case laws on assignment 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 2023

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
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Marquette University Law School Faculty Blog

The Copyright Act: Standing and “Right to Sue” Assignments

Post author: Emil Ovbiagele
Post published: November 1, 2017
Post category: Intellectual Property Law / Public
Post comments: 6 Comments

Enforcement Action Rights under the Copyright Act

According to the federal Copyright Act, only “[t]he legal or beneficial owner of an exclusive right under a copyright is entitled , subject to the requirements of section 411, to institute an action for any infringement of that particular right committed while he or she is the owner of it.” 17 U.S.C. § 501(b) (emphasis added).

The Copyright Act lists the following exclusive rights of the owner of a copyright:

(1) to reproduce the copyrighted work in copies or phonorecords; (2) to prepare derivative works based upon the copyrighted work; (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; (4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

17 U.S.C. § 106. But “a person holding a non-exclusive license is not entitled to complain about any alleged infringement of the copyright.” HyperQuest, Inc. v. N’Site Sols., Inc., 632 F.3d 377, 382 (7th Cir. 2011). In order words, to have the requisite standing to sue, a plaintiff must exclusively own one of the enumerated rights listed above. Consequently, enforcement actions are limited to the specific rights exclusively owned. For example, a plaintiff who owns the exclusive rights to perform a literary work can only sue to enforce that specific rights. Such a plaintiff, cannot go after alleged infringers making unauthorized copies of the literary work.

Bare “Right to Sue” Assignments

Most federal courts have concluded that Congress did not intend for the “right to sue” to be a separate right because it was not included as a divisible right under the Act. The Copyright Act does not contemplate any transfer other than an ownership interest along with the enumerated six exclusive rights.

In Righthaven v. Democratic Underground , the imprudence of allowing assignments of such bare rights were made clear. 791 F. Supp. 2d 968 (D. Nev. 2011) In 2011, Righthaven LLC sued Democratic Underground for a five-sentence excerpt of a Las Vegas Review Journal news story that a user posted on the forum, with a link back to the Journal’s website. At the same time this lawsuit was going on, Righthaven had developed quite the litigious reputation. They brought over 200 similar suits.

But Righthaven never created, produced, or distributed any content. Instead, all they did was scour the internet looking for Review-Journal stories posted on blogs and online forums. They brought these suits under a “right to sue” assignment. Righthaven never actually owned an exclusive right to any of the copyrighted materials. They were copyright trolls.

The court stated “Righthaven and Stephens Media have attempted to create a cottage industry of filing copyright claims, making large claims for damages and then settling claims for pennies on the dollar, with defendants who do not want to incur the costs of defending the lawsuits.” Righthaven, LLC v. Democratic Underground, LLC , No. 2:10-cd-1356-RLH-GWF (D. Nev. Apr. 14, 2011), ECF No. 94. Judges who are confronted with these bare “right to sue” cases usually award significant attorney fees to the prevailing defendants, even at the motion to dismiss phase.

Parties intending to convey enforceable exclusive rights to a copyright must shore up their agreements to make the intent clear. And merely sprinkling the “exclusive license” lingo within a licensing or assignment agreement doesn’t suffice. See HyperQuest, Inc. v. N’Site Sols., Inc. 632 F.3d 377 (7th Cir. 2011). Thus, an exclusive right must be exclusive. An assignment is not exclusive if some form of right to limited use and distribution to other third parties is reserved.

In the copyright world, the “substance and effect” of any written assignment must reflect a true, even if temporary, transfer of complete ownership of a copyright interest. Overly aggressive plaintiffs who ignore this simple but important axiom of copyright law, do so at their own peril.

Cancer and mentors, truth in sentencing, early release options both have appeal, o’hear says, deconstructing our segregated reality, this post has 6 comments.

I have an overly aggressive defendant who has lots of money, is an internet pirate, has no exclusive or beneficial rights and want to be a defendant real bad!

Rita Hutchens

I represent the exclusive owner of the legal rights in a literary work that has been infringed. My client who is resident abroad intends to give me a Power of Attorney to institute legal proceedings against the infringer. Does my client have the right to do this ?

I practice family law, so I don’t know 100%, but what seems logical to me is that if you sue in your name based on the POA, that would not work. If you sue with your client, the copyright holder, under the Copyright Act but you can execute litigation documents based on the POA, that would be acceptable.

I had a registered copyright to the software I created for 15 years, but a federal judge found (and the Ninth Circuit affirmed) that my company (no longer under my control) owned my copyrights even though there was no written agreement transferring ownership. See Johnson v. Storix (2017). Storix recorded the judgment with the Copyright Office, but not the actual ownership transfer because it has no written assignment. A federal court has no authority to invalidate a copyright registration or order a copyright transfer except involving common law (and I’m not bankrupt, divorced or dead.)

How can Storix enforce any rights under the Copyright Act if the copyright is still registered to me? Does the Ninth Circuit ruling establish Storix as the copyright owner in other circuits, or would they defer to the 2018 Supreme Court decision in Fourth Estate v. Wallstreet.com requiring a valid registration before instituting an infringement action?

Serious issues, what really is copyright? And why would anybody want to copy other people’s way of thinking. I’ve never had to copyright nobody’s work. A person fails to be a leader but yet a follower. I’m not a business person and then again I lead my own actions. Thank you

Communication key word: The world fails to understand this. Take control of been yourself, trust yourself to do right with whoever you encounter. Thank you

Understanding an assignment of copyright agreement

Did you know you can assign, or transfer, your copyright to someone? Find out what information to include in your agreement and how you can make sure your interests are protected.

Find out more about business management

by Ronna L. DeLoe, Esq.

Ronna L. DeLoe is a freelance writer and a published author who has written hundreds of legal articles. She does...

Assignment of copyright

When you create intellectual property such as a book, poem, song, photograph, or painting, copyright laws give you the right to claim ownership of your creative work. Registering your copyright with the U.S. Copyright Office allows others to find out who owns the rights to your creation. As a copyright owner, you can also transfer, or assign, your copyright, as long as you follow the correct procedure.

