if such failure is not a result of any action or inaction on the part of the assignor.

If the assignor is also the author, the appellate board should hold off on issuing any revocation unless it is established that the terms of the assignment are harsh to the assignor. Additionally, no revocation may be made for five years if an assignment has been made.

The appellate board should handle copyright assignment complaints promptly and with diligence. They have a time limit of six months from the date of receiving the complaint to reach a final decision. If, for any reason, there is a delay beyond this period, the appellate board must explain the reasons for the delay. The goal is to ensure that copyright disputes are resolved promptly and transparently.

In this evolving world, copyright assignment is an unavoidable need. People are not always able to rely on themselves. The ownership of the work must be transferred to properly frame the art and realise the original piece’s full creative potential.

Furthermore, copyright assignment aids in the seamless development of the creative process when several creative minds collaborate or when a work is adapted across various media. It allows for fresh viewpoints, interpretations, and variations that could improve the original work or investigate other creative paths.

Read Next: Doctrine of Merger Under Copyright Law

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• Past events

Assignment (copyright)

• An assignment is a permanent transfer of copyright (like a sale).

1 January 2023

Page contents

• When it applies

Who/what it applies to

Core principles, why it matters (risks/opportunities), key legal considerations/elements, key commercial considerations/elements.

Estimated reading time for this page: 5 minutes 

An assignment is a transfer of copyright (or part of it) from a copyright owner (the assignor) to a third party (the assignee), such that the assignee becomes the owner of that copyright.

Put another way: an assignment of copyright is like selling a house, whereas a licence of copyright is like leasing a house. 

Alice has been approached by a television production company that wants to make a TV adaptation of her recent novel.

As copyright owner, Alice is the only person entitled to adapt the novel and, as such, the production company has asked for an assignment of this adaptation right.

Alice understands the commercial needs of the production company and is willing to transfer ownership of the right to them (rather than merely licence  it). However, she does not want to assign any more rights than are strictly necessary.

Given that a partial assignment of copyright is possible, she assigns the right to adapt the novel to the production company. Alice retains ownership of other rights herself (such as the right to copy or translate the novel), allowing for future commercialisation if she so wishes e.g. by translating the novel for publication in new countries.

When it applies

An assignment takes place when the copyright owner (the assignor) agrees to transfer the copyright to a third party (assignee).

This is ordinarily done by way of an assignment agreement (sometimes known as an elective assignment), in which case the transfer takes effect from the date set out in that agreement. However, in limited circumstances the assignment can happen automatically (an automatic assignment – see key legal considerations  below). 

An assignment relates to the work set out in the assignment agreement and binds both the assignor and assignee.

Once an assignment has been made, the assignee becomes the new copyright  owner and they then have the right to enforce the copyright against any third parties who might infringe it.

It's possible to assign copyright in future works e.g. those that have not been created yet. Therefore, the assignment can relate to both the assignor’s current and future copyright. In each case, the assignment can be for the whole or part of the copyright in question. 

• The assignment may relate to all, or part (a partial assignment), of the assignor’s copyright.
• Once the assignment is made, the original copyright owner can no longer exercise the rights transferred (although, subject to the terms of the assignment, may continue enforcement action for any infringement prior to the date of assignment).
• The assignor cannot control how the assignee exercises the rights assigned, including any decision not to exercise the rights e.g. not to publish or perform the work.
• An assignment agreement should clearly set out the terms of the assignment including the scope of the assignment and any consideration payable.

Permanent loss of rights.

Relative lack of formalities (see key legal considerations  below), so care should be taken to ensure that assignments are not made unintentionally.

The assignor loses control of future use and revenue opportunities.

Opportunities

The current copyright owner receives a guaranteed payment for their work.

They can specify the terms of the assignment e.g. whether all or only part of the copyright is assigned.

Provides opportunities to monetise copyrighted work in a targeted way e.g. to transfer adaptation rights of a book to a film studio. 

The assignment must be:

• in writing 
• signed by the assignor (owner)

It's best practice for the assignee to also sign the assigment (to avoid dispute as to whether they are bound by other terms of the assignment agreement e.g. payment).

For the assignment of current copyright there is no specific form of agreement that must be used e.g. the assignment can be by way of letter, provided it is in writing and signed.

An assignment can be either:

• automatic – in limited circumstances copyright will be assigned automatically. These include insolvency and inheritance (through the rules of intestacy or as set out in the copyright owner’s will, whichever is applicable).
• elective – in most cases the assignment will be an ‘elective’ assignment e.g. where a copyright owner chooses to assign the copyright and enters into an agreement to do so.

An assignment is a permanent transfer of rights. If a copyright owner wishes to retain ownership of their copyright and merely give a third-party permission to use the copyright in specific circumstances, they should use a licence instead.

As the new copyright owner, the assignee becomes the person entitled to take legal action in respect of any breach of the copyright.

It's possible to tailor the assignment agreement to the specific needs of the parties so these terms should be considered carefully as, once assigned, a copyright owner loses the ability to monetise the assigned rights 

An assignment can be exclusive or non-exclusive. Does the copyright owner want to retain the ability to use the work themselves or to allow others to use it? 

Ordinarily, an assignor will be entitled to sell any remaining copies of the work in their possession even if an assignment has been made. If this is not the intention of the parties it should be clearly set out in the assignment agreement.

As the author of the work can I still use the work after assignment?

No, unless otherwise provided for in the assignment agreement, an assignment is a permanent transfer of copyright. This means that on assignment, only the assignee can exercise those rights moving forward.

Can I assign moral rights ?

Moral rights (e.g. the right to be identified as the work’s author) cannot be assigned, although they can be waived. If the parties intend for the copyright owner to waive their moral rights this must be clearly stated in the assignment agreement.

Do I have to assign all my copyright?

No, you can make an assignment of your copyright in whole or in part. If you are assigning only certain rights to the assignee (e.g. the right to perform the work to a theatre company) this should be made clear in the assignment agreement.

