Reversion of Assignments & Licenses – Part III: Notes on Copyright Amendment, 2012
The Copyright Amendment brought in a few important changes with respect to mode of assignment of works. Not exercising due care with these provisions might result in reversion of rights. Thankfully, some of these changes were all encompassing and not limited only to authors or owners of works for films.
Relevant provisions of Section 19 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.”
The provisions make it necessary to clearly specify the term, territory and agreed period for the exercise of rights under an assignment. In the absence of such provisions, the statute determines them. For example, if the parties do not specify the time within which the rights will be exercised, the provisions provide for reversion of rights after one year of non-exercise of rights. The same holds true for term, if the term is not specified, the default term is said to be five years, after which, the assignment will revert. The term “perpetual” was earlier accepted as a valid term for this purpose, but whether it will be considered definite under the amendment is yet to be seen.
Also, if any provision of an assignment deed is contrary to the right of authors to equal share of royalty, then the assignment is considered void. This applies to authors of literary and musical works incorporated in both cinematographic works and sound recordings. Furthermore, an author can challenge an assignment based on the terms being harsh or that rights have not been exercised. It must be noted that Section 30 of the Act applies the aforesaid provisions to licenses as well.