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Copyright Assignment Agreement in India

January 31, 2023 | Corporate & Commercial Law Copyright assignment refers to the transfer of rights, partially or wholly, to an intellectual property from the owner to assignee, who shall be considered an equal owner of the copyright & enjoy all the benefits availed of by the owner.

What is a Copyright?

• Musical compositions and lyrics
• Computer software
• Architectural designs
• Graphic designs, etc.

Copyright Assignment Agreement

Copyright assignment agreement clauses.

• Definitions
• Assignment and Assumption
• Additional Undertakings
• Representations and Warranties
• Third-Party Beneficiaries
• Choice of Law; Choice of Forum
• No Construction
• Severability
• Integration
• Counterparts

Copyright Assignment – Section 18 (Copyright Act, 1957)

• The owner of a copyright (assignor) may choose to assign his rights to someone else (assignee).
• The copyright assignment basically grants the assignee all the rights related to the intellectual property that they gain the rights to.
• Simply gaining the right to publish and sell any copyrighted work amounts to publishing right and is not the same as assignment of copyright.
• Copyright assignment refers to when the assignee becomes entitled to any right associated with an intellectual property and may be considered as the owner of the copyright in respect to that specific right.
• The assignor shall be considered an owner of the copyright as well with respect to the other unassigned rights of the concerned intellectual property.

Mode of Copyright Assignment – Section 19 (Copyright Act, 1957)

• The copyright assignment must identify the work, state the rights assigned, duration, and territorial extent it is valid in.
• In addition, it should also include the royalty, if any, that shall be paid to the owner or their legal heirs during the valid period of the assignment.
• Furthermore, it should state if the assignment shall be subject to revision, extension or termination on mutually agreed terms.

Disputes Related to Copyright Assignment – Section 19a (Copyright Act, 1957)

• As per Section 19(a), if the assignor files a complaint, the Appellate Board, after conducting necessary inquiry, may revoke the assignment due to the assignee’s failure to adeptly exercise the rights assigned to them. Any act or omission of the assignor is not attributable to such failures.
• If there is a dispute about the copyright assignment and a complaint is filed by the aggrieved party, the Appellate Board may conduct an inquiry, if necessary, and order for the recovery of any royalty owed to the aggrieved party.

Copyright Assignment by Operation of Law – Section 20 (Copyright Act, 1957)

• Definition of Resolution plan will now include provisions for corporate restructuring: The amendment act has inserted an explanation in the definition of resolution plan to clarify that a resolution plan that proposes the insolvency resolution of a corporate debtor may include the provisions for corporate restructuring, including by way of merger, amalgamation and demerger.
• NCLT will have to record reasons for delay in discarding an application for initiation of CIRP: As per the Code, the NCLT must dispose of an application for initiation of CIRP within a period of 14 days from the receipt of application. However, there have been cases when the NCLT has taken more than 14 days to make a decision on the application. Therefore, to ensure speedy disposal and value maximization of the corporate debtor's assets, a proviso has been added which requires that NCLT to record its reasons in writing in case an application is not disposed within 14 days.
• Corporate Insolvency Resolution Process to be concluded within 330 days: Earlier, the IBC demanded completion of CIRP within 180 days including a one-time extension of 90 days. However, many a times the Courts have allowed removal of certain periods, for instance, time consumed in litigation, from the compulsory completion period resulting in a lot of unresolved CIRPs well beyond the time duration allowed in the IBC. The Amendment act makes it compulsory for a CIRP to be completed within 330 days including any extension of time granted and time taken under legal proceedings. It further states that any pending CIRPs that have been going on for over 330 days should be completed within 90 days from the date of commencement of the Amendment Act.
• Voting by authorised representative representing a class of financial creditors: To avoid any confusion and facilitate decision making in the Committee of Creditors, especially in cases where financial creditors are a large group, the Amendment Act provides that an authorized representative representing a class of financial creditors shall vote on behalf of all the financial creditors he/she represents in accordance with the decision approved by more than 50% of such financial creditors. This principle however would not be applicable in case of voting for withdrawal of CIRP.
• Amount payable to functional creditors and disagreeing financial creditors: The Amendment Act provides that payment of debts of operational creditors shall be the higher of
• the amount to be paid to these creditors at the time of liquidation of the corporate debtor u/s 53 or
• the amount that would have been paid to such creditors, if the amount to be distributed under the resolution plan had been distributed in accordance of priority as mentioned u/s 53 (1)
• NCLT has not approved or rejected a resolution plan
• an appeal is pending at the Supreme Court or at the NCLAT (National Company Law Appellate Tribunal)
• a lawsuit has been launched in a court challenging the decision of NCLT in relation to a resolution plan
• Committee of Creditors (COC) to contemplate way of distribution submitted in the resolution plan: Besides the current need of approval of resolution plan after keeping in mind the practicality and acceptability of the resolution plan, the amendment act requires that the CoC consider the manner of distribution proposed in the resolution plan by taking into account the order of priority amongst creditors, as prescribed u/s 53 (1) relating to liquidation waterfall, including the priority and value of security interest of a secured creditor.
• NCLT approved resolution plan will be binding on the Central Government, State Government or any local authority to whom corporate debtor owes a statutory debt: As per the Code, the approved resolution plan was only binding on the corporate debtor and its employees, creditors, members, guarantors and other stakeholders included in the resolution plan resulting in instances where the Government used to follow up for the balance dues after the said approval of resolution plan. The Amendment Act has now modified Section 31(1) to illuminate that any NCLT approved resolution plan will be binding on the Central Government, State Government and any local authority to whom a corporate debtor owes a debt in respect of payment of dues arising under any law.
• Liquidation after setting up the Committee of Creditors (COC): The Amendment Act simplifies by way of an explanation, u/s 33(2) which covers liquidation, that the COC may decide to liquidate the corporate debtor any time after the setting-up of the COC until the confirmation of the resolution plan, including at any time before the development of the information memorandum. This change is pertinent as there have been cases where NCLTs have demanded that a liquidation order may be passed only after failure of the CIRP even though an early liquidation would have resulted in value maximization.