Woman with short brown hair in art studio leans across desk with art supplies and camera on it to type on laptop

Copyright assignment permits a third party, known as the assignee, to take ownership of the copyright from the owner, or assignor. The assignment must be done in writing to be valid. Although notarization isn't required, it's a good idea to have someone witness the assignor and assignee signing and dating the agreement. Transfer of ownership usually involves monetary exchange, although that's not a requirement.

Registering a copyright with the U.S. Copyright Office isn't a requirement for valid ownership, even in cases of copyright assignment. However, registering provides a way for third parties to discern who owns the copyright. Because you don't have to file the transfer, a short-form assignment contract is sufficient for filing. This document usually contains only limited details of the work you're assigning, including the copyright number (if applicable), the signatures of both parties, the signature of a witness if desired, and the date of the assignment.

Just like in any other contract, a copyright assignment should contain certain information , such as the amount of consideration, or money, being exchanged. When assigning your copyright, the other party should provide some amount of consideration. Contracts usually include the language “for other good and valuable consideration," and courts have held that even one dollar is acceptable. As long as each party to the contract is getting something in return and the contract is not made under duress or pressure, the contract is valid.

Likewise, as the owner of the copyright, you have the right to assign all or part of it. If you assign your entire copyright to the other party, you are giving up all of your rights to your own copyright. In the case of a book, for example, assigning only part of your copyright could mean:

Assigning it to one party for use as a movie and to another for use as a television show
Assigning one party the original version and another party a translated version
Assigning rights to different types of books, such as an audiobook, a traditional print book, and an e-book
A partial assignment for a limited duration, if you specify such in your agreement

Copyright laws protect you in case your work of intellectual property becomes famous or is worth money later on. While you can't get your copyright back for many years after your assignment unless the new owner consents otherwise, current copyright law allows you to terminate your copyright assignment after 35 years.

For example, songwriters who assigned their copyright to what are now legendary songs from the 1960s or 1970s can now recover the copyright to their songs, many of which have increased in value due to their use in commercials and television shows. The writer of "YMCA," a member of the Village People, successfully recovered his copyright by invoking his termination rights after the 35-year period.

If you're a freelancer who creates a work such as a poetry collection, you own the copyright of the poetry book and can assign the copyright, if you wish. If, however, you're employed by someone to write poems, either as an employee or as an independent contractor under their direction, your creation is sometimes called a work for hire .

Creation of intellectual property under a work-for-hire contract means that you don't own the copyright. Instead, whoever hired you owns it, and unless that person gives you permission to purchase or own the copyright, you cannot transfer it to anyone else.

The more control a client has over how and when you're creating the intellectual property, the more likely you're regarded as an employee rather than an independent contractor. An employer-employee relationship generally assures that the employer owns the copyright. If, on the other hand, you're an independent contractor and have more creative control over your project than an employee would have, then you're the copyright owner.

Because intellectual property is an extremely specialized area of the law, it's recommended that you use a copyright attorney or similar intellectual property specialist to assist in any assignments. You can start protecting your creative interests by registering your copyright .

Published By Stanford Copyright and Fair Use Center

Chapter 2. copyright ownership and transfer.

201. Ownership of copyright
202. Ownership of copyright as distinct from ownership of material object
203. Termination of transfers and licenses granted by the author
204. Execution of transfers of copyright ownership
205. Recordation of transfers and other documents

§ 201. Ownership of copyright 1

(a) Initial Ownership. — Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are coowner of copyright in the work.

(b) Works Made for Hire. — In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.

(c) Contributions to Collective Works. — Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.

(d) Transfer of Ownership. —

(1) The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.

(2) Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by section 106, may be transferred as provided by clause (1) and owned separately. The owner of any particular exclusive right is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner by this title.

(e) Involuntary Transfer. — When an individual author’s ownership of a copyright, or of any of the exclusive rights under a copyright, has not previously been transferred voluntarily by that individual author, no action by any governmental body or other official or organization purporting to seize, expropriate, transfer, or exercise rights of ownership with respect to the copyright, or any of the exclusive rights under a copyright, shall be given effect under this title, except as provided under title 11. 2

§ 202. Ownership of copyright as distinct from ownership of material object

Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied. Transfer of ownership of any material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object.

§ 203. Termination of transfers and licenses granted by the author 3

(a) Conditions for Termination. — In the case of any work other than a work made for hire, the exclusive or nonexclusive grant of a transfer or license of copyright or of any right under a copyright, executed by the author on or after January 1, 1978, otherwise than by will, is subject to termination under the following conditions:

(1) In the case of a grant executed by one author, termination of the grant may be effected by that author or, if the author is dead, by the person or persons who, under clause (2) of this subsection, own and are entitled to exercise a total of more than one-half of that author’s termination interest. In the case of a grant executed by two or more authors of a joint work, termination of the grant may be effected by a majority of the authors who executed it; if any of such authors is dead, the termination interest of any such author may be exercised as a unit by the person or persons who, under clause (2) of this subsection, own and are entitled to exercise a total of more than one-half of that author’s interest.

(2) Where an author is dead, his or her termination interest is owned, and may be exercised, as follows:

(A) The widow or widower owns the author’s entire termination interest unless there are any surviving children or grandchildren of the author, in which case the widow or widower owns one-half of the author’s interest.

(B) The author’s surviving children, and the surviving children of any dead child of the author, own the author’s entire termination interest unless there is a widow or widower, in which case the ownership of one-half of the author’s interest is divided among them.

(C) The rights of the author’s children and grandchildren are in all cases divided among them and exercised on a per stirpes basis according to the number of such author’s children represented; the share of the children of a dead child in a termination interest can be exercised only by the action of a majority of them.

(D) In the event that the author’s widow or widower, children, and grandchildren are not living, the author’s executor, administrator, personal representative, or trustee shall own the author’s entire termination interest.

