Copyright Assignment & Licenses – Part II
This post was first published on 26th June, 2014.
This post is in continuation of my earlier post regarding the meaning and principles behind copyright assignments in India. In this post, we will be specifically addressing the factors that should be taken into account while preparing an Assignment Deed and License Agreement.
Section 19 of the Copyright Act, 1957 as amended in 2012, lists certain exhaustive factors that should be taken into consideration by the parties involved, while preparing an Assignment Deed. An analysis of the factors provided in Section 19 and relevant case laws may be summarized as follows:
a) Although assignments and licenses are nothing but contractual obligations, they differ from general laws of contract in certain aspects. Unlike contracts, which permit oral (as held in Gramaphone Company of India Ltd. vs. Shanti Films Corporation AIR 1997 Cal 63) as well as unsigned contracts, a copyright assignment deed should always be in writing.
b) The parties to the assignment are required by law to specifically identify the work that has to be assigned, the nature of rights that are assigned, the consideration, royalty to be paid, mode of payment and the term and territory of such assignments. As in the previous post, the assignor has the option to limit and specify the nature of rights that are granted to the assignee.
c) In case the assignment deed does not specify the term of the assignment, the default term of the assignment shall be deemed to be for a period of five years. Further, in case the territory for which the assignment is not specified, the territory shall be deemed the geographical territory.
The Copyright Amendment Act, 2012 that was enacted with the intention of protecting the rights of the underlying authors of cinematographic films and sound recordings, has amended Section 19 of the Act to include three additional clauses. The newly added provisions may be summarized as follows:
a) Any assignment that is contrary to the terms and conditions of the rights assigned to a copyright society of which the author is a member, shall be void. In the entertainment industry it is common practice for authors of the underlying works of a cinematographic film or sound recording to assign his/her work to the applicable copyright society before approaching a producer. In order to protect the interests of authors of underlying work of films and sound recordings, this provision restricts members of a copyright society from assigning the works with terms that are contrary to that of its assignment to a collecting society.
b) Clauses 19(8) and (9) of the Copyright Amendment Act, 2012 specifically provides that nothing contained in any assignment deed relating to the assignment of any underlying works in cinematographic film or sound recording, shall affect the right of the underlying authors to claim equal share of royalty for exploitation of the works in any form other than as part of the film in cinema halls. Although, these provisions were intended to benefit the underlying authors, the ambiguous manner in which it was drafted had already created numerous ruckuses within the industry as well as in the legal domain. With multiple underlying authors being part of a single cinematographic film or sound recording, the amendment or new rules had completely failed to define what the term “equal distribution of royalties” meant. Our previous posts related to issues of the Copyright Amendment Act, 2012 can be seen here (1), here (2), here (3) and here (4).
In our next post we will discuss at length, Copyright licenses and the different types of licenses under the Copyright Act, 1957 as amended in 2012.
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