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Important things to consider while transferring a copyright

Difference between licensing and transfer, diverse ways to protect yourself from possible legal disputes, template to download in word and pdf format, essential factors for successful copyright assignment: protecting rights and avoiding disputes.

Copyright plays an essential role in our daily lives by protecting the rights of creators , and motivating creativity, and innovation. The protection and compensation through copyright encourage people to produce new and original work.

Copyright is a great tool that gives the creators exclusive rights to their original works. Like any other property, you the owner/creator ( "Assignor" ) can transfer your ownership in copyright to a person or entity ( "Assignee" ). This article will guide you through the essential things to consider when transferring copyright, explain the difference between licensing and transferring , and discuss methods to protect yourself from legal issues .

Copyright covers a wide range of creative work including:

• Literary works such as books, poems, and articles;
• Musical works such as songs, and instrumental pieces;
• Artistic works such as paintings, drawings, photographs, and sculptures;
• Dramatic works such as plays and screenplays;
• Cinematographic works such as films and videos;
• Sound recordings such as music albums, and audiobooks;
• Computer programs and software; and
• Broadcasts such as radio and television programmes.

In the digital age , the relevancy of copyright has increased manifold. It regulates and protects the distribution and sharing of digital content such as images, videos, articles, and software. Creators are protected from unauthorized usage and distribution of their works online.

The duration of copyright protection varies depending on the type of work . For literary, dramatic, musical, and artistic works, the term protection is the life term of the creator and 60 years after the death of the creator . In the case of cinematographic films, sound recordings, photographs, and anonymous/pseudonymous works, the term is 60 years from the date of publication.

While transferring of copyright, you should keep in mind the following important factors:

(1) Written agreement

To be a valid transfer, the terms agreed between the parties shall be in writing by executing a Copyright Transfer Agreement ( "Agreement" ). The Agreement shall be in compliance with the Copyright Act, 1957 , the Indian Contract Act, 1872 , and other applicable laws and regulations. The Coopyright Transfer Agreemetn should be signed by the Assignor or their duly authorized agent.

(2) Clear and specific terms

It is crucial to clearly and precisely define the works that are being transferred. This includes specifying the nature of copyright such as literary works, artistic works, computer programs, etc. For example, if you are an author of a book, it is pertinent to mention which specific book you are transferring under this Agreement. Often confusion in wording or identification of specific work ends up in legal disputes between the parties.

(3) Fair compensation

Transferring the copyright typically involves an agreed-upon payment or consideration . It is crucial to evaluate the fair value of the work through market research . Once the amount has been finalized, the payment can be made in various forms, such as lump sum payment at the time of signing the agreement or in multiple instalments. It is also crucial to mention the method of payment to be used under the agreement.

(4) Exclusive or non-exclusive transfer

Parties must decide whether the transfer will be exclusive or non-exclusive. In an exclusive transfer, the Assignee gains sole rights to the transferred work, preventing the Assignor from exploiting or transferring the work to others. On the other hand, a non-exclusive transfer allows the Assignor to assign or license the work to multiple parties at the same time. The decision is based on the parties and is subject to particular work.

(5) Duration of transfer

The duration of the transfer is a crucial factor. You should mention whether the transfer is a temporary (for a shorter period) arrangement or a permanent arrangement . For example, an author assigns the rights in a book for a period of 3 (three) years, after 3 (three) years, the rights revert back to the author. If the period of transfer is not mentioned under the Agreement, the default period of transfer will be 5 (five) years.

(6) Rights and restrictions

It is essential to explicitly outline the rights being transferred to the Assignee. This includes the right to reproduction, distribution, public performance, adaptation, translation, and other related rights. This will help both parties to what extent each party has control over the work and will help in avoiding possible legal disputes. You can also specify additional restrictions or limitations such as territorial limits, and media platforms on which the copyright can be published or distributed, etc.

(7) Moral rights

Moral rights are inherent rights that remain with the creator even after the transfer or transfer of the copyright. These rights include the right to be mentioned as the creator of the work and the right to object to modification, distortion or mutilation of the work that may harm the reputation of the creator. You can clearly mention such restrictions and possible actions directly in the Agreement.

(8) Scope of use

It is important to specify the intended scope of use of the transferred work. Specifically, whether the Assignee has the right to use the work for commercial purposes, promotional works, etc. If the scope of use is not mentioned, the Assignee will be free to use the transferred work for any purpose they wish.