(3) Termination of the grant may be effected at any time during a period of five years beginning at the end of thirty-five years from the date of execution of the grant; or, if the grant covers the right of publication of the work, the period begins at the end of thirty-five years from the date of publication of the work under the grant or at the end of forty years from the date of execution of the grant, whichever term ends earlier.

(4) The termination shall be effected by serving an advance notice in writing, signed by the number and proportion of owners of termination interests required under clauses (1) and (2) of this subsection, or by their duly authorized agents, upon the grantee or the grantee’s successor in title.

(A) The notice shall state the effective date of the termination, which shall fall within the five-year period specified by clause (3) of this subsection, and the notice shall be served not less than two or more than ten years before that date. A copy of the notice shall be recorded in the Copyright Office before the effective date of termination, as a condition to its taking effect.

(B) The notice shall comply, in form, content, and manner of service, with requirements that the Register of Copyrights shall prescribe by regulation.

(5) Termination of the grant may be effected notwithstanding any agreement to the contrary, including an agreement to make a will or to make any future grant.

(b) Effect of Termination. — Upon the effective date of termination, all rights under this title that were covered by the terminated grants revert to the author, authors, and other persons owning termination interests under clauses (1) and (2) of subsection (a), including those owners who did not join in signing the notice of termination under clause (4) of subsection (a), but with the following limitations:

(1) A derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination, but this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant.

(2) The future rights that will revert upon termination of the grant become vested on the date the notice of termination has been served as provided by clause (4) of subsection (a). The rights vest in the author, authors, and other persons named in, and in the proportionate shares provided by, clauses (1) and (2) of subsection (a).

(3) Subject to the provisions of clause (4) of this subsection, a further grant, or agreement to make a further grant, of any right covered by a terminated grant is valid only if it is signed by the same number and proportion of the owners, in whom the right has vested under clause (2) of this subsection, as are required to terminate the grant under clauses (1) and (2) of subsection (a). Such further grant or agreement is effective with respect to all of the persons in whom the right it covers has vested under clause (2) of this subsection, including those who did not join in signing it. If any person dies after rights under a terminated grant have vested in him or her, that person’s legal representatives, legatees, or heirs at law represent him or her for purposes of this clause.

(4) A further grant, or agreement to make a further grant, of any right covered by a terminated grant is valid only if it is made after the effective date of the termination. As an exception, however, an agreement for such a further grant may be made between the persons provided by clause (3) of this subsection and the original grantee or such grantee’s successor in title, after the notice of termination has been served as provided by clause (4) of subsection (a).

(5) Termination of a grant under this section affects only those rights covered by the grants that arise under this title, and in no way affects rights arising under any other Federal, State, or foreign laws.

(6) Unless and until termination is effected under this section, the grant, if it does not provide otherwise, continues in effect for the term of copyright provided by this title.

§ 204. Execution of transfers of copyright ownership

(a) A transfer of copyright ownership, other than by operation of law, 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.

(b) A certificate of acknowledgment is not required for the validity of a transfer, but is prima facie evidence of the execution of the transfer if —

(1) in the case of a transfer executed in the United States, the certificate is issued by a person authorized to administer oaths within the United States; or

(2) in the case of a transfer executed in a foreign country, the certificate is issued by a diplomatic or consular officer of the United States, or by a person authorized to administer oaths whose authority is proved by a certificate of such an officer.

§ 205. Recordation of transfers and other documents 4

(a) Conditions for Recordation. — Any transfer of copyright ownership or other document pertaining to a copyright may be recorded in the Copyright Office if the document filed for recordation bears the actual signature of the person who executed it, or if it is accompanied by a sworn or official certification that it is a true copy of the original, signed document.

(b) Certificate of Recordation. — The Register of Copyrights shall, upon receipt of a document as provided by subsection (a) and of the fee provided by section 708, record the document and return it with a certificate of recordation.

(c) Recordation as Constructive Notice. — Recordation of a document in the Copyright Office gives all persons constructive notice of the facts stated in the recorded document, but only if —

(1) the document, or material attached to it, specifically identifies the work to which it pertains so that, after the document is indexed by the Register of Copyrights, it would be revealed by a reasonable search under the title or registration number of the work; and

(2) registration has been made for the work.

(d) Priority between Conflicting Transfers. — As between two conflicting transfers, the one executed first prevails if it is recorded, in the manner required to give constructive notice under subsection (c), within one month after its execution in the United States or within two months after its execution outside the United States, or at any time before recordation in such manner of the later transfer. Otherwise the later transfer prevails if recorded first in such manner, and if taken in good faith, for valuable consideration or on the basis of a binding promise to pay royalties, and without notice of the earlier transfer.

(e) Priority between Conflicting Transfer of Ownership and Nonexclusive License. — A nonexclusive license, whether recorded or not, prevails over a conflicting transfer of copyright ownership if the license is evidenced by a written instrument signed by the owner of the rights licensed or such owner’s duly authorized agent, and if

(1) the license was taken before execution of the transfer; or

(2) the license was taken in good faith before recordation of the transfer and without notice of it.

Chapter 2 Endnotes

1 In 1978, section 201(e) was amended by deleting the period at the end and adding “, except as provided under title 11.”

2 Title 11 of the United States Code is entitled “Bankruptcy.”

3 In 1998, the Sonny Bono Copyright Term Extension Act amended section 203 by deleting “by his widow or her widower and his or her grandchildren” from the first sentence in paragraph (2) of subsection (a) and by adding subparagraph (D) to paragraph (2). Pub. L. No. 105-298, 112 Stat. 2827, 2829.

4 The Berne Convention Implementation Act of 1988 amended section 205 by deleting subsection (d) and redesignating subsections (e) and (f) as subsections (d) and (e), respectively. Pub. L. No. 100-568, 102 Stat. 2853, 2857.

