assignment and transmission of copyright

Assignment and Licensing of Copyrights under Copyrights Act

• Intellectual Property Rights Blogs 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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Assignment, Transmission, and Relinquishment of Copyright

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Why do we need legislation on biodiversity, origin and development of copyrights.

Copyright is a legal right granted to the creator of an original work, including literary, dramatic, musical, and artistic works.

It provides the creator exclusive rights to use, distribute, and reproduce the work.

In India, the Copyright Act of 1957 governs the protection and enforcement of copyright.

This article explores the assignment, transmission, and relinquishment of copyright, highlighting the relevant sections of the Copyright Act of 1957.

Definition of Copyright

Under Section 2(d) of the Copyright Act, 1957, “ copyright ” refers to the exclusive rights granted to the creator of an original work, allowing them to control the use and distribution of that work. The term “work” in this context includes:

• Literary works: This includes books, articles, essays, and any other written material.
• Dramatic works : This includes plays, scripts, screenplays, and other works intended for stage or screen performance.
• Musical works: This covers compositions of music, whether with or without accompanying lyrics.
• Artistic works: This includes paintings, drawings, sculptures, photographs, and other forms of visual art.
• Cinematograph films: This covers movies and other visual recordings, including sound recordings that accompany them.
• Sound recordings : This includes audio recordings, whether musical, spoken word, or any other form of recorded sound.

Meaning of Copyright

The meaning of copyright encompasses a bundle of rights that the law provides to the creator or owner of the original work. These rights typically include:

• Reproduction Righ t: The exclusive right to reproduce the work in any material form, including storing it electronically.
• Distribution Right: The right to distribute copies of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending.
• Public Performance Right : The right to perform the work publicly, whether directly or by means of any device or process.
• Adaptation Right: The right to make adaptations, translations, or other derivative works based on the original work.
• Communication to the Public Right : The right to communicate the work to the public, including broadcasting, streaming, or making it available online.
• Moral Rights: These include the right to claim authorship of the work and to oppose any distortion, mutilation, or other modification of the work that would harm the creator’s reputation.

Assignment of Copyright

Assignment of copyright refers to the transfer of ownership rights from the original copyright holder (assignor) to another party (assignee).

This transfer can be partial or complete, depending on the terms agreed upon by both parties.

The assignment can cover all rights or specific rights such as reproduction, distribution, or public performance.

Legal Provisions

Under the Copyright Act of 1957, Section 18 deals with the assignment of copyright.

It states that the owner of the copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copyright, either wholly or partially.

The section outlines the necessary conditions and formalities for a valid assignment.

Procedures and Formalities

For an assignment to be valid, it must be in writing and signed by the assignor or their authorized agent.

The document should specify the rights being assigned, the duration of the assignment, and the territorial extent of the rights.

Additionally, the assignment must clearly outline any terms and conditions, including the payment of royalties to the assignor.

Rights of the Assignee

Upon a valid assignment, the assignee acquires the rights specified in the assignment agreement. These rights may include the right to reproduce, distribute, and publicly perform the work.

The assignee can also further assign or license these rights to others, subject to the terms of the original assignment agreement.

Transmission of Copyright

Transmission of copyright occurs when the rights in a copyrighted work are transferred from one party to another by operation of law.

This can happen through inheritance, bankruptcy, or other legal mechanisms.

Transmission differs from assignment as it is not based on an agreement between the parties but rather a legal process.

Section 20 of the Copyright Act of 1957 addresses the transmission of copyright. It states that copyright is transmissible by testamentary disposition or by operation of law as movable property.

The section highlights the legal framework governing the transfer of copyright in situations such as inheritance or bankruptcy.

Types of Transmission

Transmission of copyright can occur in various ways, including:

• By Will: The copyright holder can transfer their rights through a will. Upon the holder’s death, the rights are passed to the beneficiaries named in the will.
• By Operation of Law : In cases of bankruptcy or insolvency, the copyright may be transferred to creditors or a trustee appointed by the court.
• Through Inheritance : If the copyright holder dies intestate (without a will), the copyright rights are transferred to the legal heirs according to the succession laws.