(9) Consider existing licenses and transfers

Take into account any existing licenses and transfers related to the work. If there are any existing agreements , it is essential to ensure that the terms of such agreements align with the transfer of the work.

(10) Compliance with the Copyright Act

It is important to ensure the transfer complies with the provisions of the Copyright Act, 1957 , and any other relevant laws or regulations.

When you license your work , it means you give someone the right to use it and the ownership still remains with you . For example, if you are a software developer, you can give a company the right to use your software for a limited period by paying the license fee. To protect your rights, entering into a written license agreement is essential.

On the other hand, transferring copyright means you give up ownership of your work to someone else with or without any restrictions . The transfer can be either permanent or for a specific period. For example, if you are a filmmaker, you can sell the rights to your movie to a production company.

(1) Research and verify

Before transferring the work, it is important to ensure that your work does not violate/infringe upon the rights of others . You can search for similar work on various platforms including the copyright office website , the national digital library of India , etc. and if required, seek expert consultation .

(2) Registration of copyright

Although it is not mandatory to register , registering the transfer of copyright with the concerned Registrar of Copyright provides official proof and strengthens your rights in case of any disputes. A copyrighted work can be registered online through the website of the Copyright Office .

(3) Confidentiality and non-disclosure

Include detailed non-disclosure clauses in the agreement to avoid disclosure of confidential information under the transfer agreement or regarding the work. If required, you can consider entering into a separate detailed non-disclosure agreement with the Assignee.

In conclusion, copyright transfer means giving someone else ownership of your creation like a book, song, or artwork. It is like selling your rights to them.

To make sure everything goes smoothly, there are some important things to remember. Firstly, you should conclude what you are going to give and the expected return/compensation from such a transfer. The main motive here is to protect the rights, so make sure to include the rights and limitations of each party in the transfer.

If the transfer involves international parties , it is important to consider international copyright laws before transferring the work.

Still unable to comprehend, you can seek legal advice before transferring your copyrighted work. Always, remember to keep records of your agreement and consider notarizing and registering the transfer for extra protection.

By understanding these differences and following some simple steps, you can confidently assign your copyright and ensure that your creations are protected.

• Copyright Assignment Agreement

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.

Economic rights allow an owner to reap economic benefits from his intellectual creations. According to section 14 of the Copyright Act, 1957, different rights are recognised with respect to the nature of the work. As per this section, it is the exclusive right of the owner to do or authorise the doing of the acts provided thereunder.

Today copyright includes a variety of industries like: the information industry and the entertainment industry and industrial design.

Assignment of Copyrights : Section 18 of Copyrights Act

The owner of the copyright of a work has the right to assign his copyright to any other person. The effect of assignment is that the assignee becomes entitled to all the rights related to the copyright to the assigned work. [2] However, mere grant of right to publish and sell the copyrighted work amounts to publishing right and not assignment of copyright.

Where the assignee of a copyright becomes entitled to any right comprised in the copyright, he shall be treated as the owner of the copyright in respect of those rights. The assignor shall also be treated as the owner of copyright with respect to unassigned rights. The legal representatives of the assignee shall be entitled to the benefits of assignment, if the assignee dies before the work comes into existence.

In  Video Master v. Nishi  Production [3] , the Bombay High Court considered the issue whether assignment of video rights would include the right of satellite broadcast as well. The Court agreed with the contentions of defendant that there were different modes of communication to the public such as terrestrial television broadcasting (Doordarshan), satellite broadcasting and video TV. The owner of the film had separate copyright in all those modes, and he could assign it to different persons. Thus, satellite broadcast copyright of film was a separate right of the owner of the film and the video copyright assigned to the plaintiff would not include this.

Mode of Assignment: Section 18 of Copyrights Act

As per section 19, assignment of copyright is valid only if it is in writing and signed by the assignor or his duly authorized agent. The assignment of a copyright in a work should identify the work and specify kind of rights assigned and the duration and territorial extent of such assignment. Further, it should specify the amount of royalty payable, if any, to the author or his legal heirs during the continuance of assignment and the assignment will be subject to revision, extension or termination on terms mutually agreed upon by the parties.

If the period of assignment is not mentioned it will be deemed to be taken as five years from the date of assignment. If the territorial extent of such assignment is not stipulated, it will be taken as applicable in whole of India.

Also, Section 19(8) contemplates that the assignment of copyright work against the terms and conditions on which rights have been assigned to a particular copyright society where the author of the work is a member shall be void. Further, Section 19(9) and section 19(10) opine that the assignment of copyright for making cinematograph film or sound recording shall not affect the right of the author to claim an equal share of the royalties and consideration payable with respect to use of his protected work.

In  Saregama India Ltd v. Suresh  Jindal [4] , it was held that the owner of the copyright in a future work may assign the copyright to any person either wholly or partially for the whole of the copyright or any part thereof and once the assignment is made the assignee for the purpose of this Act is treated as the owner of the copyright.