Today’s Assignment: How to Assign a Copyright

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Today’s Assignment: How to Assign a Copyright

This practice note covers the fundamentals of copyright assignments and rules for works made for hire, assignments from independent contractors or freelancers, partial copyright assignments, and recordation of copyright assignments. It includes links to the Nimmer on Copyright sections on transfer formalities, recordation of transfers, and construing the scope of assignments and other transfers for additional guidance and to help you continue your research and deepen your understanding of key tasks and areas of law.

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Justices Leave Door Open to Discovery Rule Copyright Damages (1)

By Kyle Jahner

A rapper claiming he learned belatedly that his copyrights had been infringed can pursue damages dating to a decade before his suit under a discovery rule, the US Supreme Court said—without deciding whether that rule is valid in copyright law.

A six-justice majority held that if a claim is timely under the Copyright Act’s statute of limitations, nothing in the law limits how far back damages can reach. The 6-3 opinion, authored by Justice Elena Kagan, assumed—without deciding—that the claims by rapper and producer Sherman Nealy were timely under the discovery rule.

“If Nealy’s claims are thus timely, he may obtain damages for them,” Kagan wrote. “The Copyright Act contains no separate time-based limit on monetary recovery.”

The case hinged on the interpretation of the law’s phrasing, which starts the three-year countdown to sue from when a claim “accrued.” Under the discovery rule , the claim accrues when a plaintiff knew or should have known about it. In its appeal, Warner Chappell Inc. argued the term specifically means when the infringement occurred.

Kagan criticized Warner Chappell in a footnote for mostly arguing the discovery rule’s inapplicability rather than the damages question the court agreed to hear. The label only argued against the availability of damages at the US Court of Appeals for the Eleventh Circuit because that court had already endorsed the discovery rule. The high court’s stated question presumed the discovery rule could render claims timely, which “should have put an end to such arguments,” Kagan said.

That presumption was at the root of Justice Neil Gorsuch’s dissent—joined by Justices Samuel A. Alito and Clarence Thomas—which said the Copyright Act “almost certainly does not tolerate a discovery rule.” Gorsuch said he’d have dismissed this case and waited for one that directly addressed whether the discovery rule even could render claims timely—not decide what happens if it could.

“Nothing requires us to play along with these particular parties and expound on the details of a rule of law that they may assume but very likely does not exist,” Gorsuch said. “Better, in my view, to answer a question that does matter than one that almost certainly does not.”

Reaching Back

Nealy’s 2018 suit alleged Warner had acquired rights he owned from someone else in 2008 without his knowledge and had been exploiting them since, including through derivative works like Flo Rida’s “In the Ayer.” He didn’t learn of the alleged infringement until 2016 because he had been in and out of jail and wasn’t wired into the music industry, Nealy said in his lawsuit.

A Florida federal court certified a question to the Eleventh Circuit to determine the scope of damages available to Nealy should he win. The appeals court said the rule allowed for damages for any timely claims. The court rejected Warner’s argument that a 2014 Supreme Court opinion, Petrella v. Metro-Goldwyn-Mayer Inc. , effectively barred old damages even for timely claims.

The high court majority agreed that Petrella didn’t apply. “Taken out of context,” that ruling “might seem to address the issue here,” Kagan said. But the plaintiff in that case sued over rights to the script of the 1980 Robert De Niro movie “Raging Bull” and didn’t dispute she’d long known the movie existed. The discovery rule wasn’t invoked in that case, and the high court didn’t extend its findings beyond that fact pattern, Kagan wrote.

The new ruling nullifies Second Circuit precedent set in its 2021 ruling in Sohm v. Scholastic Inc. , which had held the discovery rule could render claims timely, but that Petrella precluded damages for infringement that occurred more than three years before the suit.

The majority said that approach is “essentially self-defeating” and “takes away value in what it conferred” by allowing for liability but denying damages. In a footnote, Kagan said that some scholars had suggested there could be benefit to winning on liability on old claims while also denying damages. But, she said, “assuming those cases exist at all, they are as rare as hen’s teeth.”

Gorsuch suggested the court’s decision to focus on damages under the discovery rule before addressing the rule’s applicability may be “a permissible course” of action, but “does not strike me as the most sensible one.” He said he’d have waited for a case “squarely presenting the question whether the Copyright Act authorizes the discovery rule.”

Just such a petition is pending before the Supreme Court. After the high court granted Warner’s petition, Hearst Newspapers LLC filed its own challenging the interpretation outright in November, appealing the Fifth Circuit’s first application of the discovery rule.

During oral argument of Warner’s case in February the justices mulled dismissing the case, or at least waiting until it addresses Hearst’s.

Paul, Weiss, Rifkind, Wharton & Garrison LLP represents Warner. Cravath, Swaine & Moore LLP represents Nealy.

The case is Warner Chappell Music Inc. v. Nealy , U.S., No. 22-1078, opinion 5/9/24.

To contact the reporter on this story: Kyle Jahner in Raleigh, N.C. at [email protected]

To contact the editor responsible for this story: Adam M. Taylor at [email protected]

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Assignment And Licensing Of Copyright

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Introduction

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.

The owner of copyright work can generate wealth not only by exploiting it himself but also by sharing it with others for mutual benefits. This can be done by way of assignment or licensing of copyright.

Assignment of Copyright (Section 18)

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 19)

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.

Disputes with Respect to Assignment of Copyright (Section 19a)

As per section 19(a) the Appellate Board may on the receipt of a complaint from the assignor and on holding such inquiry as it may deem necessary, revoke such assignment, if the assignee fails to make sufficient exercise of the rights assigned to him , and such failure is not attributable to any act or omission of the assignor.

In case of a dispute with respect to the assignment of copyright, the Appellate Board may pass a suitable order on receiving a complaint from the aggrieved party and after holding such inquiry as it considers necessary including an order for the recovery of any royalty payable.

Assignment by Operation of Law (Section 20)

When the owner of a copyright dies the copyright will pass on to his personal representative as part of the estate, provided that no will has been executed. Section 20 provides that if a person is entitled for copyright under bequest and such work has not been published before the death of the testator, unless contrary intention is shown under testators will or any codicil thereto, such person shall be considered as having copyright in the work so far as testator was the owner of copyright immediately before his death.