Does there need to be consideration (payment)?

Although not strictly needed, unless the assignment is by way of a deed (a legal document that, unlike a contract , must be in writing, requires the parties’ signatures to be witnessed but does not require consideration to be paid), some consideration is usually required. This could be a nominal sum (e.g. £1), fair market value or consideration in kind e.g. the provision of services.

What’s the difference between an assignment and a licence ?

An assignment is a permanent transfer of rights (like a sale), whereas a licence is a limited grant of permission (like a lease). With a licence, the original copyright owner retains ownership of the copyright, whereas with an assignment the ownership is transferred to the assignee.

This copyright assignment is between  , an individual a(n) (the " Assignor ") and  , an individual a(n) (the " Assignee ").

The Assignor has created and (a) has registered or (b) has applied for registration with the Copyright Office of those works listed in Exhibit A (collectively, the " Work ").

The Assignor wishes to transfer to the Assignee all of its interest in the Work, and the Assignee wishes to acquire all of the Assignor's interest in the Work.

The parties therefore agree as follows:

1. ASSIGNMENT OF AUTHORED WORKS.

The Assignor assigns to the Assignee, and the Assignee accepts the assignment of, all of the Assignor's interest in the following:

• (a) the Work listed in Exhibit A ;
• (b) all of the exclusive rights granted to the owner of a copyright under United States federal law, including all rights to reproduce, publish, adapt, modify, distribute, create derivative works based on the Work, display, publicize, and transmit (digitally or otherwise) the Work;
• (c) the registrations and applications for registrations of each Work, and any renewals or extensions of those;
• (d) all goodwill and moral rights in and to the Work;
• (e) all income, royalties, and damages due to the Assignor with respect to the Work, including damages and payments for past or future infringements and misappropriations of the Work; and
• (f) all rights to sue for past, present, and future infringements or misappropriations of the Work.

2. CONSIDERATION.

The Assignee shall pay the Assignor a flat fee of as full payment for all rights granted under this agreement. The Assignee shall complete this payment no later than .

3. RECORDATION.

In order to record this assignment with the United States Copyright Office, within hours of the effective date of this assignment, the parties shall sign the form of copyright assignment agreement attached as Exhibit B . The Assignor Assignee  is solely responsible for filing the assignment and paying any associated fees of the transfer.

4. NO EARLY ASSIGNMENT.

The Assignee shall not assign or otherwise encumber its interest in the Work or any associated copyright registrations until it has paid to the Assignor the full consideration provided for in this assignment. Any assignment or encumbrance contrary to this provision shall be void.

5. DOCUMENTATION.

The Assignor shall provide the Assignee with a complete copy of all documentation (in any format) relating to the Work for the Assignee's own use, to meet record-keeping requirements of the Assignee, or to allow the Assignee to assert its rights granted pursuant to this assignment. The Assignor shall also, on request:

• (a) sign any additional papers, including any separate assignments of the Work, reasonably necessary to record the assignment in the United States;
• (b) do all other lawful acts reasonable and necessary to record the assignment in the United States; and
• (c) sign all papers reasonable and necessary for Assignee to obtain a copyright on any of the Work. 

6.   NO FURTHER USE OF WORK. NONEXCLUSIVE LICENSE TO ASSIGNOR.

After the effective date, the Assignor may make no further use of the Work or any derivatives of the Work, except as authorized by the prior written consent of the Assignee, and the Assignor may not challenge the Assignee's use or ownership, or the validity, of the Work.   However, the Assignor shall retain its rights to be identified as the author whenever the Work is reproduced, published, distributed, or otherwise publicly displayed. After the effective date, the Assignee grants back to the Assignor a nonexclusive, royalty-free license to use the Work as the Assignor sees fit, including for the creation of derivative works of those Work. This license does not limit the Assignee's rights and public rights under this assignment.

7. ASSIGNOR'S REPRESENTATIONS.

The Assignor hereby represents to the Assignee that:

• (a) the Assignor is the sole owner of all interest in the Work;
• (b) the Work is original, are not in the public domain, are not plagiarized, and do not contain anything that is libelous or obscene;
• (c) the Assignor has not transferred, licensed, pledged, or otherwise encumbered any Work or agreed to do so;
• (d) the Assignor is not aware of any violation, infringement, or misappropriation of any third party's rights or any claims of rights (including existing intellectual property rights, rights of privacy, or any other rights) by the Work;
• (e) the Assignor is not aware of any third-party consents, assignments, or licenses that are necessary to perform under this assignment; and
• (f) the Assignor was not acting within the scope of employment of any third party when conceiving, creating, or otherwise performing any activity with respect to the Work.

8. GOVERNING LAW.

• (a) Choice of Law. The laws of the state of  govern this agreement (without giving effect to its conflicts of law principles).
• (b) Choice of Forum. Both parties consent to the personal jurisdiction of the state and federal courts in County, .

9. AMENDMENTS.

No amendment to this assignment will be effective unless it is in writing and signed by a party.

10. ASSIGNMENT AND DELEGATION.

• (a) No Assignment. Neither party may assign any of its rights under this assignment, except with the prior written consent of the other party. All voluntary assignments of rights are limited by this subsection.
• (b) No Delegation. Neither party may delegate any performance under this assignment, except with the prior written consent of the other party.
• (c) Enforceability of an Assignment or Delegation. If a purported assignment or purported delegation is made in violation of this section, it is void.

11. COUNTERPARTS; ELECTRONIC SIGNATURES.

• (a) Counterparts. The parties may execute this assignment in any number of counterparts, each of which is an original but all of which constitute one and the same instrument.
• (b) Electronic Signatures. This assignment, agreements ancillary to this assignment, and related documents entered into in connection with this assignment are signed when a party's signature is delivered by facsimile, email, or other electronic medium. These signatures must be treated in all respects as having the same force and effect as original signatures.

