The oxford English dictionary1defines copyright as ‘the exclusive right given by law for a certain terms of years to an author, composer etc. to print, publish and sell copies of his original work’. Chambers encyclopedia defines copyright in its most elementary form as ‘the exclusive right to multiply copies of a book’. According to sec. 14 of copyright’s act 1957, copyright means the exclusive right to do or authorize others to do certain acts in relation to literary, dramatic or musical works, artistic works, cinematograph films and sound recording. This article delves on the assignability of copyright, the difference between assignment and license, mode of assignment and conclusion.
Being a movable property vested in the owner, copyright is assignable-
Copyright is a form of intellectual property as distinguished from physical property, it is a movable property, a beneficial interest in movable property but different from actionable claim as its real or constructive possession is with the owner.
Being a private right it is transmissible by assignment, by a testamentary disposition or by the operation of law. Sec 18 provides for assignment of copyright in the words “The owner of the copyright in an existing work or the prospective owner of the copyright in future work may assign the copyright to any person either wholly or partly and either generally or subject to limitations and either for the whole term of copyright or any part thereof. Provided that in the case of assignment of copyright in any future work, the assignment shall take effect only when the work comes into existence. The contracts which are backed by Section 18 are called the “Publishers agreement” or “Author-publisher agreement”. The author has various rights like the right to decide whether to publish his work, the right to claim authorship of his published or exhibited work, the right to prevent alteration and other actions that may damage his honor or reputation, the right to restrain or claim damages in respect of any distortion etc.2
There is a difference between assignment of copyright and it’s licensing-
An assignment carries with it the whole interest in the thing assigned, including the right to reassign, while the license is personal and not assignable without the grantors consent. An exclusive license is a leave to do a thing and a contract not to give leave to anybody else to do the same thing. The license does not confer any property, in the thing licensed to the licensee rather it only makes as action lawful which otherwise would have been unlawful giving rise to a cause of action in the form of infringement of copyright.3
A licensee has no title to sue in his own name but an assignee is considered to be the owner and can sue for the infringement without any prior consent of the assignor or even in the absence of a specific clause in the contract in that regard. Licensing usually involves some of the rights and not the whole. An author of a novel may license the right to reproduce the work in hard back to one person and paper back to anathor, the serialization right newspaper or magazine, film and dramatization rights to others and translation rights to yet anathor.
License to publish v/s assignment of right to publish-
In various cases of contract between an author and a publisher, the main bone of contention is that weather it is a contract for a license to publish or a contract whereby the author has assigned the right to publish to the publisher as the effects of both in law are different.
Assignment of right to publish should not be confused with the assignment of the complete copyright in the work because the right to publish is merely a specific right among various others which together constitute the copyright for absolute rights in a thing for example, where an author assigns to a publisher a right to publish than the later is considered to be the owner of the right to publish and the author still continues to be the owner of all other rights like right to serialization, translation etc. and after a valid assignment of the right to publish, if the author himself publishes then it will constitute infringement even though he owns other rights.4
The main issue in the case below is whether a particular contract between an author and a publisher is license to publish or an assignment of copyright-
Dharma Dutt Dhawan v/s Ram Lal Suri & others. 5
The court considered the contract to be of assignment of copyright to publish. The court rested its judgement on the following clauses appearing in the contract-
1. One of the clause vested the right of publication not only to the publisher but also to his heirs, executors, administrators and assignees. Which is inconsistent with the agreement being a mere license since the license is a personal matter between the parties only.
2. The contract empowered the publisher to transfer the right without getting the approval of the author which is also inconsistent with it being a mere license.
In,
Messager v/s Brirtish Broadcasting Co. Ltd.6
The court said that one has to look at the real meaning of the agreement and the choices of words by the parties are only indicative but not conclusive.