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 30)

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 License

Being a member of Berne Convention, India has incorporated the provision of compulsory license in the Copyright Act, 1957. The Act provides for grant of compulsory license for Indian work in the public interest, in certain circumstances:

Works Withheld from Public

The Indian Copyright Act provides for the grant of compulsory licences in work which has been published or performed in public. It empowers the Appellate Board to direct the Registrar to grant license, if a complaint is made to it in writing under the Act, during the subsistence of copyright stating the necessary facts which are conditions precedent to its exercise of power, provided the owner has been approached in the first instance for the grant of license and it is only if he has refused to publish or allow the republication of the work and by the reason of such refusal the work is withheld from the public. In case where two or more persons have made a complaint, the licence shall be granted to the complainant who in the opinion of the Copyright Board would serve the interest of the general public. In Super Cassette Industries Ltd v. Entertainment Network (India) Ltd, Mumbai 5 the respondents who were running a radio FM channel under the brand name Radio Mirchi, made several attempts to obtain a license from Super Cassette Industries ltd (SCIL) to play its sound recordings but failed to get it. The Copyright Board ultimately issued them a compulsory license against which an appeal has been filed in the Delhi High Court. After contemplating over section 31, Court observed that in case compulsory license had to be granted to all, then there was no need of any enquiry as envisaged by section 31. The court also opined that once the copyright was in public, refusal has to be made on reasonable and valid ground. While making an order under section 31, the Board had to maintain a delicate balance between the private rights and the copyright vis-a vis- public interest. The case was sent back to the Copyright Board for fresh consideration.

Compulsory License in Unpublished or Published Work (Section 31-A)

According to this section, where the author is dead or unknown or cannot be traced , or the owner of the copyright in such work cannot be found, any person may apply to the Copyright Board for a licence to publish such work or translation thereof in any language.

Before making such an application, the applicant should publish his proposal in one issue of a daily newspaper in that language. The application to the copyright board should be in the prescribed form and accompanied by the prescribed fee and with the copy of advertisement issued.

The Copyright Board after making the certain prescribed enquires direct the Registrar of Copyright to grant license to the applicant to publish the work or its translation subject to the payment of royalty and other conditions.

Compulsory License for the Benefit of Disabled Persons (Section 31-B)

Any person working for the benefit of persons with disability on a profit basis or for business may apply in prescribed manner to the Appellate Board for a compulsory licence to publish any work in which copyright subsists for the benefit of such persons. However, where a compulsory licence has been issued, the Appellate Board may on a further application and after giving reasonable opportunity to the owners of the rights, extend the period of compulsory licence and allow the issue of more copies as it deems fit. 6

Statutory License for Cover Versions (Section 31-C)

Cover means a sound recording made in accordance with section 31C. Any person desirous of making a cover version, being a sound recording in respect of any literary, dramatic or musical work with the consent or licence of the owner of the work, can do so.

The person making the cover version is required to give prior notice to the owner of the copyright in such works and to the Registrar of Copyright at least 15 days in advance of making the cover version. Advance copies of all covers with which the sound recording is to be sold to be provided or royalties to be paid in advance. One royalty in respect of such sound recordings shall be paid for a minimum of fifty thousand copies of each work during each year. The Delhi High Court in Star India Pvt Ltd v. Piyush Aggarwal 7 , stated that sound recording included a subsequent original sound recording made from the musical and literary work and which was called a version recording i.e. a sound recording made after a first sound recording was made by use of the musical work and literary work.

Statutory Licensing for Broadcasting of Literary and Musical Work and Sound Recording (Section 31-D)

Any broadcasting organization, desirous of communicating published work to the public by way of broadcast (by way of television broadcast or radio) or a performance of any published musical/ lyrical work and sound recording, can do so by giving prior notice of this intention to the owners. The notice must specify the duration and territorial coverage of the broadcast. Corresponding royalties are required to be paid to the owner of copyrighted work. Rates of television broadcasting are different from the rate fixed with respect to radio broadcasting. At the time of fixing the rate of royalty the Copyright Board may ask the broadcasting organisation to deposit some amount of money in advance to the owner.

License to Produce and Publish Translation of Literary or Dramatic Work in any Language (Section 32)

Section 32 of the Copyright Act provides that after expiry of a period of seven years from the first publication of a literary or dramatic work, any person may apply to the Copyright Board for a license to produce and publish a translation of work. Where the work is not Indian work, any person may apply to the Board for a license to produce and publish a translation in printed or analogous form of reproduction of a literary or dramatic work in any language in general use in India after a period of three years from the first publication of such work, if such translation is required for the purpose of teaching, scholarship or research. But where translation is in a language not in general use in any developed country, such application may be made after the period of one year from such publication.

License to Reproduce and Publish Works for Certain Purposes (Section 32-A)

According to this section, any person may apply to the Copyright Board for a license to reproduce and publish any literary, scientific or artistic work after the expiration of the relevant period from the date of first publication of an edition of such work, if the copies of such edition are not made available in India , or such copies have not been put on sale in India for a period of six months to the general public or in connection with systematically instructional activities at a price reasonably related to that normally charged in India for comparable works by the owner of the right of reproduction or by any person authorised by him in this behalf.

The period prescribed are:

Seven years for work related to fiction, poetry, drama, music or art
Three years for works related to natural science, physical science mathematics or technology
Five years for any other work

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 8 .

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)

3 23 IPLR 388 (1998)

4 2007 (34) PTC 522 (Cal )

5 (2004) 29 PTC 8 (DEL)

6 Indian Copyright Act, 1957, Sec- 32 (B)

7 2014 (58) PTC 169 (Del)

8 Deshmukh & co (publishers) pvt ltd v/s avinash vishnu khadekar 2006 (32) PTC 358 (Bom)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Intellectual Property

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Jun 27, 2021

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

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.

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.

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

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

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.