12. SEVERABILITY.

If any one or more of the provisions contained in this assignment is, for any reason, held to be invalid, illegal, or unenforceable in any respect, that invalidity, illegality, or unenforceability will not affect any other provisions of this assignment, but this assignment will be construed as if those invalid, illegal, or unenforceable provisions had never been contained in it, unless the deletion of those provisions would result in such a material change so as to cause completion of the transactions contemplated by this assignment to be unreasonable.

13. NOTICES.

• (a) Writing; Permitted Delivery Methods. Each party giving or making any notice, request, demand, or other communication required or permitted by this assignment shall give that notice in writing and use one of the following types of delivery, each of which is a writing for purposes of this assignment: personal delivery, mail (registered or certified mail, postage prepaid, return-receipt requested), nationally recognized overnight courier (fees prepaid), facsimile, or email.
• (b) Addresses. A party shall address notices under this section to a party at the following addresses:
• If to the Assignor: 
• If to the Assignee: 
• (c) Effectiveness. A notice is effective only if the party giving notice complies with subsections (a) and (b) and if the recipient receives the notice.

14. WAIVER.

No waiver of a breach, failure of any condition, or any right or remedy contained in or granted by the provisions of this assignment will be effective unless it is in writing and signed by the party waiving the breach, failure, right, or remedy. No waiver of any breach, failure, right, or remedy will be deemed a waiver of any other breach, failure, right, or remedy, whether or not similar, and no waiver will constitute a continuing waiver, unless the writing so specifies.

15. ENTIRE AGREEMENT.

This assignment constitutes the final agreement of the parties. It is the complete and exclusive expression of the parties' agreement about the subject matter of this assignment. All prior and contemporaneous communications, negotiations, and agreements between the parties relating to the subject matter of this assignment are expressly merged into and superseded by this assignment. The provisions of this assignment may not be explained, supplemented, or qualified by evidence of trade usage or a prior course of dealings. Neither party was induced to enter this assignment by, and neither party is relying on, any statement, representation, warranty, or agreement of the other party except those set forth expressly in this assignment. Except as set forth expressly in this assignment, there are no conditions precedent to this assignment's effectiveness.

16. HEADINGS.

The descriptive headings of the sections and subsections of this assignment are for convenience only, and do not affect this assignment's construction or interpretation.

17. EFFECTIVENESS.

This assignment will become effective when all parties have signed it. The date this assignment is signed by the last party to sign it (as indicated by the date associated with that party's signature) will be deemed the date of this assignment.

18. NECESSARY ACTS; FURTHER ASSURANCES.

Each party shall use all reasonable efforts to take, or cause to be taken, all actions necessary or desirable to consummate and make effective the transactions this assignment contemplates or to evidence or carry out the intent and purposes of this assignment.

[SIGNATURE PAGE FOLLOWS]

Each party is signing this agreement on the date stated opposite that party's signature. 

[PAGE BREAK HERE] EXHIBIT A LIST OF WORKS TRANSFERRED

[PAGE BREAK HERE]

EXHIBIT B FORM OF COPYRIGHT ASSIGNMENT

For good and valuable consideration, the receipt of which is hereby acknowledged,  an individual a(n)   (the " Assignor ") hereby assigns to an individual a(n)   (the " Assignee ") all of the Assignor's interest in the Assigned Copyrights identified in Attachment A to this assignment, and the Assignee accepts this assignment.

Each party is signing this agreement on the date stated opposite that party's signature.

ATTACHMENT A (TO EXHIBIT B) ASSIGNED COPYRIGHTS

Free Copyright Assignment Template

Protect your intellectual property with a copyright assignment form. securely transfer your copyright to another party, clearly defining ownership terms while preserving your rights effectively..

Complete your document with ease

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Copyright assignment: How-to guide

Have you ever wondered what happens to your creative work once it's out in the world? How can you ensure that your intellectual property remains protected? These questions often lead us to explore the world of copyright assignment.

Copyright assignments empower creators to control the destiny of their creations. In this how-to guide, we'll explain the details of copyright assignments.

Join us as we deep dive into copyright ownership and discover how you can effectively transfer your rights to others while safeguarding your creative legacy.

What is a copyright assignment?

Copyright assignment refers to the transfer of copyright ownership rights from one party to another. Copyright owners have exclusive rights to their creative works, including the right to perform, display, distribute, reproduce, and create derivative works based on the original. These  rights are protected for a specified duration , typically throughout the life of a creation:

1. Copyright protection for works created by individual writers on or after January 1, 1978, begins at the time of creation and lasts for the author's life plus 70 years.

2. Copyright for anonymous or pseudonymous works (if the author's name is not revealed) and works done for hire are valid for 95 years from the date of first publication or 120 years from the date of creation, whichever expires first.

3. The copyright in joint works is valid for the life of the last living author plus 70 years.

Copyright assignment involves the assignor (the original copyright holder) transferring their rights to the assignee (the new copyright owner) through a written agreement. Key terms to understand include the assignor, assignee, consideration (something of value exchanged for the transfer), and the transfer of rights.

What are the types of copyright transfer?

Copyright assignments can be either: 

1. Exclusive : In an exclusive assignment, the assignee gains exclusive rights to use the copyrighted work.

2. Non-exclusive : In a non-exclusive assignment, the assignor retains the right to license the work to others. 

3. Partial : Partial assignments may also be considered, transferring only specific rights or territories.

What are the benefits of copyright assignment?

Copyright assignment offers several benefits to both creators and assignees:

Monetization

Assigning copyright allows creators or the copyright owner to monetize their personal property by selling or licensing their rights to others, providing opportunities for additional income streams.

Transfer of responsibility

By assigning copyright, creators can transfer the responsibility for managing and protecting their personal property rights to the assignee, relieving them of the burden of enforcement and administration.

Expanding reach

Assigning copyright to a larger entity, such as a publishing house or production company, can help creators reach a wider audience and expand the distribution of their works.

Legal protection

Assigning copyright provides legal protection against unauthorized use or reproduction of the work, allowing assignees to take legal action against infringers to protect their rights.