Licensing of Copyright

The owner of copyright may grant a license to do any of the act in respect of which he has an exclusive right to do. The license can be classified into following categories:

Voluntary license: : Section 18 of Copyrights Act

The author or the copyright owner has exclusive rights in his creative work and he alone has right to grant license with respect to such work. According to section 30 of the Copyright Act 1957, the owner of the copyright in a work may grant any interest in his copyright to any person by license in writing, which is to be signed by him or by his duly authorised agent. A license can be granted not only in existing work but also in respect of the future work, in this situation assignment shall come into force when such future work comes into existence. Where a licensee of the copyright in a future work dies before such work comes into existence, his legal representatives shall be entitled to the benefit of the license if there is no provision to contrary.

The mode of license is like an assignment deed, with necessary adaptations and modifications in section 19 (section 30A). Therefore, like an assignment, a license deed in relation to a work should comprise of following particulars:

• Duration of license
• The rights which have been licensed
• Territorial extent of the licensed
• The quantum of royalty payable
• Terms regarding revision
• Extension and termination

Voluntary licenses can be:

Exclusive –  The term exclusive license has been defined in Section 2(j) as a license which confers on the licensee and persons authorized by him, to the exclusion of all other persons, any right comprised in the copyright work.

Non-exclusive  – It does not confer right of exclusion. It is mere grant of an authority to do a particular thing which otherwise would have constituted an infringement. When owner grants an exclusive right, he denudes himself of all rights and retains no claim on the economic rights so transferred.

Co-exclusive –  Here the licensor grants a license to more than one licensee but agrees that it will only grant licences to a limited group of other licensees.

Sole license  – Where only the licensor and the licensee can use it to the exclusion of any other third party.

Implied license –  Author impliedly allows or permits the use of his work. For example, he had knowledge that someone is using his work but he did not take any action.

Compulsory Licenses

 Compulsory and statutory licenses can impact both the identity of the licensee who the owner chooses to deal with and the terms, including rates of royalty, that the owner may stipulate for such dealing. Viewed from this perspective, compulsory licenses are less of an infraction on owner autonomy, on both these counts. The owner does retain a fair bit of autonomy to enter into appropriate licensing arrangements with those who he may deem fit, and he is also permitted to negotiate on the terms of the license within the zone of reasonableness. Normally, it is an unreasonable refusal to deal with a person that gives rise to a compulsory license. This brings us to the third important distinction between a compulsory and statutory license. The former is always granted upon specific application by an individual to the competent authority. The latter, on the other hand, is a blanket fixation of rates of royalty by the authority and a grant of standardised licenses to all those who are interested in availing the same. The owner, as a necessary corollary, has no autonomy on the identity of those who obtain the license, or what they pay as royalty for the same.

 Categories of Compulsory Licenses

There are five main categories of compulsory licenses currently operating in India.

 These are:

1. Licenses in respect of works unreasonably withheld from the public;

 2. Licenses in respect of orphan works;

 3. Licenses in respect of works for the differently abled;

 4. Licenses in respect of translations;

5. Licenses in respect of reproduction and sale of works unavailable in India.

Statutory Licenses

 As seen from the above discussion of compulsory licenses, such licenses can be understood as a particularised expropriation of owner autonomy in respect of the copyrighted work. The need for such expropriation arises only upon acts or inaction on the part of the owner that render the work unavailable to the public or differently abled persons. Statutory licenses, on the other hand, do not require any examination into the conduct of the owner. It attempts a wholesale expropriation of owner autonomy, once the work fits within the broader class of works that can be so licensed.

There are two such categories of statutory licenses, namely cover version recording licenses (Section 31C) and broadcasting licenses (Section 31D).

 The first has existed, though as part of the fair dealing exceptions in Section 52, from the very beginning. The second is a very recent addition to the Act vide the 2012 amendment.

The term ‘assignment’ and ‘license’ are not interchangeable. An assignment is different from a license. Generally, in absence of any provision to the contrary the assignee becomes the owner of the assigned work, whereas in case of a license the licensee gets the right to exercise particular rights only.

An assignment may be general, i.e. without limitation or an assignment may be subject to limitations. It may be for the whole term of copyright or any part thereof. An assignment transfers an interest in and deals with copyright itself as provided under section 14 of the Act, but license does not convey the copyright but only grants a right to do something, which in absence of license would be unlawful. An assignment transfers title in copyright, a license merely permits certain things to be done by licensee. The assignee being invested with the title in the copyright may reassign [5] .

[1] This is known as the ‘Doctrine of Sweat of the Brow’, whereby a work is given copyright protection if the author has applied ‘labour, skill or judgment’ in creating the work irrespective of the level of originality in the work. Evolved from the decision in Ladbroke v William Hill, [1964] 1 All E.R. 465.

[2] Section 18(2); Copyright Act, 1957.

[3] 23 IPLR 388 (1998).

[4] 2007 (34) PTC 522 (Cal).

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

Author Name: Muskaan Mathur [Student, Savitribai Phule, Pune University (SPPU)]

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Assignment of Copyright – Explained With Modes and Disputes

Original work may not be reproduced, distributed, or sold by anybody other than the copyright owner without that owner’s consent. As a result, the law allows the copyright owner to assign ownership to a third party.

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 reproduce, distribute, display, perform, or alter it.

This article discusses the concept of copyright assignment, which involves the transfer of ownership or rights in a copyrighted work from the original copyright holder (assignor) to another party (assignee). The article also explains the various aspects of copyright assignment, including its mode of assignment and disputes with respect to the assignment of copyright.

