A Comprehensive Analysis on Assignment of Copyright

Ashish M. Shaji

09 Apr, 2020

Introduction

Copyright is the exclusive right granted to the copyright holder to protect, sell, print, publish, and record sound or artistic works. Copyright acknowledges the creative expression of an intellectual mind. The primary objective of copyright is to grant legal protection to the creator with an opportunity to make economic gains out of their creations. Copyright is regulated by the Copyright Act, 1957. It gives recognition to the original work and provides many rights to the copyright holders, depending on the nature of the work. Recognition of their work and earning rewards for their work motivates and persuades the creators to come up with creative ideas which they translate into expressed form. A copyright holder can also share his or her creative expression with others for mutual benefits. It can be achieved through an assignment of copyright. What is its meaning? What are the ways of assigning? What are the features? All these questions shall be covered in this article on Copyright Assignment.

Meaning of Assignment of Copyright

An assignment is, in essence, 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 expressed form and not merely 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 to the assigned work.

Section 18 of the Copyright Act specifies that where the assignee of copyright becomes eligible for any right comprised in the copyright, the assignee shall be treated as the owner of the copyright with respect to those rights. The one who assigns shall also be treated as the owner of the copyright with respect to unassigned rights. In case of the death of the assignee, before the work comes into existence, the legal representatives of the assignee will be entitled to the benefits of the assignment.

Mode of Assignment of Copyright

There are certain requirements that must be met in order to assign copyright. Section 19 of the Copyright Act states that no assignment of copyright shall be valid unless it is in writing and signed by the assignor or by his authorised agent. The assignment of copyright in any work shall identify such work specifying the rights assigned and the duration and territorial extent of such assignment. It must also mention the amount of royalty payable, if any, to the author or his legal heir during the continuity of the assignment and the assignment will be subject to revision, termination or extension on conditions agreed upon by the parties mutually.

If the assignee does not use the rights assigned to him within a year from the date of assignment, the assignment shall be deemed to have lapsed in respect of such rights after the expiry of the said period unless mentioned otherwise in the assignment. In case the period of assignment is not mentioned, it shall be deemed to be five years from the date of assignment. In case the territorial extent of the assignment of rights is not mentioned, it shall be understood to extend within India.

Further section 19(8) specifies that the assignment of the copyright of work against the terms and conditions upon which the rights have been assigned to copyright society in which the author of the work is a member shall be void. According to sections 19 (9) and 19(10), the assignment of the copyright for making a cinematograph film or sound recording will not affect the rights of the author to claim for an equal share of the royalties and consideration payable in relation to the use of his protected work. 

Assignment of Copyright by Operation of Law

Assignment of copyright by operation of law means that if the owner of the copyright dies, the copyright shall be passed on to his personal representative as part of the estate if no will has been executed. Section 20 contains that if a person is entitled to copyright and that work has not yet been published before the death of the testator, and such person shall be considered as having copyright in work unless a contrary intention is shown in testators will or any codicil.

Moral Rights of the Author of the Work

The following are the moral rights of an author of work:-

• The original creator of the work has the right to claim the ownership of that work;
• If there is any tampering with the original work, the creator shall have the right to claim damages. Tampering here includes distortion, modification or mutilation of the original work;
• If by the omission or commission of any act of the assignee, any harm is being caused to the goodwill of the original creator, then he shall have the right to claim damages. It is important to note that such an act should have been done before the expiry of the term of the assignment.

Moral rights are such rights that are independent of the author’s copyright. It shall remain with the author even if he has assigned his copyright to someone.

Disputes related to the Assignment of Copyright

According to Section 19(a), the appellate board can, if it receives a complaint from the assignor and on holding an inquiry as it may think fit, revoke such assignment, in case the assignee fails to make enough exercise of the rights assigned to him. Such failure is not attributable with respect to an act or omission of the assignor.

The appellate board has the power to pass a suitable order on receipt of a complaint from the aggrieved party, in case of a dispute related to the assignment of copyright, and after conducting such inquiry as it deems fit including an order for the recovery of the royalty payable;

• Provided that the Copyright Board will not come to a conclusion to revoke the assignment till it is content with the fact that the terms of assignment are harsh to the assignor if the assignor is also the author,
• Further, provided that no order for revocation of assignment shall be made within a five year period from the date of such assignment.

 A conscious effort has been made to define the pre-requisites for the assignment of copyright, keeping in mind both the assignor and the assignee, and also to provide for contingencies with regard to which the instrument of assignment is not definite in order to protect the interest of the assignor. The amendment to the Copyright Act also provides remedies to the assignor through copyright.

Difference between Assignment and Licensing of Copyright

Copyright licence and assignment of copyright are two different terms that cannot be used interchangeably. Each of them is different in its own way. A licence provides an authorisation of an act, and without it, the authorisation would amount to an infringement. Licensing generally involves licensing some of the rights and not all of them. It can be either exclusive or non-exclusive. In case of assignment, it involves the disposal of the copyright which in simple words means, the assignor assigns the copyright to another person or the transfer of ownership of the copyright to some other person whereas in licence only some interest in intellectual property is transferred and ownership is not transferred to the licensee. A licence doesn’t 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 alterations provided that his licence doesn’t restrict that right. In case there is a failure in paying the royalties, the licensor can revoke the licence. When it comes to the assignment, it 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 copyright assignment, does need to be signed 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 anyone who is the owner of a copyrighted work thinks about assigning the copyright, he or she can consider licensing their copyright instead of assigning it. It would help you in retaining ownership, thereby licensing only certain rights to another party. An assignment basically transfers an interest, and it deals with copyright according to section 14 of the Copyright Act, whereas license doesn’t convey copyright; instead, it only grants a right to do something that would be unlawful if done without a licence.

Relinquishment of Copyrights by the Author

The Copyright Act, 1957, contains the provision of relinquishment of the rights of an author in the copyrighted work. An author can give notice to the Registrar of Copyrights in a prescribed form or through public notice. However, the relinquishment of such rights shall not affect the rights which are in favour of any person on the date of the notice.

The Registrar of Copyright will then publish the notice in the official gazette. The Registrar will post the notice on the website of the copyright office in 14 days from the publication of the notice in the gazette so that it will remain in the public domain.

The relinquishment of copyright will ensure that the work falls into the public domain from the date the notice is published. However, if the rights are in favour of some other person on the date of the notice, such rights won’t be affected. Thus, the work shall fall in the public domain as soon as the rights of other person terminate.

Conclusion