Collaboration opportunities

Copyright assignment facilitates collaboration between creators and businesses, enabling joint ventures and partnerships that can lead to creative synergies and mutually beneficial outcomes.

When do you need a copyright assignment?

The following situations may require you to think about assigning a copyright:

Collaborative projects

A copyright assignment may be necessary to establish ownership and distribution rights when working with others on a creative endeavor, such as authoring a book or making a movie.

Commissioned work

A copyright assignment can outline the ownership and usage rights for any work you are contracted to produce for someone else, including written articles, music compositions, and artwork.

Your employer may ask you to assign your copyright to them as part of your employment agreement if you produce intellectual property as part of your work, such as software code, marketing materials, or product designs.

Selling or licensing

A copyright assignment agreement will formalize the transfer of rights and set out the conditions of the transaction if you choose to sell or license your copyright to a third party, such as a publishing house, record label, or production studio.

Safeguarding your legacy

As you make plans, you should ensure that your creative works' management and preservation follow your instructions. You may create a clear plan for how your personal property will be managed after your death with the use of a copyright assignment.

Copyright assignment is required anytime you need to distribute or transfer ownership of your creative works in a way that is official and compliant with the law. All parties concerned benefit from its clarity and protection, which guarantees that the rights and obligations related to intellectual property are accurately established and respected.

What laws and regulations to follow for copyright assignment in the US?

Copyright assignment in the United States is governed by federal law, primarily outlined in the  Copyright Act of 1976 . This legislation provides the legal framework for copyright ownership and transfer, ensuring that assignments are enforceable and legally binding. In addition, the following points must be considered.

Ensuring validity and compliance : Precautions must be taken to guarantee the authenticity and validity of a copyright transfer. These include recording the assignment's conditions, getting the original express approval of the copyright owner, and making sure all legal requirements are met. To find and fix any possible validity issues, the written agreement must be legally reviewed. It might be advisable to visit the copyright office.

Legal requirements and formalities : A proper copyright assignment requires attention to legal requirements. One part of this is making sure the assignment agreement is in writing and signed by all parties. In addition to safeguarding the rights of both the assignor and the assignee, written agreements offer clarity and act as proof of the transfer of ownership.

What are the elements of a copyright assignment?

A copyright assignment agreement typically includes several essential components:

Identification of the parties involved (assignor and assignee)

This part identifies who is giving up the rights to the work (assignor) and who is receiving them (assignee).

Description of the copyrighted work

This describes the creative work being transferred, such as a book, song, or artwork.

Scope of rights being transferred

It specifies exactly which rights, such as reproduction, distribution, or adaptation rights, are being given up by the assignor and acquired by the assignee.

• Reproduction rights : These refers to the right to make copies or reproductions of the copyrighted work. For example, if the assignee has reproduction rights, they can produce copies of a book, music recording, or artwork.
• Distribution rights : These refer to the right to distribute copies of the copyrighted work to the public. This includes selling, renting, leasing, or otherwise making the work available to the public. For example, if the assignee has distribution rights, they can sell copies of a book in bookstores or distribute copies of a film through online streaming platforms.
• Adaptation rights : This refers to the right to create derivative works based on the copyrighted work. A derivative work is a new work that is based on or adapted from the original work, such as a movie adaptation of a book or a remix of a song. If the assignee has adaptation rights, they can create and distribute adaptations or derivative works based on the original copyrighted work.

Consideration exchanged for the transfer

Consideration refers to what the assignee gives to the assignor in exchange for the rights to the work. It could be money, goods, services, or other valuable benefits.

Signatures of all parties

All parties involved in the agreement need to sign it to make it legally binding. This ensures that everyone agrees to the terms of the copyright assignment.

The effective date of the assignment

This is the date when the transfer of copyright ownership becomes official and legally enforceable.

Recordation

Recordation involves officially documenting the copyright assignment with the appropriate government office, such as the U.S. Copyright Office. This provides a public record of the transfer.

No early assignment

This clause specifies that the assignor cannot transfer the rights to the work before a certain date or event specified in the agreement.

This clause is typically included to provide stability and certainty to both parties involved in the agreement. It ensures that the assignor cannot prematurely transfer the rights to the work, thereby disrupting the intended timeline or violating the terms of the agreement. This clause helps in:

• Protecting investment : The assignee may have invested time, resources, or finances into the agreement, and the "no early assignment" clause helps protect their investment by ensuring that the assignor cannot abruptly transfer the rights to someone else.
• Completion of obligations : The clause may specify that the rights cannot be transferred until either party fulfills certain obligations or conditions. This ensures that both parties fulfill their responsibilities before the rights are transferred.
• Preventing premature transfers : It prevents the assignor from transferring the rights to the work before the assignee has had sufficient time to benefit from the assignment or before certain milestones are reached.
• Maintaining stability : This clause helps maintain stability by establishing a clear timeline for the transfer of rights and prevents unexpected changes or disruptions to the agreement.

Assignor’s representations

The assignor or the copyright holder may need to make certain statements or assurances about the work being transferred, such as confirming that they are the rightful owner of the copyright. The reasons being:

• Legal assurance : By making representations about the work being transferred, the assignor provides legal assurance to the assignee that they have the rightful ownership of the copyright. This helps establish the validity and authenticity of the transfer.
• Protection against claims : The representations serve as protection for the assignee against any claims or disputes regarding the ownership of the copyright in the future. If the assignor falsely represents themselves as the rightful owner, they may be held liable for any resulting damages.

This section outlines how the agreement can be modified or amended in the future if necessary.

A waiver clause specifies whether any rights or obligations under the agreement can be waived by either party and under what circumstances.

Now that you know the elements of a copyright assignment agreement, you may create one with greater clarity and detail by following the above list. This involves defining the rights being transferred accurately, including any restrictions or conditions, and, if required, obtaining legal counsel. A well-written contract helps in avoiding miscommunications and conflicts.

