Assignment of copyrights

WHAT ARE INTELLECTUAL PROPERTY RIGHTS;

Intellectual property is the product of the human intellect including creativity concepts, inventions, industrial models, trademarks, songs, literature, symbols, names, brands, etc. Intellectual Property Rights do not differ from other property rights. They allow their owner to completely benefit from his/her product which was initially an idea that developed and crystallized. They also entitle him/her to prevent others from using, dealing or tampering with his/her product without prior permission from him/her. He/she can in fact legally sue them and force them to stop and compensate for any damages.

WIKIPEDIA

Intellectual property (IP) is a category of property that includes intangible creations of the human intellect. There are many types of intellectual property, and some countries recognize more than others. The most well-known types are copyrights, patents, trademarks, and trade secrets.

The main purpose of intellectual property law is to encourage the creation of a wide variety of intellectual goods. To achieve this, the law gives people and businesses property rights to the information and intellectual goods they create, usually for a limited period of time. This gives economic incentive for their creation, because it allows people to profit from the information and intellectual goods they create. These economic incentives are expected to stimulate innovation and contribute to the technological progress of countries, which depends on the extent of protection granted to innovators.

WORLD TRADE ORGANISATION;

Intellectual property rights are the rights given to persons over the creations of their minds. They usually give the creator an exclusive right over the use of his/her creation for a certain period of time.

Intellectual property relates to pieces of information which can be incorporated in tangible objects at the same time in an unlimited number of copies of different location anywhere in the world. The property is not in those pieces but the information reflected in those pieces. The information, concept, ideas and a creative work of a human being make him intellectual. The new concepts, art, innovations, machine, design, thought, literatures, apparatus, etc. are treated as intellectual properties and it gives the creator, artist, scientist exclusive right to exploit its creation for economic development.

Article 2(viii) of Convention Establishing, the World Intellectual Property Organisation (WIPO), 1967 provides that “Intellectual Property” includes rights relating to;

1. Literary, artistic, and scientific works;
2. Performance of performing artists, phonograms and broadcasts;
3. Inventions in all fields of human endeavour;
4. Trademarks, service marks and commercial name and designations;
5. Protection against unfair competition and all other rights resulting from intellectual activities in the industrial, scientific, literary and artistic fields.

The Intellectual Property thus, includes

1. Copyrights;
2. Trademarks;
3. Service Marks;
4. Geographical Indications;
5. Patents;
6. Utility Models;
7. Plant Varieties;
8. Industrial Designs;
9. Trade Secrets;
10. Layout Design of integrated circuits etc.

LET’S CONSIDER ONE BY ONE

COPYRIGHTS

In India Copy Rights subsists in

1. original literary, dramatic, musical and artistic works;
2. cinematographs films and
3. sound recordings.

The subject matter of copyright includes e.g. poems, catalogues, consignment note, directories, mathematical tables, railway timetables, road books, guide books, scientific questions and answers, rules of game, stud books, trade statistics, any piece for recitation, choreographic works or entertainment in dumb show, the science arrangements or acting form which can be written, sound recordings, films, a painting, sculpture, drawings, an engraving or a photograph etc., whether or not any such work possesses artistic quality , literary works also includes computer programming.

The Copyright Law generally provides to the owner of copyright the right to;

1. reproduce the work in any material form;
2. to issue copies of the work to the public;
3. to perform work in public;
4. to communicate it to public;
5. to make any cinematographic film or sound recording in respect to those work;
6. to make translation of work;
7. to make adoption of works, etc.

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

ASSIGNMENT OF COPYRIGHTS;

Assignment means; a task or piece of work assigned to someone as part of a job or course of study. It can be said that assignment is a task given by someone to other to perform a part of a job. It can also be said that it an act of transfer of rights or property from one person to other.

Cambridge Dictionary: the process of giving a particular job or piece of work to someone, or of sending someone to chosen place to do a job.

A transfer of rights in real property or Personal Property to another that gives the recipient, the transferee, the rights that the owner or holder of the property, the transferor had prior to the transfer. Such as an assignment of wages is the transfer of the right to collect wages from the wage earner to his or her creditor.