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.

[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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.... The transfer of ownership can be by an assignment to another of the copyright either wholly or partially, either generally or with special limitations and either for the whole term of the ...generally or subject to limitations and either for the whole term of the copyright or any part thereof:Provided that in the case of the assignment of copyright in any...for collection and distribution and any assignment to the contrary shall be void.(2) Where the assignee of a copyright becomes entitled to any right comprised in the...

.... Intellectual Property — Copyright Act, 1957 — Ss. 18 and 30 — Distinction between assignment of copyright of a work and licence to use the work — Held, in the assignment , normally, ...filed in 2006. However, it is clarified that with effect from 21-6-2012, in view of the insertion of sub-section (10) to Section 19 of the Copyright Act, the assignment of the copyright in the work...the work is transferred, but in the case of licence, another person is allowed to use the work by the author — Words and Phrases — “ Assignment ”, “licence”(Para 18)...

...requisite locus standi and cause of action.10. Section 18 of the Copyright Act, 1957 confers ownership rights in a copyright on the assignee. The term ‘ assignment ’ is not defined. T...issue on which learned counsel for the parties have concentrated at this stage is: whether there was an assignment of copyright to the plaintiffs by the defendant No. 1, the author? The deed of assignment ...legally and simultaneously with the signing of the letter by the parties. In any case the letter had the effect of creating an ‘equitable assignment ’ in favour of the plaintiffs providing them with the...

...cannot claim their ownership of copyright in that manuscript. Manuscript is the best proof of ownership of copyright .10. Deciding the question of ...Additional District Judge observed that there is no dispute that the defendants have not claimed any assignment of the ownership of copyright . Their claim is that the copyright vests in them, and ...book was written and translated for the employer by the employee during employment. None of the modes have been claimed for assignment of the ownership of copyright which have been prescribed unde...

...parties with regard to the nature the extent of assignment is required to be ascertained from the agreement itself. If upon proper construction of the agreement it means that the assignment is for a limited period ...owner of the copyright in the sound recordings as also the exclusive owner of the original plates from which sound recordings could be duplicated.11. The object of retaining ownership ...agreements covers the entire period and is not limited.22. On behalf of the petitioner it was submitted that the assignment of copyright is different from any other assignment as the...

...words when one gives a copyright assignment , he parts with his copyright and he does not own his copyright any more and the other party does, unlike a copyright licence where the licensor retains ...: through a licence or an assignment . In an assignment of copyright rights, the owner sells his or her ownership rights to another party and has no control over how the third party uses those rights. A...with it. A valid assignment of copyright must be in writing and signed by, or on behalf of , the copyright owner/assignor. The subject of the assignment mus...

...parties are free to agree that the employer may have the copyright . It is important to remember that this ‘agreement to the contrary’ is distinct from ‘ assignment of copyright ’. Section 17, which provides for such ...plausible. On a balance of probabilities, at this prima facie stage, it cannot be said with any certainty that the Plaintiffs have made out a case of copyright ownership , so as to claim an injunction...implied. Thus, even if the work be created in the course of an undoubted contract of service, the author may reserve the copyright unto himself. Conversely, even if there be no contract of service, the...

...the copyright by an assignment . Sri Kailash Nath Bhargava clearly stated that the deed of assignment was the basis of R. Saigal's ownership of the copyright and he would not have... copyright but for that deed of assignment . Again, he stated that the contents of paragraph 2 as originally written in the plaint were correct and it is wrong that Sri Prem Chand never held any...work and novel Nirmala and after his death the copyright vested in the defendants 1 and 2, his heirs and legal representatives; there was no assignment of the copyright by Sri Prem, Chand; the story...

... copyright in an existing work may assign to any person such copyright either wholly or partially or subject to any limitation. Reading Sections 17 and 18 together, one who claims any copyright of a literary work by...provisions of the Copyright Act, 1957, without any written assignment by Thanthai Periyar himself in favour of the...themselves have admitted that the ownership of the compilations were that of the appellant and therefore, the right of the appellant as copyright owner stood established. It was therefore contended that the...

...been using the broadcasting songs in respect whereof Super Cassettes Industries Limited (SCIL) had an ownership over the copyright . It was a member of the copyright society being Phonographic...freedom to contract his interest by the Act as would be evident from Sections 14, 16 and 30 of the Act.(ii) The ownership of any copyright like ownership of any other...);(c) To settle disputes arising in respect of assignment of copyright (Section 19-A);(d) To settle disputes arising in respect of...

..., assignment , if any, of the copyright in any future work is of no effect”. Dissatisfied with this decision, the IPRS has, as already stated, come up in appeal to this Court... copyright in the musical work; that in the case of an assignment of copyright in future work and the employment of the author to produce a work under a contract of service, the question of priorities... copyright either wholly or partially and either generally or subject to limitations and either for the whole term of the copyright or any part thereof; provided that in the case of the assignment of...

...infringement of a copyright . The transfer of ownership can be by an assignment to another of the copyright either wholly or partially, either generally or with special limitations and eit...recognises the assignment of a copyright . Section 19 prescribes the mode of assignment of a copyright . Section 30 then speaks of licenses by owners of copyright . It is to be noticed that section 30 does no...absolutely, either by assignment under section 18 of the Act or otherwise. The owner can also grant an exclusive license to another to exploit the Copyright . In terms of Section 30 of the Act, he can...

...amendment in the written statement to the effect that the ownership of the plaintiffs in the copyright is disputed. 2. In the application, it is explained that the occasion of filing ... ownership claimed by the plaintiff on the basis of the Assignment Agreements, on the ground that the Assignment Agreements are not enforceable in law. 3. In support of the... ownership of the plaintiffs in the copyright to any jeopardy, but only seek to withdraw the unequivocal admission regarding the plaintiffs' being the copyright owners of the subject work. The amendment is...