Assignment of Copyright

(Section 18 of the Copyright Act, 1957 )

The owner of the current work or the potential owner of the future work may assign the copyright. It may be fully or partially allocated. Limitations may apply to all or a portion of the copyright.

Additionally, if future work is assigned, the assignment will become effective when the new work is created. In future works, “assignee” includes the assignee’s legal representative if they die before the work is created.

The court ruled in  Saregama India Ltd. vs Suresh Jindal And Ors.  that the copyright owner to a future work has the right to assign the copyright, in whole or in part, to a third party. This indicates that the owner may assign the copyright ownership for the entire term or only a portion.

The assignee is regarded as the legal owner of the copyright after the assignment is made, and the Copyright Act recognises all associated rights and benefits. As mentioned above, the ruling affirms that copyright ownership can be transferred by assignment, enabling people or organisations to obtain and exercise control over the rights connected to the copyrighted work.

Mode of Assignment of Copyright

(Section 19 of the Copyright Act, 1957)

Every assignment of the copyright to a work must be made in writing and be signed by the assignor or an authorised representative. Only that assignment will be accepted. Any assigned work must include all relevant information, including the assignment, length, rights, and geographic scope.

The amount of any royalties or other payments made to the author or his legal heirs during the assignment should also be specified. Any revisions, extensions, or terminations of the assignment are subject to the mutually agreed-upon terms and circumstances.

Let’s say the assignee fails to utilise the right granted during the assignment within a year of receiving it. If such a thing occurs, the assignment of those rights will be presumed to have terminated unless otherwise specified in the assignment. When the assignment time and geographical scope are not specified, they will be assumed to be five years from the date of the assignment and inside India, respectively.

The Bombay High Court considered whether the assignment of video rights included the right of satellite transmission in the case of  Video Master vs Nishi Production . The court accepted the defendant’s claim that several public communication channels, such as satellite broadcasting, video TV, and terrestrial television broadcasting, each constituted a distinct copyright.

As a result, the film’s owner may transfer these rights to other people or companies. The court concluded that the video copyright granted to the plaintiff was separate from the copyright for the satellite transmission of the movie. Consequently, the satellite broadcast right was not part of the assignment.

Disputes With Respect to the Assignment of Copyright

(Section 19A of the Copyright Act, 1957)

After receiving a complaint from the assignor and completing an investigation, the appellate board has the authority to revoke the assignment or issue any orders it sees suitable when the assignee fails to execute the powers granted to him if such failure is not a result of any action or inaction on the part of the assignor.

If the assignor is also the author, the appellate board should hold off on issuing any revocation unless it is established that the terms of the assignment are harsh to the assignor. Additionally, no revocation may be made for five years if an assignment has been made.

The appellate board should handle copyright assignment complaints promptly and with diligence. They have a time limit of six months from the date of receiving the complaint to reach a final decision. If, for any reason, there is a delay beyond this period, the appellate board must explain the reasons for the delay. The goal is to ensure that copyright disputes are resolved promptly and transparently.

In this evolving world, copyright assignment is an unavoidable need. People are not always able to rely on themselves. The ownership of the work must be transferred to properly frame the art and realise the original piece’s full creative potential.

Furthermore, copyright assignment aids in the seamless development of the creative process when several creative minds collaborate or when a work is adapted across various media. It allows for fresh viewpoints, interpretations, and variations that could improve the original work or investigate other creative paths.

Read Next: Doctrine of Merger Under Copyright Law

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India: Perfecting The Title - Copyright Assignments In The Media & Entertainment Industry

The Indian media and entertainment industry had for a long time been an unorganized industry based mostly on relationships. Arrangements and understandings between parties were not verbose and documents mostly only indicated the basic understanding and did not necessarily describe meticulously the nature of the rights being assigned or the expanse of the modes in which the same could be exploited. In the year 1998, the Indian government recognized the entertainment industry as an "industry" after which there was a gradual shift in focus on proper documentation and execution of agreements between the parties for assignment of copyrights in works that were being created and the scope of such assignments.

The amendments in the Indian Copyright Act, 1957 ( "Act" ) from time to time and the surge in suits pertaining to ownership and exploitation of copyright in works particularly, cinematograph films has resulted in parties focusing on proper execution and documentation of assigned rights. However, the acquisition of rights for the classic/older Indian movies is often an arduous task plagued by incomplete or inaccurate chain of title in copyright ownership over such movies. On occasions, the nature of the assignment is unclear or the scope of the assignment is not well defined and at times multiple conflicting rights may have been created in favour of different assignees.

Quite often issues pertaining to copyright ownership in cinematograph films and underlying works stem from section 18 of the Act that recognizes the right of the owner of a copyright in a work to assign a part of the bundle of rights in a work. An owner can thus enter into multiple transactions for different rights in the same work. Also, the Act envisages the possibility of a work being assigned only for a limited term and not necessarily in perpetuity giving the owner further flexibility in monetizing its rights. Furthermore, a cinematograph film is in itself a composite work which incorporates multiple works in which separate rights subsist. Accordingly, whilst acquiring rights in cinematograph films, the assignee must conduct a thorough due diligence regarding the rights being acquired including the ownership and ability of the assignor to assign all such rights that the assignee seeks. The entire chain of the title needs to be verified with special attention to the nature of rights available, the modes of exploitation permitted, the tenure for which the rights are available, the territory for which the same are available etc. The term 'chain of title' refers to each document which pertains to the creation of the work and the subsequent transfer of ownership of each right within the bundle of rights subsisting in a work. This article seeks to highlight how courts have dealt with some such disputes with regard to ownership / ability to exploit copyright in the above context.