An assignment services two purposes:

1. as for as assignee is concerned, it confers on him the right of exploitation of work for a specified period in the specified territory;
2. for assignor, it confers on him right to receive royalty on the work assigned.

The owner may assign copyright either wholly or partially for the whole or any part of such Copyright to any person. The Copyright of future work can also be assigned, on a condition that assignment shall be effective only when the work come into existence. The assignment can be a general assignment or subject to some conditions.

NOTE: the assignment of Copyright may be limited assignment both in content and period. An assignment does not automatically mean that it is an absolute assignment. The intention of the parties with regard to the nature and extent of the assignment is required to be ascertained from the agreement itself.

The Copyright Act, 1957, Section 18 provides that; 

18. Assignment of copyright. —

(1) The owner of the copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copyright either wholly or partially and either generally or subject to limitations and either for the whole of the copyright or any part thereof: Provided that in the case of the assignment of copyright in any future work, the assignment shall take effect only when the work comes into existence.

(2) Where the assignee of a copyright becomes entitled to any right comprised in the copyright, the assignee as respects the rights so assigned, and the assignor as respects the rights not assigned, shall be treated for the purposes of this Act as the owner of copyright and the provisions of this Act shall have effect accordingly.

(3) In this section, the expression “assignee” as respects the assignment of the copyright in any future work includes the legal representatives of the assignee, if the assignee dies before the work comes into existence.

The Copyright (Amendment) Act, 2012 has introduced three provisos in Section 18(1) of Copyright Act, 1957 as follows;

Provided further that no such assignment shall be applied to any medium or mode of exploitation of the work which did not exist or was not in commercial use at the time when assignment was made, unless assignment specifically referred to such medium or mode of exploitation of the work;

Provided also that the author of the literary or musical work include in a cinematograph fill shall not assign or waive the right to receive royalties to be shared on an equal basis with assignee of copyright for the utilisation of such work in any form other than for the communication to the public of the work along with the cinematograph film at cinema hall, except to the legal heirs of the authors or to a copyright society for collection and distribution and any agreement to contrary shall be void;

Provided Also that the author of literary work or musical work included in sound recoding but not forming part of any cinematograph film shall not assign or waive the right to receive royalties to be shared equal basis with the assignee of copyright for any utilisation of such work except to the legal heirs of the author or to a collecting society for collection and distribution and any assignment to the contrary shall be void.

When an assignee of copyright becomes entitled to any rights comprised in the copyright. He/she shall be considered the owner of that part assigned to him/her and for remaining part (that has not assigned) the author of copyright will be considered as owner. The legal heirs of assignee shall be entitled to the benefits of the assignment, if the assignee died before the work comes into existence.

Video Master Vs. Nishi Production 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 contention of the defendant that there were different modes of communication to the public, such as theatrical, terrestrial television broadcasting (Door darshan), satellite broadcasting and video TV. The owner of film has separate copyright in all modes and he could assign it to different persons. Thus, the satellite broadcast copyright of the film was separate right to the owner of the film and video copyright assigned to the plaintiff would include this.

ASSIGNMENT BY PROSPECTIVE OWNER;

Assignment of copyright can be done in exiting work at the time of assignment.

Section 18 permits assignment by a prospective owner, i.e. a person, who is not the first owner as defined in Section 17 of Copyright Act, 1957, in future work. Proviso provides that the parties can enter into an agreement for assignment of copyright in future work, but the assignment itself takes place only after “the work”’ comes into existence and not before. Before work comes into existence the assignment does not have any effect.

Indian Performing Right Society Ltd. Vs. Eastern India Motion Pictures Association  the Supreme Court held that an existing and future right of music composer and lyricist in their respective “ work” as defined in the Act was capable of assignment subject to the condition mention in Section 18 of the Copyright Act, 1957, as also in Section 19 of the Act, which required an assignment to be in writing, signed by the assignor or by his duly authorised agent.

MODE OF ASSIGNMENT:

Section 19 lays down condition of assignment as follows;

 Mode of assignment.

(1) No assignment of the copyright in any work shall be valid unless it is in writing signed by the assignor or by his duly authorised agent.

(2) The assignment of copyright in any work shall identify such work, and shall specify the rights assigned and the duration and territorial extent of such assignment.