You can also use pre-made templates, like the copyright assignment template provided on this page, to speed up the process of drafting a copyright transfer agreement. Templates provide the agreement structure, which makes it simpler to modify and tailor to particular requirements. 

What are the consequences of copyright infringement?

Copyright infringement carries several consequences, both legal and reputational, including:

1. Legal liability

Infringers may be liable for legal action, including injunctions, damages, and attorney fees, which can result in financial losses and potential reputational damage.

2. Loss of revenue

Infringement of copyright can result in lost revenue for creators and assignees, as unauthorized use of their works deprives them of potential licensing or sales opportunities.

3. Damage to reputation

Infringement can damage the reputation of creators and assignees, harming their credibility and trustworthiness in the eyes of consumers and business partners.

4. Diminished control

Copyright infringement devalues the control that creators and assignees have over their intellectual property, diminishing their ability to dictate how their works are used and distributed.

5. Erosion of rights and potential public domain status

Failure to enforce copyright protections can lead to the gradual loss of rights over time. Infringers may exploit this lapse by arguing that the works have entered the public domain or that they have acquired rights through long-term usage. This underscores the importance of proactive enforcement to safeguard intellectual property rights.

To sum up, copyright assignment is an essential tool that helps creators properly manage and safeguard their personal property rights. Through formal agreements, creators may transfer ownership of their works and open up new avenues for profit, cooperation, and reach. Nonetheless, the consequences of copyright infringement highlight how important it is to enforce and defend these rights with care. Creators and assignees may confidently handle the complicated world of intellectual property and secure the existence and success of their creative activities for future generations by knowing and following copyright assignment standards. 

Frequently asked questions

What does a copyright assignment mean.

The creator of intellectual property protected by copyright can sell that material and transfer the copyright to a buyer. A copyright assignment clarifies the terms of the transfer of ownership to a new person or business.

Here's the information you'll need to have handy to complete your copyright assignment:

• Who it's coming from (original owner) : Determine if a business or individual is sending the document and have the assignor’s name and contact information ready
• Who it's going to : Know who this document is going to and have the individual or business name and contact information of the assignee ready
• Copyright registration information : Identify the material's title, registration number, and date
• Payment : Decide the sale amount and when the buyer needs to pay

What is the process of assignment of copyright?

Transferring ownership of creative works through a formal agreement is the process of assigning copyright. In this arrangement, the parties typically identify themselves, describe the copyrighted work, specify the rights being transferred, exchange compensation, obtain signatures, and register the assignment with the relevant authorities for legal recognition.

Related templates

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Transfer work responsibilities efficiently with an assignment of agreement. Facilitate a smooth transition from one party to another.

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Safeguard the sale or purchase of assets with an intellectual property assignment agreement. Transfer the ownership of patents, trademarks, software, and other critical assets easily.

Patent Application Assignment

Transfer the ownership rights or interests in a patent application. A patent application agreement defines the terms of transfer, promotes collaboration, and mitigates risks.

Patent Assignment

Simplify the process of transferring patent rights for both buyers and sellers with a patent assignment agreement. Document the ownership transfer clearly and efficiently.

Trademark Assignment

Simplify the buying and selling of trademarks with a trademark assignment agreement. Transfer intellectual property rights and ensure a fair and smooth transaction.

Trademark License Agreement

Ensure fair use of intellectual property with a trademark license agreement. Outline the terms of usage and compensation.

Be Wary of a Copyright Assignment or an Exclusive Copyright License

It’s an important day when an artist signs his first artist agreement, an author executes her first publishing contract, or a band strikes their first record deal. However, it’s even more critical that the creative parties signing these agreements understand what rights they may be giving away. Too often, creative parties realize after it’s too late that they have effectively transferred almost all rights in their work and even in future works.

What is Copyright Assignment / Exclusive Copyright License?

Section 204 of the Copyright Act , a transfer of copyright ownership, other than by operation of law (including but not limited to corporate mergers, bankruptcy, foreclosure, court order, and intestate succession) is not valid unless an instrument of conveyance or a note or memorandum of the transfer is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent. 17 U.S.C. § 204. Consequently, a publisher, studio, or producer will often incorporate language into a contract that transfers all intellectual property rights and copyright rights in a work away from the creative party. Sometimes, the non-creative party will do this in the form of an exclusive license, which often has the same effect as a copyright assignment.

Sometimes, agreements that provide for the transfer of or exclusive rights to such rights also include language that expressly states that all future works created by the creative party are considered a Work-Made-For-Hire and that, if necessary, the creative party agrees to sign additional documents assigning or exclusively licensing their rights in the copyright of the work. A Work-Made-For-Hire means that the creative party is an employee of an organization. It is their job to create the specific type of work being commercialized or that the creative party has been specifically commissioned and hired to complete a particular piece of work, but not in an employer-employee relationship, but rather in an independent contractor role. In either case, the non-creative party is seeking and asserting ownership or exclusivity in all rights in the copyright for all future works before they are even created.

It is highly recommended that a creative party, whether author or singer, retain a skilled lawyer to review any contract that threatens the ownership or rights in the copyright of a specific work or future works. Of course, it is not always a bad thing that these rights are transferred or exclusively licensed. Still, such rights should be understood by the creative party in the context of the overall agreement to provide the creative party with an exit strategy in case the relationship between the parties doesn’t work out. An artist, author, or singer, often spends their entire life trying to ‘catch a break’ or ‘make it big’ or ‘break out,’ why not spend the time and minimal expense to protect what took in some cases a lifetime to achieve?

Have you received your first contract? Contact McClanahan Powers today to schedule your consultation to protect your art.

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Assigning Future Rights

1 October 2021 25 October 2009 | Ken Adams

I find that the notion of categories of contract language (considered in detail in chapter 2 of MSCD ) often provides a useful framework for analyzing substantive drafting issues.

