Summary
The Copyright Amendment 2012 introduced significant changes to the assignment and licensing of copyright works in India, particularly through Section 19. The provisions require clear specification of term, territory, and the period for exercise of rights, otherwise statutory defaults and reversions apply. Notably, the amendment strengthens the protection of authors’ rights, including mandatory royalty sharing and grounds for revocation of assignments if rights are not exercised. The Copyright Board is empowered to adjudicate disputes and revoke assignments under specified conditions. Section 30 extends these assignment provisions to licenses, broadening their impact on copyright transactions.
The Copyright (Amendment) Act, 2012 introduced several important changes to the mode of assignment of works. Failure to attend to these provisions carefully can result in the automatic reversion of rights to the assignor — a consequence that parties to copyright transactions must guard against.
The Relevant Provisions
Relevant provisions of Section 19 and 19A read as follows:
“19. Mode of assignment. …
(4) Where the assignee does not exercise the rights assigned to him under any of the other sub-sections of this section within a 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.
…
(8) The assignment of copyright in any work contrary to the terms and conditions of the rights already assigned to a copyright society in which the author of the work is a member shall be void.
(9) No assignment of copyright in any work to make a cinematograph film shall affect the right of the author of the work to claim an equal share of royalties and consideration payable in case of utilization of the work in any form other than for the communication to the public of the work, along with the cinematograph film in a cinema hall.
(10) No assignment of the copyright in any work to make a sound recording which does not form part of any cinematograph film shall affect the right of the author of the work to claim an equal share of royalties and consideration payable for any utilization of such work in any form.
19A Disputes with respect to assignment of copyright.
(1) If an 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, then, the Copyright Board may, on receipt of a complaint from the assignor and after holding such inquiry 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 inquiry as it considers necessary, pass such order 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 sub-section 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, pending the disposal of an application for revocation of assignment under this sub-section, the Copyright Board may pass such order, as it deems fit regarding implementation of the terms and conditions of assignment including any consideration to be paid for the enjoyment of the rights assigned;
Provided further that no order of revocation of assignment under this sub-section, be made within a period of five years from the date of such assignment.
(3) Every complaint received under sub-section (2) shall be dealt with by the Copyright Board as far as possible and efforts shall be made to pass the final order in the matter within a period of six months from the date of receipt of the complaint and any delay in compliance of the same, the Copyright Board shall record the reasons thereof.”
Practical Consequences
The provisions make it necessary for parties to clearly specify the term, territory and agreed period for the exercise of rights in any assignment deed. Where such provisions are absent, the statute supplies defaults. If the parties do not specify the period within which rights are to be exercised, the statute provides for reversion of rights after one year of non-exercise. Where the term is not specified, the default term is five years, after which the assignment will revert. The term “perpetual” was previously accepted as a valid expression of term, but whether it will be treated as sufficiently definite under the amendment remains to be determined.
Any provision in an assignment deed that is contrary to the author’s right to an equal share of royalty is void. This applies to authors of literary and musical works incorporated in both cinematographic works and sound recordings. An author may also challenge an assignment on the ground that its terms are harsh or that the rights have not been exercised by the assignee.
It should also be noted that Section 30 of the Act applies the foregoing provisions to licences as well, extending the practical reach of these requirements beyond outright assignments.
Disclaimer: This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.