In the case of
Re Richard grants 7
The court brought out the difference between the assignment and a license by deciding the issue that whether in case of assignment of copyright the author can restrain the trustees of the publisher from further publication, after the bankruptcy of the publisher
The court held that where the author has assigned the right to publish in return of payment of royalties and on the bankruptcy of the publisher his trustees continue to publish the business then the author can not restrain them from doing so as the right has already passed. But on the other hand in a case where there was as agreement by the publisher to pay a share of profits to the author and the copyright still remain vested in him then the agreement get terminated at the bankruptcy of the publisher whose trustees are thereby restrained from further publication even on the terms of continuing to pay the author his share of profits but without prejudice to the right of the trustees to dispose off the stock.
In the case of,
Warne v/s Routledge 8
The issue before the court was that weather the author can restrain the publisher from selling the copies of book published by him after the period of license has expired.
The court opined that whenever there are continuous obligation on the part of the publisher like the payment of royalties to the author then the tendency of the court is to construe the agreement as conferring a conditional license to publish and it seems to follow from it that upon nonfullfillment of any of the terms the contract can be terminated but even after the termination of the contract or expiration of the period of license the publisher can not be restrained from selling the copies already published by him.
An author who has parted with his interest in copyright for an agreed amount can not obtain an injunction to restrain publication and sale of work until the sum agreed upon is paid. An assignor of copyright upon royalty terms can not enforce payment of royalties against an assignee from his grantee unless, either the assignment imposes a charge upon the copyright for the amount of royalties or the author is entitled to exercise his right of a vendor’s lien.9
Assignments can be made either wholly or partly-
The author of a work can divide the copyright into
1. Right of printing and publishing
2. Right of translating
3. Right of performing
4. Right of reproduction through records etc.
Therefore an assignment between the author and publisher must be well drafted so as to clearly state what are the precise rights which the publisher is to acquire, like- Is the publisher to have only performing rights or he has a right also to authorise reproduction or recording through mechanical instruments in case of music or dramatic words? In case of novels intended to be published as serials in magazines, is the right of publication in book form is included? In case of pictures is the publisher to have a right to publish only a single edition of a work, the number of which the edition is to consist should be declared for otherwise a publisher might print 50,000 as one edition. As the copyright can be assigned either wholly or partly similarly the copyright can be assigned in respect of an existing work as well as the future work by its prospective owner for ex. An author contracts with a publisher to assign him the copies of his new book soon to be written by him, but then the assignment will take place only when the work comes into existence. Similarly the assignment can be made either generally or subject to limitations and either for a whole term of copyright or any part thereof. [Sec. 18(1)]. The assignee of copyright becomes entitled to any right comprised in the copyright, the assignee as respect the right so assigned and the assignor as respect the rights not assigned shall be treated as the owner of the copyright. [Sec. 18(2)]
Assignment of copyright and not moral rights-
Even if the copyrights have been assigned by the author to the publisher still the moral rights remain vested in him. It enables the author to preserve the integrity of the work. If the work is distorted, tampered or modified then the author can bring action against the infringer to protect his reputation and honor, and the infringer can even be the publisher to whom the copyright was assigned. So if the author has assigned the publishing rights of his book to a publisher and the later make changes in the book without the permission of the author or otherwise distort or mutilate the work and publish it, then in the enforcement of his moral rights the author can bring an action against the publisher. Similarly there are other rights which remain alive even after the assignment. For instance even if the author has assigned the copyright in a book written by him, there is no impediment on him from coming up with another book if the new book is a work which the assignor has produced after further deliberation or research or produces the work different from the earlier work for ex. If it is a mature art with a great wealth of details or if the imagery is of a superior type, or there are fresh incidences and details in a way that the two works are substantially different.
Mode of assignment-
Sec 19(1) provides that the assignment in any work shall be valid only when it is in writing and signed by the assignor or by his duly authorised agent. No particular form of assignment is required and it would suffice if the assignment could be culled out in writing from some document and is signed by the author or his duly authorised agent. Although a model assignment deed can be drafted as under: 10
ASSIGNMENT OF COPYRIGHT
THIS DEED OF ASSIGNMENT is executed on this __________ day of _____________.