Take an issue I was asked about twice recently, once at the ACC annual meeting, once by one of my Penn Law students. It’s routine for contract provisions to assign future rights, but what’s the best way to accomplish that? I see three possibilities; here they are, in skeletal form:

Language of Performance: Acme hereby assigns any Future Rights. Language of Obligation: Acme shall assign any Future Rights. Language of Policy: Acme will be deemed to have assigned any Future Rights.

Which works best? I’m relying on you, dear reader, to enlighten me. For one thing, language of performance would seem the safest option, but is there any problem with assigning now something that doesn’t exist?

By the way, if you’re into licensing, you might find of interest this August 2008 post on granting language and the extensive comments it received.

About the author

Ken Adams is the leading authority on how to say clearly whatever you want to say in a contract. He’s author of  A Manual of Style for Contract Drafting , and he offers online and in-person training around the world. He’s also chief content officer of LegalSifter, Inc., a company that combines artificial intelligence and expertise to assist with review of contracts.

9 thoughts on “Assigning Future Rights”

In the patent world, assignments and employment agreements routinely use language of performance. There is caselaw that specifically distinguishes the obligation (which the obligee may refuse to perform in the future) from the performance. If the inventor is only obligated to assign, but for whatever reason fails to do so, the company never gets the assignment, but if the language was of performance, then it does. So language of performance is strongly preferred, at least in that scenario. I don’t think I’ve ever seen language of policy.

I’m not aware of any caselaw that has a problem with a present assignment of future rights.

Richard Schafer is correct. The language that has been smiled upon by courts is something like: “Inventor shall assign, and does hereby assign, to Company all rights in Future Inventions.”

The obligation language without the performance language only transfers equitable title to future inventions. This is a problem if you happen since equitable title does not get you standing to sue for patent infringement. There are a line of cases stemming from Filmtec Corp. v. Allied-Signal, Inc. (939 F.2d 1568) and Arachnid Inc. v. Merit Industries (939 F.2d 1574) that discuss these issues in detail. I believe there was even a new Fed. Cir. opinion on this topic issued within the last couple months.

Mike: Mixing language of obligation and language of performance in the manner you propose is, in terms of semantics, problematic. Ken

Mike is right. I think there was a more-recent case on this issue (which is probably what Mike is thinking of), but the “big one” last year was DDB Technologies, Inc. v. MLB Advanced Media, L.P., No. 2007-1211 (Fed. Cir. Feb. 13, 2008).

From Mondaq’s summary http://www.mondaq.com/article.asp?articleid=60318 :

In applying federal law, the court looked to the language of the assignment-of-inventions clause in the employment contract, which provided that Barstow “agrees to and does hereby grant and assign” to Schlumberger all inventions falling within the scope of the agreement, together with their related patent rights. The Federal Circuit, citing Speedplay and Filmtec, held that where an employment contract contains such a present grant of rights in future inventions and related patent rights (as opposed to a mere promise to assign in the future), title to the patent transfers to the employer immediately and by operation of law upon the invention’s creation.

From that, it seems clear that choices b and c (obligation and policy) are decidedly inferior to choice a (present assignment of future inventions).

The recent Fed. Cir. case, I believe, was Stanford University v. Roche Molecular Systems, Inc., No. 2008-1509, -1510 (Fed. Cir. revised Oct. 1, 2009), summarized in a blog posting I did earlier this month.

I would also use the formula of “hereby assigns and agrees to assign.” But this is another area where the underlying law needs to be considered before deciding which approach to take.

From the comments above, it seems that the US courts will interpret a present assignment of future rights as coming into effect when the rights come into existence. To my mind, this is a convenient legal fiction, and does not follow normal principles of what words mean. I am not saying this is wrong, but it does require a knowledge of law in order to interpret the words used. This potentially strays into Ken’s “magic words” territory.

Under UK copyright legislation (s91, CDPA 1988 http://www.opsi.gov.uk/acts/acts1988/ukpga_19880048_en_5#pt1-ch5-pb1-l1g91 ), a present assignment of future copyright will take effect when the copyright comes into existence. There is no equivalent to this provision in UK patent legislation.

Ken – I’m not going to disagree with you that the mixing of language types may not be perfect, but that’s the way the language was structured in the early cases and repeatedly approved of by the Fed. Cir. Dare I say “tested.”

Nevertheless, focusing on what the court says in those cases, all you really need is the language of performance: Inventor does hereby assign to Company all rights in all Future Inventions. The courts refer to this as a “present assignment of future expectant interest.”

But, in practice, no one uses the “present assignment of future expectant interest” as the ONLY assignment except as a back-up when someone forgets to follow-up with a “traditional” assignment. There are lots of reasons for this. Generally speaking, the language of the present assignment of future expectant interest is too squishy because of the nature of the “future expectant interest.” So relying solely on the present assignment simply moves the fight to whether a particular invention fits within the definition of a “Future Invention.” But by simply getting a straight-forward, traditional assignment at the time there is “future” invention, you put those questions to rest.

In addition, the present assignment of a future expectant interest doesn’t “record well” at the Patent Office. It’s better to have the straight-forward, traditional assignment that lists with specificity the application and the invention.

Mike: I’m sure you’d be disappointed if I didn’t get all schoolmarmish on you and mention that the construction does hereby assign is archaic. Use instead hereby assigns . Ken

Under continental European legal systems (both French and German oriented) the distinction Mike makes is very clear. A completed transfer (of rights, goods real estate or what have you) requires: (i) a valid title (e.g., obligations to sell vs. purchase), (ii) an agreement to transfer, and (iii) the actual formality of the transfer (e.g., a notarial deed or the factual handing over of the goods. The distinction between (i) and (ii) and its effects is what Mike signals and, as I understand Common Law, what in fact distinguished European legal systems. Indeed the distinction permits non-transfer as a consequence of the seller not transferring/assigning its rights. Under European systems this would not be problematic, since specific performance is preferred over damages, also in case of a transfer of goods or rights. Including the words hereby emphasizes that the act of transfer is effected by the same writing that reflects the sale and purchase. See my blog on this contract drafting matter: http://www.weagree.com/weblog?topic=14

As regards future rights, the new Dutch Civil Code (1992) explicitly allows such transfer, provided that the future rights are sufficiently determined or determinable (which is generally interpreted broadly, so as to cover many aspects).