Rights of the Transferee

The transferee, whether by inheritance, bankruptcy, or other legal means, acquires the rights of the original copyright holder.

These rights include the ability to exploit the work as permitted by the Copyright Act.

The transferee can also assign or license these rights to others, subject to any legal restrictions.

Relinquishment of Copyright

Relinquishment of copyright refers to the voluntary surrender of copyright rights by the copyright holder.

This can be done for various reasons, including the desire to place the work in the public domain or to disclaim rights due to lack of interest or economic benefit.

Section 21 of the Copyright Act of 1957 addresses the relinquishment of copyright.

It states that the owner of a copyright may relinquish all or any of the rights comprised in the copyright by giving notice in the prescribed form to the Registrar of Copyrights.

The section outlines the procedure for relinquishment and its effects.

For a valid relinquishment, the copyright holder must submit a notice in the prescribed form to the Registrar of Copyrights.

The notice should clearly specify the rights being relinquished and be signed by the copyright holder or their authorized agent.

Upon receipt of the notice, the Registrar will make the necessary entries in the Register of Copyrights.

Effects of Relinquishment

Once relinquishment is effected, the specified rights are no longer protected by copyright.

The work enters the public domain, allowing anyone to use, reproduce, and distribute the work without seeking permission or paying royalties.

Relinquishment is irreversible, and the former copyright holder cannot reclaim the rights once relinquished.

Indian Performing Rights Society Ltd. vs Eastern Indian Motion Pictures Association (1977)

Citation : AIR 1977 SC 1443

Summary : In this landmark case, the Supreme Court of India dealt with the issue of assignment and licensing of copyright in musical works. The Indian Performing Rights Society (IPRS) claimed rights to perform certain songs in public, arguing that they held the exclusive performing rights. However, the Eastern Indian Motion Pictures Association contended that the rights to the music were assigned to the film producers. The court held that the assignment of rights by the music composers to the film producers was valid, and the IPRS did not have exclusive rights to perform the music in public.

Entertainment Network (India) Ltd. vs Super Cassette Industries Ltd. (2008)

Citation : AIR 2008 SC 61

Summary : This case involved the assignment of copyright in sound recordings. Entertainment Network (India) Ltd. (ENIL) operated radio stations and sought a compulsory license to broadcast songs owned by Super Cassette Industries Ltd. (SCIL). SCIL argued that ENIL could not use the songs without obtaining a license from them. The Supreme Court ruled in favor of ENIL, granting them a compulsory license under Section 31 of the Copyright Act, 1957, highlighting the circumstances under which compulsory licenses can be issued for copyrighted works.

Rameshwari Photocopy Services vs University of Delhi & Others (2016)

Citation : 2016 SCC OnLine Del 4541

Summary : In this case, the Delhi High Court addressed the issue of the transmission of copyright in educational materials. The plaintiffs, publishers of academic books, filed a lawsuit against Rameshwari Photocopy Services for making photocopies of their copyrighted works and distributing them to students. The court held that the act of photocopying was not an infringement of copyright as it fell under the “fair use” provision for educational purposes. This case emphasized the limitations on copyright holders’ rights in the context of educational use.

Anil Gupta & Anr. vs Kunal Dasgupta & Ors. (2002 )

Citation : 2002 (25) PTC 1 (Del)

Summary : Anil Gupta, the creator of a popular TV show format, filed a suit against Kunal Dasgupta and others for unauthorized use of his show’s format. The Delhi High Court examined whether the format of a TV show could be protected under copyright law and whether there was an assignment of copyright. The court ruled in favor of Anil Gupta, recognizing the format as a copyrightable work and holding that the defendants had infringed Gupta’s rights by not obtaining a proper assignment or license for the use of the format.