.... 12825/2009 and I.A No. 13030/200947. In order to decide the interim applications, the present discussion can be categorized into the following two heads:(i) Ownership of the plaintiff in the ...stipulations to which ownership of copyright is subject are Section(s) 18, 19 and 20 relating to assignment , transmission or devolution of title and other provisions of the Act. Section 17 also co...to say that prima facie, doubt can be expressed over the ownership of copyright as claimed by the plaintiff, be it from the standpoint of the contract of employment or contract for employment. I shall now ...

...ICSAC v. Aditya Pandey reported in (2017) 11 SCC 437, brings out the distinction between copyright of a wo...with the ownership still vesting with the owner/licensor. Section 30-A of the Act then goes on to state that the mode and manner specified for assignment of a copyright under Section 19, shall, with...authorised agent of various copyright holders. The plaintiff has entered into various assignment agreements with the owners of sound recordings and acquired rights, including the rights for on-ground public...

... Appellant in the Suits filed is that it is the "owner" of the copyright of the sound recordings by way of assignment vide the documents supra...determination of this Deed by the Music Label, and PPL accepts such assignment . This Deed is an assignment of rights u/s 18 and 19 of Copyright Act. It is clarified that th...30A of the Act were taken up together for discussion wherein it was observed that the Appellant was to have produced ownership documents. That, Annexure B a Deed of Partial and Limited Assignment of...

... Appellant in the Suits filed is that it is the "owner" of the copyright of the sound recordings by way of assignment vide the documents supra...by the Music Label, and PPL accepts such assignment . This Deed is an assignment of rights u/s 18 and 19 of Copyright Act. It is clarified that the rights exclusively assigned hereby...30A of the Act were taken up together for discussion wherein it was observed that the Appellant was to have produced ownership documents. That, Annexure B a Deed of Partial and Limited Assignment of...

...respect of the copyright , patent etc. does not extend to the outright purchase of the right to use an asset. A payment for the absolute assignment and ownership of rights transferred is not a payment...or licenced for a limited term or for the whole of the copyright term. Licences can be exclusive or non-exclusive. An assignment is in essence a transfer of ownership even if it is partial; on the...no right to assign or sub-licence his interest. If the licence is not exclusive, the licensor can licence the same right to others also. Since registration of assignment is not compulsory the assignee has no means of knowin...

... assignment creates an interest of ownership in favour of the assignee, whereas, a license merely permits a licensee to do something which but for the licence would amount to violation of the owner's rights...the author in the agreement; if it was only a licence. According to him, section 18 of the Act recognises the owner's right to assign copyright either wholly or partially. In his submission, an...nothing but a mere licence to publish books in favour of late Shri R.J Deshmukh. It was not an assignment of a copyright . While developing this submission the learned Counsel for the respondents would...

...distinct from ' assignment of copyright '. Section 17, which provides for such agreement to the contrary, deals with the question of the first ownership of the copyright . Section 18, on the...prima facie stage, it cannot be said with any certainty that the Plaintiffs have made out a case of copyright ownership , so as to claim an injunction. I am most certainly of the view that this...himself. Conversely, even if there be no contract of service, the parties are free to agree that the employer may have the copyright . It is important to remember that this 'agreement to the contrary' is...