One of the earlier cases which drew attention to scope of an assignment in a cinematograph film by a producer is Raj Video Visions v K Mohana Krishnan 1 (" Raj Video Visions case" ) . The producer of the Tamil film "Pasamalar" (" Producer ") assigned all the rights in the cinematograph film, other than the rights for the Hindi version of the film, to one of the defendants in 1961 (" First Assignee "). In or around 1988, the Producer further assigned the video rights for exploitation by exhibition, distribution, printing, transferring master cassettes and lending master cassettes for the film (" Video Rights ") to the Plaintiff. The Plaintiff filed a suit for copyright infringement against the First Assignee for exploitation of the Video Rights. The First Assignee claimed that they had been granted copyright in the film "Pasamalar" in entirety and in perpetuity and this included the assignment of the Video Rights due to which there was no infringement of the rights of the Plaintiff. The Hon'ble Bombay High Court considered the assignment agreements executed by the Producer and concluded that in 1961, the Producer itself was not aware of "Video Rights" which came into existence in the future due to advancement in technology and therefore the same could not have been said to be assigned to the First Assignee. The Plaintiff was the rightful assignee of the copyright in the Video Rights and the First Assignee's act of telecasting the film would amount to an act of infringement of the Plaintiff's rights. As a result of this decision, assignment agreements came to incorporate terms to ensure that the assignee is vested with the rights in modes of exploitation of copyrights in the work which may be developed in the future as well. The Copyrights Act now contains a specific provision to the effect that an assignment in respect of a work shall not apply to a mode or medium of exploitation which did not exist or was not in commercial use as on the date of the assignment unless it is specifically referred to in the assignment.

The other common issue which has arisen in the context of cinematograph films is the scope of the modes of exploitation of rights assigned in the absence of a clear definition of the rights being assigned. In the case of Video Master v Nishi Production 2 the Bombay High Court was faced with the question of whether the assignment of Video Rights would by itself also include satellite broadcasting rights. The Hon'ble Bombay High Court ruled that there were various modes of communication of a work to the public such as, theatrical, terrestrial, television broadcasting, satellite broadcasting etc and the owner of copyright in a cinematograph work had the ability to exploit each of these modes. Therefore, a copyright owner could assign the rights for communication of work for each mode separately and such rights should be specifically set out.

In the case of A.A. Associates v Prem Goel 3 the Plaintiff argued that it had acquired the sole and exclusive rights for exhibition and exploitation of the film ' Mazboor' within the territory of UP and Delhi from one of the Defendants who had acquired the said rights directly from the producer of the aforementioned film. The Plaintiff argued that the rights assigned would also include telecast rights. The Plaintiff filed a suit to restrain the broadcast of the said film on Doordarshan, Zee TV, cable TV and pay TV. The Hon'ble Delhi High Court ruled that on a perusal of the assignment agreement on the basis of which the Plaintiff was claiming rights, it appears that the intention was to solely assign the theatrical rights in the film.

A different view was however taken in the case of M/s International Film Distributors v. Sh. Rishi Raj 4 where an issue pertaining to the scope of assignment of rights came up for consideration. In this case, the original producer of the film ' Kohinoor' had been declared insolvent. The assets of the producers along with the rights in the film including entire negative rights, sole and exclusive commercial and non-commercial video rights in all the formats were assigned to the official assignee of the Bombay High Court ( "Official Assignee" ). The Plaintiff received an offer from the Official Assignee for acquiring the rights available with the Official Assignee wherein it was clarified that the distribution rights of the said film are perpetually held by another party under an agreement and hence only other rights as available with the Official Assignee were for sale. Prior to entering into the assignment agreement, the Plaintiff received a notice from the Defendant notifying it of the agreement entered between the defendant and the producer of the film in 1961. It was stated that by virtue of the agreement, the Defendants were the owner of the sole and exclusive copyrights for exploitation, distribution and exhibition of commercial as well as non-commercial rights in respect of the said feature film Kohinoor in 35mm as well as reduced size and other sizes including the rights of television and all other rights attached to that exploitation, exhibition and distribution for the entire world excluding India, and few more territories. The Plaintiff proceeded to acquire rights offered by the Official Assignee for the said film on an as is where is basis. The Plaintiff thereafter filed a suit against the Defendant claiming that the Defendant was interfering with the Plaintiff's exclusive copyright in the said film. Furthermore, the Plaintiff alleged that since the agreement was entered into by the parties in 1961, the rights if any, assigned to the Defendant were solely for theatrical release and not for satellite broadcast. The Single Judge granted an injunction. However, in appeal, the division bench of the Delhi High Court upon a perusal of the terms of the agreement opined that there was no restriction imposed on the enjoyment of copyright which is vested with the earlier exclusive owner with regard to the territories for which rights were assigned. It held that whilst interpreting agreements, the intention of the parties has to be taken into consideration and that inspite of the satellite rights not having been specifically referred to in the agreement, the Defendant was entitled to exploit the same in respect of the territories as set out in its agreement with the original producer.