Amarnath Sehgal vs Union of India (2005)

Citation : 117 (2005) DLT 717

Summary : This case involved the relinquishment of copyright in an artistic work. Amarnath Sehgal, a renowned sculptor, created a mural for the Government of India, which was later damaged and neglected. Sehgal filed a suit for damages and the right to remove his mural. The Delhi High Court recognized the moral rights of the artist under Section 57 of the Copyright Act, 1957, which includes the right to protect the integrity of the work. The court ruled in favor of Sehgal, ordering the government to return the mural to the artist and pay damages for the moral rights violation.

Understanding the mechanisms of assignment, transmission, and relinquishment of copyright is crucial for creators, rights holders, and legal practitioners.

The Copyright Act of 1957 provides a comprehensive framework governing these processes, ensuring that the rights of all parties involved are protected and enforced.

By following the legal provisions and formalities, stakeholders can effectively manage and transfer copyright rights, fostering creativity and innovation in the creative industries

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The IPThink-Tank

Where ideas meet success..., assignment, transmission, and relinquishment of copyright : an overview.

Signifying the objective of copyright as being the step towards safeguarding the interest of a creator alongside the dispersal of knowledge, the protection that was rendered initially with recognizing and identifying the rights of authors in their books, is with time and evolution in technology, witnessing a major change in the nature of work and its mode of exploitation. Therefore, the association of monetary benefits and copyright work introduces the aspect of economic rights. The Copyright Act, 1957 as amended in 2012, sets quite the bandwidth for creators and authors for acquiring pecuniary benefits alongside success, in the process of encouraging continuous creativity and innovation from creators in the future.

When talking of assigning copyright, it certainly bears a purpose. That is, in this process, the assignee gets the right to exploit the innovation for a stipulated time within a particular region. The assignor, on the other hand, receives a royalty. The owner of the copyright of a work is vested with the authority to assign his copyright to another person. Thereafter, the assignee of the copyright becomes entitled to any right falling within the ambit of the copyright and shall be treated as the owner of the copyright in respect of those rights. When the owner of a copyright dies, if he dies intestate then his copyright passes on to his representatives. Section 18 thereafter, also goes on to throw light upon the aspect of an owner of copyright assigning the right in an existing work as well. As per Section 18, a prospective owner, the person who is not the first owner in the future work, can assign the copyright. But, again, as laid down by the proviso of this section, the assignment can only take place after that particular work comes into existence, not before that.

But assignment directly doesn't indicate an absolute assignment. The intention of the parties associated with the nature and extent of the assignment has to be worked out from the agreement. It was seen in the case of Saregama India Ltd. vs. Suresh Jindal (2007) , that if an assignment has been made for a limited period in line with the agreement, then, one cannot contend on the basis of the assignment of copyright rendering absolute ownership for an unlimited period.

The conditions for assigning a copyright have been laid under Section 19 of the Copyright Act, 1957. It is quite significant to be aware of the fact that the assignment has to be rendered in writing and signed by the assignor or an authorized agent, otherwise, it shall not be valid. A careful reading of the agreement and straining out the intentions of the parties are quite crucial since the copyright grants are often misused by the owners.

Relinquishment of the copyright requires the author to give notice as per the set form to the Registrar of Copyrights or via public notice. The Registrar then publishes the notice in the Official Gazette or in a different way. Within 14 days from the publication of the notice in the Official Gazette shall post the notice on the official website so that it remains in the public domain for not less than 3 years. As per Section 21 (1) and (2), the relinquishment of copyright shall not affect any pre-existing rights in favour of any person on the date of the notice. Section 21 goes on to provide the owner of a work the right to relinquish all or any of the rights in a work. Relinquishment indicates the handing over of the rights in the copyrighted work, also meaning the author would no more have the rights surrendered and cannot claim ownership over it. The author can determine the rights that they want to relinquish.

https://selvams.com/india/copyrights/relinquishment-of-copyright-in-india/

https://blog.ipleaders.in/concept-assignment-copyright/

https://taxguru.in/corporate-law/assignment-copyrights.html

https://www.mondaq.com/india/copyright/854828/assignment-and-licensing-of-copyright

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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 2024

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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