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Assignment of Copyrights & Legal Implications
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 ...
The Copyright Act: Standing and "Right to Sue" Assignments
Thus, an exclusive right must be exclusive. An assignment is not exclusive if some form of right to limited use and distribution to other third parties is reserved. In the copyright world, the "substance and effect" of any written assignment must reflect a true, even if temporary, transfer of complete ownership of a copyright interest.
Supreme Court Resolves Split Regarding Copyright Damages
On May 9, 2024, a 6-3 majority of the U.S. Supreme Court resolved a question that has generated conflicting results in the Courts of Appeal for years, but as a forceful dissent pointed out, the ...
Copyright Ownership: The Joint Authorship Doctrine
The Joint Authorship Doctrine. The law of copyright provides that an author is the person who creates a work of authorship and is, at least the first instance, the sole owner of the work. Even though the author may initially have sole ownership of the work there are many methods by which the publisher may obtain ownership rights in the author's ...
Understanding an assignment of copyright agreement
While you can't get your copyright back for many years after your assignment unless the new owner consents otherwise, current copyright law allows you to terminate your copyright assignment after 35 years.
Copyright Assignments
Document a copyright assignment to clearly define rights and ownership; Obtain a registration of the copyright to be able to litigate against infringement and record the copyright assignment as a best practice; and. Be aware of the potential for assignment termination by the author under specific circumstances.
Chapter 2. Copyright Ownership and Transfer
— In the case of any work other than a work made for hire, the exclusive or nonexclusive grant of a transfer or license of copyright or of any right under a copyright, executed by the author on or after January 1, 1978, otherwise than by will, is subject to termination under the following conditions:
Assignment/Transfer of Copyright Ownership
Are copyrights transferable? Yes. Like any other property, all or part of the rights in a work may be transferred by the owner to another. See Circular 1, Copyright ...
Today's Assignment: How to Assign a Copyright
This practice note covers the fundamentals of copyright assignments and rules for works made for hire, assignments from independent contractors or freelancers, partial copyright assignments, and recordation of copyright assignments.
Understanding the Assignment of Copyrights
The assignment of copyright for making cinematograph film or sound recordings shall not affect the right of the author to claim an equal share of the royalties and consideration payable concerning ...
List of copyright case law
Hawkes & Son (London) Ltd v. Paramount Film Service Ltd [1934] 1 Ch 593 (the Colonel Bogey case - infringement of copyright occurs when "a substantial, a vital and an essential part" of a work is copied, per Lord Slesser) Jennings v. Stephens [1936] Ch. 469 ("performance in public" as infringement) Donahue v.
PDF IP Licenses: Restrictions on Assignment and Change of Control
inventors these rights under the federal copyright and patent laws. ... In re Trade-mark Cases, 100 U.S. 82, 93-95 State law generally governs the assignability of contracts. However, (1879)). Unlike ... modern courts have held that federal common law governs the assignment of IP licenses (see, for example, Cincom Sys., Inc. v. Novelis Corp., ...
Assignment of Copyright
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 ...
Copyright law of the United States
The copyright law of the United States grants monopoly protection for "original works of authorship". With the stated purpose to promote art and culture, copyright law assigns a set of exclusive rights to authors: to make and sell copies of their works, to create derivative works, and to perform or display their works publicly. These exclusive ...
SCOTUS Settles a Circuit Split in Copyright Damages Over Flo Rida Music
The U.S. Supreme Court often takes up cases where there is a circuit court split, as there was in this case. And SCOTUS finally handed down the final word, agreeing with the Eleventh Circuit and Nealy. Justice Elena Kagan authored the 6-3 majority opinion. Though this case was pretty straightforwardly settled, SCOTUS justices may also be taking ...
A Comprehensive Analysis on 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.
Justices Leave Door Open to Discovery Rule Copyright Damages (1)
The appeals court said the rule allowed for damages for any timely claims. The court rejected Warner's argument that a 2014 Supreme Court opinion, Petrella v. Metro-Goldwyn-Mayer Inc., effectively barred old damages even for timely claims. The high court majority agreed that Petrella didn't apply. "Taken out of context," that ruling ...
India
In case of a dispute with respect to the assignment of copyright, the Appellate Board may pass a suitable order on receiving a complaint from the aggrieved party and after holding such inquiry as it considers necessary including an order for the recovery of any royalty payable. Assignment by Operation of Law (Section 20)
Assignment, Transmission, And Relinquishment Of Copyright : An Overview
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.
Assignment of copyright: formalities
Trust. 83% of customers are highly satisfied with Practical Law and would recommend to a colleague. Improve Response Time. 81% of customers agree that Practical Law saves them time. End of Document. Resource ID 2-518-8005. This table summarises the formalities required for the assignment of copyright.
Assignment and Licensing of Copyrights under Copyrights Act
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 ...
What is the concept of Assignment of Copyright?
Thus, law provides a right to the owner of the copyright (i.e. the creator) to transfer the ownership of the copyright to a third party. For instance, in the case of making a complete movie - all the creative persons with their idea turned into relevant works come to a producer, assign their rights that subsist in their work in return for a ...
Analysing copyright infringement cases and laws in India
Where a condition has been imposed in the licencing agreement stipulating that certain work shall not be communicated to the public beyond the allowed jurisdiction, violating such condition shall be considered copyright infringement; Reproduction of the work of the copyright holder without express permission;
US Supreme Court rules against Warner Music in copyright damages case
WASHINGTON, May 9 (Reuters) - The U.S. Supreme Court on Thursday ruled in favor of a Miami music producer in a legal fight with Warner Music (WMG.O) over a song by rapper Flo Rida, finding that ...
Top Cases of Copyright Law in 2019
The court also noted that Pillai has a prima facie case against the respondent and his legal rights would not exhaust to claim authorship over it. Therefore the Court took a balanced view: All arrangements for the release are made by the producer, postponement of the same may cause huge damage to Kunnapalli.
assignment+of+copyright+ownership
In an assignment of copyright rights, the owner sells his or her ownership rights to another party and has no control over how the third party uses those rights. A...with it. A valid assignment of copyright must be in writing and signed by, or on behalf of, the copyright owner/assignor.
PDF Intellectual property right assignments Q&A: India
• Standard document, Assignment of trade marks: Cross-border: clause 2(c) • Standard document, Assignment of copyright: Cross-border: clause 2 • Standard document, Assignment of patents: Cross-border: clause 2(e) • Standard document, Assignment of industrial designs: Cross-border: clause 2 No amendments are necessary to the above clauses.
Rule 3:22-6
For purposes of this section, good cause exists only when the court finds that a substantial issue of fact or law requires assignment of counsel and when a second or subsequent petition alleges on its face a basis to preclude dismissal under R. 3:22-4. (c) Transcript.
Rule 4:21A-2
Rule 4:21A-2 - Qualification, Selection, Assignment and Compensation of Arbitrators (a) Inclusion on Roster. (1) Qualifications. An applicant for inclusion on a roster of arbitrators maintained by the Administrative Office of the Courts shall be either: (1) a retired judge of any court of this State who is not on recall; or (2) an attorney admitted to practice in this State having at least ten ...
Rule 7:7-11
Rule 7:7-11 - Use of Acting Judges Pursuant to Standing Assignment Judge Order (a) As to any pretrial application made when court is not in session for the issuance of a telephonic arrest warrant, R. 7:2-1(e); for the issuance of a Temporary Restraining Order (TRO), R. 5:7A; for the issuance of a search warrant, R. 3:5-3(b) or R. 7:5-1(a); or for the setting of bail, R. 3:26-2(a) and R. 7:4-2 ...

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Introduction

Assignment of Copyright (Section 18)

Mode of Assignment (Section 19)

Disputes with Respect to Assignment of Copyright (Section 19a)

Assignment by Operation of Law (Section 20)

Licensing of Copyright

Voluntary license (Section 30)

Voluntary licenses can be:

Compulsory License

Works Withheld from Public

Compulsory License in Unpublished or Published Work (Section 31-A)

Compulsory License for the Benefit of Disabled Persons (Section 31-B)

Statutory License for Cover Versions (Section 31-C)

Statutory Licensing for Broadcasting of Literary and Musical Work and Sound Recording (Section 31-D)

License to Produce and Publish Translation of Literary or Dramatic Work in any Language (Section 32)

License to Reproduce and Publish Works for Certain Purposes (Section 32-A)

Intellectual Property

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Assignment, Transmission, And Relinquishment Of Copyright : An Overview

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Assignment and Licensing of Copyrights under Copyrights Act

Introduction

Assignment of Copyrights : Section 18 of Copyrights Act

Mode of Assignment: Section 18 of Copyrights Act

Licensing of Copyright

Voluntary license: : Section 18 of Copyrights Act

Compulsory Licenses

Statutory Licenses

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