Assignment of Copyright

Assignment of copyright refers to exclusive transfer of certain or

all rights of the copyright owner, meaning thereby that it could be
with respect to all or any of the rights of the copyright owner. It
could be temporary or permanent. An assignment serves two
purposes. As far as the assignee is concerned, it confers on him
the right of exploitation of work for a specified territory or period.
For the assignor, it confers the right to receive royalty or other
consideration.2 Section 18 of the Act deals with assignment of
copyright.

Section 18(1) state 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
and either generally or subject to limitation and either for the
whole of the copyright or any part thereof. However, in the case
of assignment of copyright in any future work the assignment
shall take effect only when the work comes into existence. Unless
a medium of exploitation was available at the time of transfer or
is expressly specified in the agreement, the assignment will not
applied to those mediums. With respect to rights which are not
specified in the assignment, the assignor retains the ownership
for them.

By the Copyright (Amendment) Act of 2012, three provisos were

added to section 18. The first proviso deals with rapidly
developing ways of exploiting the copyrighted work in this era of
rapid technological development. As per this proviso, assignment
of copyright will not include assignment to use the copyright in
any method which was evolved after the assignment of the work.
Such rights should be expressly given to the assignee by term of
the agreement. This amendment does not deal with license, so
there is a possibility that the proposed amendment could be
circumvented by the grant of an exclusive licence rather than the
grant of an assignment.

This second proviso talks specifically about the literary or musical

work included in a cinematograph film. This proviso is mainly for
the benefit of author of underlying works used in cinematograph
films and sound recordings. As per this proviso the author of
literary or musical work included in a cinematograph film shall not
assign such work to any other person or waive his right to receive
royalties.

These provisions have been highly appreciated by the people in

film and music industry but is rarely made use of even after four
years of amendment

Section 19 of the Copyright Act discusses the mode of assignment

of copyright. Section 19 (1) states that assignment of copyright is
valid only when it is in writing and signed by the assignor or his
duly authorised agent. Further, it is required that the assignment
of copyright in any work shall identify such work and should also
specify the rights assigned. The duration and territorial extent to
which the rights of the assignee exist should also be specified in
the assignment.3

Further this section provides that the assignment shall also

specify the amount of royalty and any other consideration
payable to the authors or his legal heirs during the currency of
the assignment. The terms “royalty and any other consideration”
was added by the Copyright (Amendment) Act of 2012 in place of
“royalty payable, if any”. The assignment is also subject to
revision, extension or termination on the terms mutually agreed
upon by the parties.4

Section 18 makes it clear that the assignee must exercise his

rights provided under any of the sub- section of this sections,
within a period of one year. If the assignee fails to do this, his
rights will be lapsed unless otherwise mentioned in the
assignment.5 The period of assignment if not stated shall be
deemed to be for a period of 5 years and the territorial extent if
not specified will be presumed to extend to whole of India. These
provisions, however, will not be applicable to assignments made
before the Copyright Amendment Act 1994.6

The above said provisions are mostly for the benefits of the
assignee, to protect him from any malpractice used by the author
of the copyright work to earn more profit. Section 19 (8) was
added wide the amendment of 2012. This sub- section states that
the assignment of copyright in any work contrary to the terms
and conditions of the rights already assigned to a copyright
society in which author of the work is a member shall be void.

Assignments can be classified in two categories: legal assignment

and equitable assignment. The legal assignment of copyright in
existing works means transfer of right, title and interest of the
copyrighted work, either absolutely or partially. This assignment
will be subject to covenants entered into by parties. It may be an
absolute assignment or partial one. The equitable assignment
result when there is an agreement to assign the present work or
an agreement to assign future work.7

The Delhi High Court while discussing the effect of negative

covenants in agreement in Chancellor Master and Scholars of the
University of Oxford v. Orient Longman Private Limited and
Others, held that the negative covenant in the agreement
whereby defendant undertook not to publish or cause to be
published any work on the same subject at or about the price the
sale of which might reasonably be regarded as conflicting or likely
to conflict with the sale of copyrighted work without consent in
writing of plaintiff in the agreement, can be legally enforced being
not in restraint of trade.8

If there is any dispute with respect to assignment of any

copyright, then the Copyright Board on receipt of the aggrieved
party may pass any order as it deem fit after holding suitable
enquiry. Such order may include order to recover royalty also.
This provision is appended with certain provisos. The first proviso
to Section 19A mandates the Copyright Board to first satisfy that
the terms of assignment are not harsh on the assignor before
passing any order to revoke the assignment.

LICENCES

The provisions relating to Licenses have been discussed under

Chapter VI of the Copyright Act. The owner of a copyright in any
existing work or the prospective owner of the copyright in any
future work may grant any interest in the right, by license in
writing, signed by him or by his duly authorized agent. The
requirements specified above for an assignment (Section 19) will
apply for a License. The Copyright Board is empowered to grant
compulsory licenses under certain circumstances on suitable
terms and conditions in respect of Indian work.9

There can be two kinds of licenses: exclusive and non-exclusive.