The various legal proceedings which have arisen make it evident, that lack of clarity in agreements as to the exact nature of the rights and / or mode of exploitation being granted results in muddled situations.

Recently, the Bombay High Court in the case of Goldmines Telefilms Private Limited v Achla Sabharwal 5 has dealt with a similar issue in light of multiple assignments being entered into by the Producer of a film " Sheela ". Each document was differently worded and also comprised a significant overlap in the nature of rights assigned. The Court upon examining various documents relating to the chain of title had refused to issue an injunction in favour of an entity that at first blush appeared to have acquired rights from the entities to which the rights were first assigned. The number of agreements that had been entered into by the Producer, the lack of clarity as to the scope and validity of the nature of rights granted to multiple parties and the confusion that the same has created is evident from the complex facts recited below. In the present case, the producer had entered into an agreement for assignment of certain copyrights in the film Sheela with one Mr S.D. Sharma on 5 December 2002 for a period of 25 years from the date of the agreement ( "First Agreement" ). Thereafter in or around 5 June 2007, the producer entered into a deed of assignment with one Swastik Distributors for the film " Sheela " ( "Second Agreement" ). This was followed by the producers executing another assignment deed with Mr Ravi Sharma, heir of Mr S.D. Sharma, party to the First Assignment, on 19 August 2010 ( "Third Agreement" ) assigning the rights for 35 films, including Sheela . The producers then executed a further assignment deed on 7 September 2010 with the Defendant for purportedly assigning all the copyright in the film Sheela ( "Sabharwal Assignment" ). The Producer had thus granted rights to three different assignees at different times i.e. Sharmas, Swastik Distributors and Sabharwal.

The Plaintiff claimed to have acquired copyrights in the film Sheela from the assignee of the Third Agreement (i.e. Sharma). Such acquisition by the Plaintiff was advertised in the trade journal "Complete Cinema" on 4 September 2010 and was met with no objections. The Plaintiff licensed the satellite broadcasting rights in the film Sheela to Sony Pictures Network (India) Private Limited (" Sony ") for a period from June 2015 to June 2019 and in June 2019 executed another license agreement for the same purpose effective up to June 2024.

In the meanwhile, the Defendant (Sabharwal) also issued a notice in the trade journal, Complete Cinema, advertising its ownership of copyright in the film " Sheela " and did not receive any objections for the same. The Defendant then assigned the theatrical rights in perpetuity to one Shri Vijaydeep Combines. On 28 September 2010 the producer of the film "Sheela" wrote to a colour laboratories informing that all rights in the film " Sheela " had been assigned to the Defendant (Sabharwal) and that the labs should deliver the picture and sound negatives to the Defendant.

In August 2019, one Mr Nagraj published a notice in the trade journal -Complete Cinema notifying that he had rights in the film " Sheela ". Upon noticing this the Plaintiff approached Mr Nagraj only to find out that the rights did not vest with him but with Swastik Distributors, the assignee of the Second Agreement. The Plaintiff thus with a view to perfect its title acquired rights that were being claimed by Swastik Distributors ( "Swastik Agreement" ).

The Defendant in May 2020 filed a criminal complaint against Sony for broadcast of the film Sheela on one of its channel and in October 2020, the Defendant also wrote to the Information and Broadcast (I&B) Ministry complaining of illegal broadcast of its movies including the film " Sheela ". Sony received a letter from the I&B Ministry and communicated the same to the Plaintiff. The Plaintiff thus issued a notice to the Defendant and subsequently filed a suit against the Defendant in February 2021.

The Hon'ble Bombay High Court observed that for the Plaintiff's suit to succeed, it must succeed on the basis of its own documents of title. The Court considered the content of each of the numerous assignment deeds which brought out several lacunae in the chain of title claimed by the Plaintiff. Firstly, the Court observed that the First Agreement by the language used was simply an "agreement to assign" and not an "assignment" and that in any event the term of the agreement was limited to a period of 27 years. Furthermore, the First Agreement did not include an assignment of satellite rights as the agreement recorded that these rights vested with another entity until the year 2003. The Court further observed that the Second Agreement contained no reference to the First Agreement in the chain of title and thus raised further concerns as to whether the First Agreement had ever taken effect or even considered as an assignment by the producers. To complicate matters further, the producer filed an Affidavit stating that (i) vide the Second Agreement the producer had assigned all the satellite and electronic media rights in the film " Sheela " to Swastik Distributors and that the First Assignment did not encompass such rights and also that (ii) vide the Third Agreement he assigned the negative rights, lock stock and barrel to Mr Sharma including satellite rights. The Court observed that there was an overlap of rights and the period of assignment as granted to the assignees of the Third Agreement and the Second Agreement. Finally, the Swastik Agreement also indicated the conflicting timelines and rights in comparison to the Third Agreement and thus the acquisition of rights of Swastik by the Plaintiff did not seem to prima facie perfect the title of the Plaintiff. Whilst the Plaintiff relied upon multiple conflicting documents to demonstrate its title, the Defendant relied only on the Sabharwal Assignment to claim the benefit of all the rights vested in it by the producer in return for a sizeable consideration. The Court observed that the ownership of rights claimed by the Plaintiff would have to be proved at trial and that no prima facie case had been made out. The Court thus refused an injunction against the Defendant's with regard to the exploitation of its rights in the film " Sheela " and in fact imposed costs of INR 5.9 lakh on the Plaintiff.

