Copyright Assignment and Licensing

The article 'Copyright Assignment and Licensing' by delves into the distinctions between copyright assignment and licensing, shedding light on their respective roles and significance.

Copyright is a legal protection given to the owners or authors of different types of work for a designated period to acknowledge their contribution. The main purpose behind providing copyright protection is to ensure that the interests of the owners/creators are protected and widespread of the mechanism behind it. Thus, this article encompasses & analyses the importance of the concept of licensing and assignment in intellectual property rights.

Introduction

The concept of protection commenced with the protection of the rights of authors of books/written works but with due progress in technology, the mode of exploitation has started to occur in numerous ways. Gone are the days, when the owner of the work purely exerts ownership and earns revenue as an outcome of his rights, through the concepts such as assignment & licensing by mutual sharing of benefits even a 3rd party can enjoy the ownership or certain rights for a specific period.

Copyright Assignment

According to the copyright assignment, the owner of the work has the right to assign the rights he owns, to any other person. By the process of assignment, the assignee is entitled to all the rights of the owner.

For example, in case an assignor of the copyright is entitled to any rights which form part of that copyright, he shall be regarded as its owner for those rights. The assignor, when it comes to unassigned rights, also becomes the owner of the copyright. If an assignee dies before the work begins, his legal representatives will be entitled to receive the benefits of the assignment. The concept of assignment is laid down under Section 18 of the Copyrights Act of 1957.

In the case of Video Master v. Nishi Production, 1998(1) ALL MR 620, the main issue which was brought into the limelight before the high court of Bombay was whether the right to satellite broadcasts would also be included in the assignment of video rights. The Court expressed its opinion by mentioning that they find merit in the contentions of the defendant as there are numerous types of communication such as video telecasting, and satellite broadcasting etc., It was found that the film's owner had a unique copyright that he could pass on to other persons. Consequently, the owner of the film has a separate right to the satellite broadcast copyright, and the video copyright assigned to the applicant does not include that right.

Mode of Assignment

Under Section 19 of the Copyrights Act of 1957, an assignment will be considered to be valid only if it is expressly mentioned in written form duly signed by the assignor or his agent. The assignment of copyright in a work should set out the works, as well as the types of rights assigned and their duration and territorial scope. In addition, it must also necessarily include the royalty payment to be done if there are any to the assignor or his legal heirs during the pendency of assignment and under the terms agreed between the parties, this assignment shall be reviewed, extended or terminated.

For example, in case the period of the assignment is not expressly mentioned anywhere, then it will be automatically considered as 5 years from the date of assignment. It shall be construed as applicable in the entire territory of India if the territorial scope of the assignment is not expressly mentioned anywhere.

In addition, Section 19(8) states that the copyrighted work entrusted in breach of the terms and conditions under which rights are assigned to a specific copyright organisation where the author is a member shall be void.

As per Sections 19(9) & 19(10), the assignment of copyright does not affect the author's right to an equal share of the royalties and the remuneration due for the use of his protected work to make a cinematograph film or sound recording.

On the other hand, under Section 19(a), if the assignee blatantly fails to make use of the rights assigned to him, if it is found that it is not because of any act or omission by the assignor that this failure has occurred, and even if a complaint is received from the assignor, then the Appellate board may cancel the assignment after examining it as necessary.

In the case of Saregama India Ltd v. Suresh Jindal, it was laid down that the owner of the copyright in the future work may assign the copyright to any person, either wholly or partially, for the whole or part of the copyright or any part of the copyright for the purposes of this Act, and that the assignee for this Act shall be regarded as the copyright holder.

Copyright Licensing

Under the concept of licensing of copyright, the author or the owner who possesses exclusive rights over a work is vested with the right to grant the license to any other party. As contained under Section-30 of the Copyrights Act of 1957, which elucidates that any author or owner who owns an exclusive right over a work has the right to grant a license provided that the license must be in written form which must be duly signed by him or his authorizing agent.

It is significant to note that a license shall be granted for either a present work or future work and the licensing period will come into effect after the work comes into existence.

In case, if the licensee of a future work dies before that work comes into existence, its legal representatives are entitled to benefit from his licence if it is not otherwise provided for.

A license is typically more or less similar to that of an assignment deed. It is important to note down the particulars which it contains in it. They are mentioned below:

• Time period of the license
• The rights which have been licensed
• Geographical limit or extent of the license
• Amount of royalty to be paid as consideration
• Clauses & Conditions pertaining to termination, revision & extension.