BETWEEN
Sh. _________, S/o Sh. ___________, R/o _____________ (hereinafter called “the assignor”) which expression shall unless the context so requires include his heirs, executors and administrators of the one part
AND
Sh. _________, S/o Sh. ___________, R/o _____________ (hereinafter called “the assignee”) which expression shall unless the context so requires include his heirs, executors and administrators of the other part.
WHEREAS
1. The assignor is the author of the book named ____.
2. The assignee has approached the assignor for assigning the copyrights of the said book to the assignee.
3. The assignor agrees to assign to the assignee the copyright of the said book for a consideration of Rs. ________.
NOW THIS DEED WITNESSES AS FOLLOWS:
1. In pursuance of the aforesaid agreement and in consideration of Rs._______ (Rupees ________________ only) paid by the assignee to the assignor (the receipt of which the assignor hereby acknowledges) the assignor as the absolute beneficial owner of the copyright in the said book, hereby assigns, transfers and sells absolutely to the assignee the copyright of the above-named book written by the assignor.
2. The assignor further assigns and sells to assignee the right of further printing, publishing and selling thereof in whole or in parts and in any form that the assignee may desire. The assignor also grants to the assignee the right of translation or of making any other use of the said book, all the rights hereby granted are subject however, to the provisions of section 53A of the Copyright Act, 1957.
3. The assignor hereby covenants with the assignee that he is the sole owner of the copyright in the said book and that there is no right, claim or interest of any kind, whatsoever, of any other person in the copyright of the said book.
IN WITNESS WHEREOF , the parties to this deed have set and scribed their hands at New Delhi, on the day, month and year first noted above, in presence of :
Assignor
________________________
Assignee:
_________________________
Signed………………………………………… Date ………………………………..
Witnesses:
1.
2.
Sec. 19(2) says that the assignment shall identify such work and shall specify the rights assigned and the duration and territorial extent of such assignment.
But where 19(2) is not complied with then the provisions of 10(5) and (6) comes into picture which provides that if the period is not stated then it shall be deemed to be for five years from the date of date of assignment and if the territorial extent is not provided then it is deemed to be extended within India.
Similarly 19(3) provide that the assignment shall also specify the amount of royalty payable if any to the authors or his legal heirs.
Non exercise of the right by the assignee-
Where the assignee does not exercise his right within a period of one year from the date of assignment then the assignment will be deemed to have been lapsed unless otherwise agreed [sec19(4)]. In a case where sec 19(4) applies then sec. 19A further provides that if the failure to exercise his right on part of the assignee is not attributable to the assignor then the copyright board may hold an enquiry and revoke such assignment and the order may include the recovery of any royalty payable and no order of revocation of assignment shall be made within a period of five years from the date of such assignment.
Conclusion-with respect to the rights assigned the assignee is considered to be the owner, and therefore by the operation of law he can prevent the infringement of the work irrespective of the absence of any clause in the deed for that purpose. But with respect to the rights withheld by the assignor he remains to be the owner thereof. So any ambiguity in the agreement can give rise to dispute between the parties regarding the ownership of rights, so to prevent the same the mandatory provisions of the act must form the part of the agreement.
Bibilography:
1. The oxford English dictionary
2. http://www.myvakil.com/search/Faq.asp?FaqId=36
3. see Intellectual Property Rights by Jain at p.115
4. see S. K. Kelavkar on world copyrights Vol. III p. 225,226
5. A.I.R. 1953 Punj. 279-281
6. (1929) A.C. 151 Lal’s commentary on copyright act 1951 edition 3 p. 275
7. (1907) 2 K.B. 33 lal’s commentary on copyright act 1951 edition 3 p. 284
8. (1874)L.R. 18 Eq. 497
9. Radhabinod Pal in world copyright vol. 1 p. 225
10. http://www.thecatimes.com/practice-mannuals/mannuals/assignment-copyright.rtf
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