The Goldmines case is yet again a timely reminder that thorough due diligence and tracking of title is a necessary pre-requisite prior to acquisition of any cinematograph film.

1. AIR 1998 Mad 294.

2. (1998) 23 IPLR 388 (Bom).

3. 2002 (24) PTC 369

4. [FAO (OS) No.81/2002]

5. IAL-4402/21 in ComIP(L) 4398/21

The content of this document do not necessarily reflect the views/position of Khaitan & Co but remain solely those of the author(s). For any further queries or follow up please contact Khaitan & Co at [email protected]

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Deed for Assignment of Copyright

THIS DEED OF ASSIGNMENT is made at ________ this _________ day of __________ between Mr. A residing at __________ hereinafter referred to as the Author of the One Part and Mr. B carrying on business at ________ hereinafter referred to as the Publisher of the Other Part.

1.      The Author has written a book entitled ___________ (hereinafter called "the said book") and desires to publish the same.

2.      The author is the absolute owner of the copyright in the book. The copyright is registered with the Registrar of Copyrights in ____________.

3.      The publisher's representative has scrutinized in detail and to his satisfaction the manuscript of the book and has offered to purchase the copyright in the said book for the purpose of publication.

4.      The Author has agreed to do so in consideration of the Publisher paying him a sum of Rs_________ as lump sum royalty and on the following terms and conditions agreed to between the parties.

NOW THIS DEED WITHNESSETH that pursuant to the said agreement and in consideration of the Publisher paying to the Author a sum of Rs_________ on the execution of the Agreement (receipt whereof the author admits) he the Author hereby assigns to the Publisher the Copyright in the said book TO HOLD the same unto the Publisher absolutely throughout India and subject to reservations hereinafter contained:

1.      And the Publisher agrees and undertakes that the said assignment is restricted to publish the said book in India only and the Publisher shall not without the prior consent in writing of the author, publish any translation thereof in any other language and shall not allow it to be exploited for converting into a play or any cinematographic film or any Television serial.

2.      The Publisher undertakes to mention in the first edition, all reprints and subsequent editions the name of the author as author of the book.

3.      The Author hereby warrants to the Publisher that:

a.      The Author is the exclusive owner of the copy right in the said book and he has not assigned the Copyright in or given license to use the copy right to anybody else or encumbered the same or done anything so as to prevent him from assigning the said right.

b.     That the said book does not contain any defamatory obscene or otherwise objectionable matter; and

c.      That the contents of the current edition of the said book are the original work of the author and do not constitute breach of copyright vesting in any other person/s. Where limited extracts have been taken from other published or unpublished works in which copyright vests in other person/s proper acknowledgement has been made in the book.

d.     That if the publisher requires any other person/s to assist the author in preparing subsequent editions of the book the names of those persons will also be mentioned as joint author/s of the book. And the author will do and execute such other acts or deeds, if required, to confer entire copyright in the said book and as hereby assigned as may be necessary.

e.      That he will not publish either himself or through any other publisher an abridgment of the said book or any other book on the same subject and which would be competing with the book or get it published by any other person so long as the said book which is the subject matter of the present is being published by the Publisher and sold in the market.

f.      That the publisher shall have the right to get the second and subsequent editions of the book prepared by either the author or any other person of the publisher's choice. If the publisher requires the author to prepare the second or any subsequent edition, the author undertakes that he will re-edit the said book at the time of publishing second edition thereof and to make it up to date when required by the Publisher. In case of authors failure to do so, the Publisher will be entitled to get the book re-edited, enlarged or abridged through some other author of the publisher's choice. For the said re-editing, the publisher will pay to the author the sum of Rs. __________/-. the author shall complete the re-editing within _________ months of being asked to do so by the publisher.

4.      And the Author hereby agrees to:

a.      Indemnify and keep indemnified the Publisher against all claims, proceedings, costs and damages incurred or suffered or awarded or paid in respect of or arising out of any breach or non performance of any of the warranties on the part of the Author hereinbefore given or out of any claim by a third party based on facts, which if substantiated would constitute a breach or non-performance of such warranties.

b.     The publisher shall have full right to assign the said copyright to publish the book in any part of India, to any person.

5.      Permit the Author to take ___________ copies of the book on publication free of cost.

6.      In the event of any dispute or difference between the parties hereto arising out of or in connection with this deed of whatsoever nature the same shall be referred to arbitration of a common arbitrator if agreed upon, failing which to two Arbitrators one to be appointed by each party to the Arbitration. The said Arbitrators shall appoint a presiding Arbitrator and the Arbitration shall be governed by the Arbitration Act and Conciliation Act, 1996, or any statutory modification thereof.

IN WITNESS WHEREOF the Assignor has put his hand the day and year hereinabove written.

Signed and delivered by the)

Within named Assignor Mr. A)

In the presence of........)

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