In general, voluntary licenses are of 5 types namely:

Exclusive- Under Section 2(j) of the copyrights act, the term exclusive licence has been standardly defined as a licence, which grants rights in respect of a copyrighted work to the licensee and persons authorized by him but does not apply to any person outside that group.

Non-Exclusive-The right of exclusion is not granted under this provision. It's a matter of giving the authority to do something that otherwise would have been an infringement. For example, if the proprietor grants an exclusive right, he relinquishes all of his rights and retains no entitlement to economic rights that have been transferred.

Co-exclusive- In this case, the licensor grants licences to a maximum of one licensee but recognises that only a limited number of licensees will be granted licences.

Implied- Under this type, the author is implicitly allowing or authorizing the use of his work. For example, if the owner is aware of the fact that someone was taking advantage of his talents, for instance, but he didn't act.

Solo- It is a type where the licensor and licensee can exclusively use it for the exclusion of any other 3rd party.

Statutory License

On the other hand, the concept of statutory license is different as it does not focus on the conduct of the licensor. 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 currently 2 types of statutory licenses which are mentioned below:

• Cover version recording license as contained under Section 31C
• Broadcasting license as contained under Section 31D.

Assignment v. Licensing

• Under a licensing agreement, the owner of the work grants a license to utilize his work in a certain way but the ownership or title of the work vests with himself. On the other hand, in an assignment, the owner of the work transfers or assigns all the rights he possesses over the work including the title.
• The concept of licensing permits long-term compensation & reversal of rights if it has been found that the deal was not profitable as it desired to be. In an assignment, there is no such scope for the reverse of title or the ownership as it stipulates payments to be made upfront.
• A licensee is permitted to make alterations to the extent that restrictions are imposed on him. Whereas, in an assignment making alterations are not allowed as the complete rights of the owner are transferred to the assignee.
• Under the concept of licensing, there is no requirement for notification. Whereas in an assignment, the assignee has to apply for a transfer of ownership. He becomes the owner of the work only after the registrar receives the application comprising all the relevant information.

Benefits of Licensing

• It potentially helps to enhance marketing.
• It helps to generate higher revenues at less cost of production.
• It helps in the commercial expansion of business. Through the process of licensing, introducing work in foreign markets are much more simplified.
• Investments are comparatively low but there are payments in return in the form of royalties.
• Flexible in nature as the parties are vested with the right to make alterations depending upon the circumstances.

Benefits of Assignment

• It helps to increase financial gain as the owner of the work can assign his complete ownership to a 3rd party for a lump sum consideration.
• It helps in mitigating risks and reduces costs.
• The assignment provides clarity about the ownership in case multiple parties claim ownership rights.

Compulsory License

Compulsory licenses are those which create an impact on the identity of the licensee and other party i.e., the owner who is willing to do business on certain terms and conditions including payment of royalty etc. In simple terms, an unjustified refusal to deal with a person is usually the cause of a compulsory licence.

The proprietor retains certain rights of choice in terms of applying for adequate licensing agreements with those he considers appropriate, but is also allowed to determine the conditions of such contracts without undue delay. The provisions related to the concept of compulsory licensing are covered under Sec 31A & 31B of the copyrights act.

Under Section31A of the copyrights act, if an author/owner of the work is found to be dead or cannot be found anywhere left untraced, then in such case any person may file an application before the copyrights board seeking for licence to publish it. It is important to note that the person who intends to file such an application must publish his proposal in one issue of a newspaper in a particular language. Also, the application must be filed in the prescribed form along with the appropriate fee.

On the other hand, under Section 31B of the copyrights act, any person who is working for the benefit of disabled persons based on profit may file an application in the prescribed form before the concerned board seeking a compulsory license to publish any work in which ownership right prevails.

Conclusion

Thus, based on the above-mentioned information it is evident that the terms ‘assignment’ and ‘licensing’ hold significant importance in the concept of IP rights. As mentioned earlier, after the process of assignment the assignee consequently becomes the owner whereas the licensee is allowed to exercise limited rights.

Both have their pros and flaws but it’s nevertheless to mention that they play a pivotal role in the concept of intellectual property rights.

References

[1] How is Copyright License different from Assignment in India, Available Here

[2] Assignment and Licensing of Copyrights under Copyrights Act, Available Here

[3] What is a Copyright Assignment? A Complete Guide With Benefits, Available Here

[4] What is the concept of Assignment of Copyright?, Available Here

[5] Intellectual Property Rights, Available Here

[6] Advantages of Licensing Agreement, Available Here

[7] Importance of Assignment Agreements under Intellectual Property Laws in India, Available Here

[8] Intellectual Property: Assignment & Licensing, Available Here

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