Exclusive license means a license which confers on licensee or
persons authorized by him to the exclusion of all other persons
(including the owner of the copyright) any right comprised in the
copyright in a work. In the case of non-exclusive license, the
owner of the copyright retains the right to grant to more than one
person the licence in the copyrighted work. At the same time, he
can also exploit the work himself. 10

Furthermore, license could be voluntary or compulsory. Voluntary

licenses are those licences which are granted by the owner of the
copyright by his own free will while compulsory licenses are
granted by the Copyright Board under certain circumstances
which will be discussed in detail later in this chapter.

Difference between Assignment and

Licensing
The terms assignment and licensing are not interchangeable. An
assignment is different from license.11 The difference between
two are important for various reasons. For example, failure to pay
royalties under the original agreement may in the case of license
enable a license to be revoked but in case of assignment it does
not lead to revocation of the copyright which has been assigned.
P12

In Deshmukh & Co. (Publishers) Pvt. Ltd. v. Avinash Vishnu

Khandekar & Ors.,13 the Bombay High Court stated:

“An assignment may be general i.e., without limitations or an

assignment may be subject to limitations. It may be for the whole
term of the copyright or any part thereof. An assignment transfers
an interest in, and deals with the 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 the
absence of license would be unlawful. An assignment transfer’s
title in the copyright, a license merely permits certain things to be
done by the licensee. The assignee being vested title in the
copyright may reassign it to any other person. The license is
personnel and therefore not transferable or not assignable
without the grantor’s consent. Furthermore, the assignee can sue
for infringement without joining the assignor. The licensee cannot
sue in his own name for infringement of the copyright, since
copyright belongs to the licenser.”

In Hole v. Bradbury,14 it was observed that in the agreements

between authors and publishers of theatrical products, it is, often
difficult to distinguish between sole and exclusive licence and an
assignment of copyright. Where the agreement between the
author and publisher contains no express term as to the
copyright, if consideration is paid to the author by the way of
royalties or a share of the profits instead of a sum of money paid
down, the inference is that the copyright is not assigned but that
a sole and exclusive licence is conferred upon the publisher.
In the case of TK.P. Sundaram v. Rattan Prakashan Mandir, 15 the
court held:

"It is extremely difficult sometimes to distinguish in case of

agreement between authors and publishers and sellers, whether
it is an exclusive licence or partial assignment of the copyright to
publish and sell. If the agreement contains express words or
terms as to copyright then inference can be drawn. Where the
agreement contains no such terms, but the consideration is the
payment of royalties or a share of profits instead of downright
payment, then the copyright is not assigned. It would be a case of
conferment of an exclusive licence to publish and sell."

Assignment and licensing affect the right of the parties i.e., the
assignors, assignee, licensor, and licensee in different manners,
one transfers the title in copyright while the other grants certain
rights with respect to copyrighted works. In this situation, it
becomes important to distinguish between the two. Though the
distinction is not always easy, as the dividing line is very thin, the
only way to decide is looking at the intention of the parties by
referring to the terms of the contract. Compulsory Licence in
works withheld from public

Compulsory Licence is granted in cases of work withheld from

public. The basic purpose of the grant of compulsory license is to
make the work available to the public, where author is not taking
proper steps for communicating the work. The provisions relating
to compulsory licenses are for general good and meant to balance
the needs and the rights of society.

Article 9(2) of the Berne Convention puts a limitation in the form

of compulsory license on the exclusive right of reproduction
provided to the owner of the copyright in certain circumstances.
Article 9 (2) of the Berne Convention reads:

“It shall be a matter for legislation in the countries of the Union to

permit the reproduction of such works in certain special cases,
provided that such reproduction does not conflict with a normal
exploitation of the work and does not unreasonably prejudice the
legitimate interests of the author.”

Article 9(2) of the Berne Convention lays down a three-step test

for the exceptions that can be laid for grant of compulsory
licenses. The three-step test is as follows:

1. The first step requires that the exceptions should be confined

to special cases;

2. The second step requires that exceptions should not conflict

with normal exploitation of the work; and

3. The third step requires that such exceptions should not

unreasonably prejudice the legitimate exceptions of the author.16

Sections 31 and 31A of the Indian Copyright Act deal with the
concept of compulsory licensing. Compulsory licenses can be
granted for a variety of reason like in case of unpublished work,
for cover versions for the benefits of disables etc. under Indian
Copyright Act.

Conclusion

After having a look at the various provisions of The Copyright Act,

1957 and various case laws it is clear that our legislatures have
taken all the measures to protect the rights of the authors of
copyright. The amendment of 2012 brought laudable set of
changes for the benefit of the authors of underlying work, which
were earlier ignored by the Act. Though these provisions have
hardly been used even after four years of amendment. People
have found out ways to avoid these laws. There are some
loopholes that still need to be worked on like nowhere in the
Copyright Act, the word royalties have been defined.