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Understanding Assignment of Copyright

Copyright is a bundle of rights and can be exploited in several ways independently from each other. Each work has various rights, such as theatrical rights, distribution rights, rental rights, broadcasting rights, rights related to adoption and translation, rights to prepare derivative works, and so on, each of which can be exploited separately. These rights can be disjointedly assigned for a limited term or perpetually.

What is an Assignment of Copyright?

An assignment is, in spirit, a transfer of ownership, even if it is partial. The copyright owner in an existing work or the future owner of the copyright in a further work may assign to any person the copyright either wholly or partially, either generally or subject to limitation, either for the whole of copyright or any part thereof. In case the assignment of copyright is for any future work, the assignment will take effect only when the work is in an expressed form and not just an idea.

No one has the right to copy, reproduce, sell, or publish an original work without the permission of the creator. It means that only the owner of the copyright can transfer the ownership of the copyright to a third party. Another important thing to note is that with the assignment of a copyright, the assignee shall also enjoy all the rights related to the copyright of the assigned work.

An assignment has two objectives:

• Where an assignee is concerned, it confers on him the right of exploitation of work for a specified period in the specified territory; and;
• For the assignor, it confers on him the right to receive a royalty on the work assigned.

Mode of Assignment of Copyright

The owner of the copyright in the existing or future work may assign it to any person. It can be assigned either wholly or partially and with or without limitation on the whole or any part of the copyright. Assignment of copyright in any work shall not be valid unless it is in writing and signed by the assignor or by his authorized agent. Oral assignment of copyright is usually neither permissible nor valid. It shall identify the work and specify the rights assigned, the duration, the territorial extent of such assignment, and the amount of royalty payable to the author.

Difference between Assignment and Licensing of Copyright

Copyright license and assignment of copyright are two dissimilar terms that cannot be used interchangeably. Each of them is different in its own way. A license provides approval of an act, and without it, the authorization would amount to infringement. Licensing usually involves authorizing some of the rights out of many. It can either be exclusive or non-exclusive. In the case of assignment, it includes the disposal of the copyright, which in simple terms means the assignor assigns the copyright to another person or the transfer of ownership of the copyright to some other person, whereas in the case of a license, only some Intellectual Property (IP) is transferred and the ownership is not transferred to the licensee. A license does not confer any right to the licensee against a third party or licensor, but an exclusive licensee has substantial rights against the licensor and even a right to sue the licensor.

A licensee also has the right to make amendments provided that his license does not restrict that right. In case there is a failure in paying the royalties, the licensor can revoke the license. When it comes to the assignment, the same is not possible. However, if there is anything harsh that can affect the author, it may lead to revocation in the event of a complaint made to the copyright board.

A copyright license, unlike a copyright assignment, needs to be in writing. It can be oral or implied after considering all the facts and circumstances relating to the transaction between the owner of the copyright and the licensee. Thus, if an individual who is the owner of a copyrighted work thinks about assigning the copyright, he can consider licensing his copyright instead of assigning it. It would help in retaining ownership, thereby licensing only certain rights to another party.

Essential Features of a Copyright Assignment Agreement

• The assignment must specify the amount of copyright. The creator shall not assign or waive the right to receive royalties to be shared on an equal basis with the assignee of copyright, subject to certain conditions.
• The ownership may be assigned either wholly or partially.
• The assignment should also specify the duration.
• The territorial extent of such assignment should be specified.
• The assignment shall be subject to revision, extension, or termination on terms mutually agreed upon by the parties.
• The creator is entitled to subsequent royalties in the course of future exploitation of a work.
• The assignee has the rights of translation, abridgment, adaptation, and dramatic and filmmaking in the work after obtaining the rights via assignment deed.

The main objective of the assignment process is to give financial and distribution benefits to the original work. Copyright assignment can prove to be a necessity in this world as it may lead to enhancing the potential of the original work by reaching several individuals as they may add their creativity to the original work. However, the practicality of copyright assignment has been controversial on several occasions due to the increasing number of Copyright Infringement cases. ✅ For more visit:  https://www.kashishipr.com/

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Copyright Assignments and Licences

Assignments, implied licenses, creative commons licensing, statutory licences.

Copyright is a personal property right. The interest conferred by copyright law is the exclusive rights to do acts comprised in the copyright. These rights can be assigned or licensed. An assignment of copyright is a transfer of ownership and interest in all, or some of the copyright. A license is a permission to do some of the acts comprised in copyright. Each of these will be considered in detail below.

Video overview by Nicolas Suzor on Copyright Assignments and Licences .

An assignment is a transfer of copyright ownership from one person (the assignor) to another person (the assignee). Section 196(2) provides that an assignment may be limited in any way, including by the specific rights assigned (the copyright owner does not have to assign all of their copyright interests at once), jurisdiction, or a period of time. If the assignment is with respect to partial rights, the copyright owner splits the copyright into separate interests.

Section 196(1) of the Copyright Act 1968 provides that: “Copyright is personal property and […] is transmissible by assignment, by will and by devolution by operation of law”.

Section 197 provides that future copyright can be assigned. Future copyright refers to a copyright interest that will come into existence at a future time or at a future event. Where a future copyright interest is assigned, copyright will vest in the assignee when the work comes into existence (for example, copyright in a yet unwritten book).

For example, when musicians become members of the Australasian Performing Rights Association (APRA), they grant an assignment to APRA the performance rights in all their present and future musical works. This enables APRA to collect performing rights licence fees on the musicians’ behalf.

An assignment must be in writing and signed by the assignor to be effective. 1

When copyright is assigned, the assignee acquires full rights with respect to the copyright interest assigned - for example, they may licence the interest, assign it to someone else, or sue another person for copyright infringement. The assignor retains no special rights in relation to the work and may even be sued for infringement by the assignee.