(3) The assignment of copyright in any work shall also specify the amount of royalty payable, if any, to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties.

(4) Where the assignee does not exercise the right assigned to him under any of the other sub-sections of this section within period of one year from the date of assignment, the assignment in respect of such rights shall be deemed to have lapsed after the expiry of the said period unless otherwise specified in the assignment.

(5) If the period of assignment is not stated, it shall be deemed to be five years from the date of assignment.

(6) If the territorial extent of assignment of the rights is not specified, it shall be presumed to extend within India.

(7) Nothing in sub-section (2) or sub-section (3) or sub-section (4) or sub-section (5) or sub-section (6) shall be applicable to assignments made before the coming into force of the Copyright (Amendment) Act, 1994.

THE COPYRIGHT (AMENDMENT) ACT ,1994 added new SECTION 19A as follows; REVOCATION OF ASSIGNMENT.

1. If an assignee fails to make sufficient exercise of the rights assigned to him, and as such failure is not attributable to any act or omission of the assignor, then the Copyright Board may, on receipt of a complaint from the assignor and after holding such enquiry as it may deem necessary, revoke such assignment.

2. If any dispute arises with respect to the assignment of any copyright, the Copyright Board may, on receipt of a complaint from the aggrieved party and after holding such enquiry as it considers necessary, pass such orders as it may deem fit including an order for the recovery of any royalty payable :

 Provided that the Copyright Board shall not pass any order under this subsection to revoke the assignment unless it is satisfied that the terms of assignment are harsh to the assignor in case the assignor is also the author:

Provided further that no order or revocation of assignment under this subsection, shall be made within a period of five years form the date of such assignment."

An attempt has been made to spell out the prerequisites for the assignment of Copyright, in the interest of both the assignor and the assignee and to provide for such contingencies with respect to which the instrument of assignment is not clear so as to protect the interest of the assignor. The amendment also provides the assignor with the remedies through the Copyright

There is no particular form prescribed for assignment and it may be affected by any document in writing, even by a letter. The only requisite of assignment is that it must be in writing and it must be signed by the assignor or his duly authorised agent.

Deshmukh & Co. (Publishers) Pvt. Ltd. Vs. Avinash Vishnu Khandekar & Others; the Bombay High Court observed that assignment of copyright is valid only if it is in writing and signed by the assignor or his duly authorised agent. There is no prescribed form of assignment. The assignee to whom certain rights have been assigned by the assignor can be restrained by the court having competent jurisdiction. Copyright is not a positive right but it is a negative right, that is right to stop others from exploiting the work without copyright owners’ consent or license. Copyright is a kind of personal movable property, which can be transferred by assignment, etc., transfer inter vivos or by will or by due process of law i.e. in the event of death of owner.  

RIGHT OT AUTHOR TO RELINQUISHMENT OF COPYRIGHTS;

The provisions of Copyright Act, 1957 provides than an author of copyright may relinquish all or any of the rights comprised in the copyright in his work. An author is obliged to give notice in the prescribed form to the Registrar of Copyrights or by way of public notice. The relinquishment of copyright, however shall not affect rights subsisting in favour of any person on the date of notice.

The Registrar of Copyright shall cause the notice to be published in the Official Gazette and in such other manner as may deem fit. The Registrar of Copyright shall post the notice on the official website of the Copyright Office within 14(fourteen) days from the publication of the notice in the Official Gazette, so as to remain in the public domain for a period of not less than three years.

The effect of relinquishment of copyright is that the work, falls into public domain from the date of the notice. But where the rights in such work are subsisting in favour of any other person on the date of public notice, such rights shall not be affected. It means the entire work will fall in public domain, when rights of all other person terminate.

Disclaimer: The entire contents of this document have been prepared on the basis of relevant provisions and as per the information existing at the time of the preparation. Although care has been taken to ensure the accuracy, completeness, and reliability of the information provided, author assume no responsibility, therefore. Users of this information are expected to refer to the relevant existing provisions of applicable Laws and take appropriate advice of consultants. The user of the information agrees that the information is not professional advice and is subject to change without notice. Author assume no responsibility for the consequences of the use of such information