A license is a permission to use copyright material in ways that would otherwise infringe. The license can be limited by contract.

Video overview by Kylie Pappalardo on Copyright Licences .

An exclusive license is “a licence in writing, signed by or on behalf of the owner or prospective owner of copyright, authorising the licensee, to the exclusion of all other persons, to do an act that … the owner of the copyright would, but for the licence, have the exclusive right to do”. 2 s 10(1) Exclusive licences give the licensee the power to sublicense and the title to sue for infringement. 3

In the instance there is a non-exclusive licence, others may have rights to use or make use of the copyright work.

A license is the product. Where use of a product would necessarily infringe copyright (as in software), then it could be said that you are not paying for the product (i.e., CD), but the licence. You get some rights over the physical medium, but you do not have the full rights to make use of the works.

Often the licence is inside the box the software comes in – Shrinkwrap license. Or as a pre-requisite to a download – Clickwrap license.

Gratuitous licences may be revoked at any time. 4

Licenses can be implied from the circumstances. A newspaper editor has an implied licence to publish letters to the editor. This is always subject to directions to the contrary. An implied license also exists to use commissioned copyright material for the purposes contemplated.

Beck v Montana Constructions Pty Ltd (1963) WN (NSW) 1578

In the case of Beck v Montana Constructions Pty Ltd 5 a firm of architects was commissioned to draw plans for a block of units. When the owners sold the land they gave the purchaser the plans. The purchaser decided to build in accordance with the plans but not to retain the architect. The other architect who was retained produced plans which were a substantial reproduction of the first architect’s plans. The original architects sued the purchaser and its architect for infringement of the copyright in the sketch plans.

It was held that there was an implied licence in favour of the purchaser to use the plans in respect of the same land.

Creative Commons (CC) is a non-profit organisation which created a public licensing suite. The licenses are free, easy-to-use copyright licenses that provide a simple and standardised way to give the public permission to share and use creative work. The idea of the CC licenses is to help people legally share their “knowledge and creativity to build a more equitable, accessible, and innovative world”. Creative Commons “What we do”

Creative Commons licensing can be applied by any person to their work, and can be taken advantage of by any person to use the licensed work (provided it is in accordance with the terms of the license).

There are four conditions that can be applied to a Creative Commons license.

Video overview by Rachel Varshney on Creative Commons Licensing .

A statutory licence involves the copyright owner making the copyright work available for use (to a specific audience) without requiring permission. The copyright owner is then entitled to be compensated for the use of their work.

In December 2017 the statutory licensing scheme in Australia was simplified. The previous educational statutory licences in Parts VA and VB of the Copyright Act 1968 (Cth) was replaced by one simplified statutory licence. [^CA113NU] The statutory licence will be discussed in more detail in the Chapter on Copyright Limitations and Exceptions. [^CA113NU]: CA ss 113N - 113U

CA s 196(3)  ↩

CA   ↩

CA s 119  ↩

Trumpet Winsock v Ozemail [1996] 560 FCA 1  ↩

[1964-5] NSWR 229; (1963) WN (NSW) 1578  ↩

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25th October 2013

Does your copyright assignment actually work?

A recent case (B4U Network (Europe) Ltd v Performing Right Society Ltd) found that an agreement between two Bollywood film composers and a film production business, for the rights in relation to all of the composers’ present and future musical works for the film to be vested in the film’s producer, was ineffective.

In 2004 the Performing Rights Society (PRS), being a society formed to protect the copyright in musical works, had entered into a written agreement with the two composers of songs for Bollywood films. By this agreement, copyright that the composers “may acquire or own” while remaining members of the society was assigned to it. In 2008 the composers were commissioned by Indian producers Dharma Productions to compose the music and lyrics for the film Kurbaan. Under that agreement, the rights in relation to musical works composed for the film vested in the film’s producer and included all present and future works arising out of the contract and covered all territories of the world.

However, the B4U Network later broadcast a song from Kurbaan on its UK music channel. The PRS then proceeded against the Network for copyright infringement on the basis that copyright had vested in it due to the 2004 agreement with the composers. The court found that firstly, as both the 2004 and 2008 agreements were assignments for future rights, if the song came within the scope of the future assignment to the PRS under the 2004 agreement, under the rules of priority that assignment, being the first in time, took priority over the assignment under the 2008 agreement with Dharma.

The court further found that any future rights in songs which the composers “may” own came within the scope of the 2004 agreement and was assigned by the composers to PRS as the agreement did no more than refer to rights capable of being owned by them. Therefore, the court deemed that B4U had infringed copyright and the rights to the song were owned by the PRS not the film producer. 

At the time the 2004 agreement with PRS was struck, it was beyond argument that the composers’ rights in music they were yet to compose might be owned by them. It did not matter if the composers never actually owned the rights once they created, they only had to have the potential of owning the rights when the 2004 agreement was made.

This case demonstrates that it is possible for businesses and individuals to enter into agreements for the assignment of future copyright as well as existing copyright. However, the assignee should always ensure that the assignor is still the current proprietor and this highlights the needs for appropriate warranties to that effect.  

If you would like advise regarding effective Intellectual Property protection, please contact [email protected]

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Can I assign my copyright?

Yes, in principle you can, for example, sell your copyright or permit certain actions via a licence agreement. However, you cannot assign your ‘moral rights’, e.g. the right to be named as the author. An assignment agreement such as this would be invalid.

You can assign your copyright in written or verbal form, or even tacitly. The IPI does not have any sample contracts. We advise against using templates from the internet. It is better to formulate the agreement in your own words. If you are unsure, it is best to contact an attorney who specialises in copyright or licensing agreements. You can search for attorneys on the website of the Swiss Bar Association or the Democratic Jurists of Switzerland , for example.

Copyright and related rights can also be inherited. If the rights owner dies and if the rights have not been assigned to a third party, such as a producer, they are passed on to the heirs.

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Assignment of copyright: formalities

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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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