BIBLIOGRAPHY

Internet Sources:-

1. http://www.mondaq.com/india/x/62750/Copyright/Assignment+Looked+Into+By+C
opyright+Board
2. http://www.mondaq.com/india/x/87398/Trademark/Assigning+Licensing+IPR+In+I
ndia
3. http://www.lawyersclubindia.com/mobile/articles/details.asp?mod_id=2751
4. http://www.ip-watch.org/2013/01/22/development-in-indian-ip-law-the-copyright-
amendment-act-2012/
5. http://www.wipo.int/edocs/lexdocs/laws/en/in/in122en.pdf

Books:-

1. Wadhera, B.L., Law Relating to Patents, Trademarks, Copyright, Designs and

Geographical Indications, Universal Law Publishing Co. Ltd., Delhi (2001).
2. Gopalakrishnan, N.S. and Agaitha, T.G., Principles of Intellectual Property, Eastern
Book Co., Lucknow (2014).
3. Iyengar, T.R. Srinivasa, The Copyright Act,1957, Butterworths India, New Delhi
(2000).
4. Naryana, P.S., Intellectual Property Law in India, Gogia Law Agency, Hyderabad
(2001).
5. Narayanan, P, Law of Copyright and Industrial Designs, Eastern Law House, Kolkata
(2002).
 TABLE OF CONTENTS

S . No. Topic Page No.

1. INTRODUCTION

2. PURPOSE OF ASSIGNMENT

3. ASSIGNMENT OF COPYRIGHT

4. DIFFERENCE BETWEEN ASSIGNMENT AND LICENSE

5. GRAMOPHONE CO. OF INDIA LTD. V. SHANTI FILMS

CORPORATIONS.
6. MODES OF ASSIGNMENT

7. DISPUTES WITH RESPECT TO ASSIGNMENT OF

COPYRIGHT
8. CONCLUSION
 ABBREVIATIONS

1. AIR - All India Reporter

2. V. - Versus
3. Cal. - Calcutta
4. All. - Allahabad
5. Co. - Company
6. KB - Kings Bench
7. p. - page
8. Ed. - edition
9. Vol. - Volume
 ACKNOWLEDGEMENT

The success and final outcome of this project required a lot of guidance and assistance from
many people and I am extremely fortunate to have got this all along the completion of my project
work. Whatever I have done is only due to such guidance and assistance and I would not forget
to thank them.

I respect and thank Asst. Prof. Dr. Prabhat Saha for giving me an opportunity to do the Project
work on ASSIGNMENT AND COPYRIGHT LAW and I am extremely grateful to him, our
subject teacher for providing all the support and guidance.
 TABLE OF CASES

1. Heap V. Hartley (1889) 42 Ch. D 461.

2. British Actors’ Film Co. V. Glover (1918) 1 KB 299.
3. Landekar & Brown V. Wolff (1907) 52 Sol Jo 45.
4. Jogendra Nath Sen V. State AIR 1991 Cal. 308.
5. In Re Jude’s Musical Composition (1907) 1 Ch 651 at p. 661.
6. Savitri Devi V. Dwarka Prasad AIR 1939 All. 305.
7. Photo Drama Motion Picture Co. V. Social Uplift Film Co. (1914) 213 Fed 374.
8. Gramophone Co. of India ltd. V. Shanti films Corporations AIR 1997 Cal 63.
 1. INTRODUCTION
An assignment may be defined as the transfer of a particular right, leaving nothing in the
assignor qua that particular right, and bestowing on the assignee the whole of the legal interest in
the rights assigned. Section 18, 19 and 19A of the Copyright Act, 1957 deal with the assignment
of copyright.

Section 18- Assignment of Copyright. It makes a provision for the assignment of copyright in an
existing work or a future work. Assignment can be for the whole of the rights or for part of rights
only that is referred to as partial assignment.

Section 19- Mode of Assignment. It mainly elaborates the mode of assignment which states that
tan assignment of the copyright in any work shall not be valid, unless-

(a) It is in writing.
(b) It is signed by the assignor or by his duly authorized agent.
(c) It identifies the work assigned and specifies the right assigned as also the duration and
territorial extent of assignment.
(d) It specifies the amount of royalty or any other interest payable to the author or his legal
heirs during currency of the assignment, which may be revised, extended or terminated
on terms as mutually agreed upon by the parties.

Section 19A- Disputes with respect to assignment of copyright. This Section provides for
determination of disputes arising with respect to-

(a) Any failure on the part of the assignee to make sufficient exercise of the rights assigned
to him.
(b) That failure referred to in (a) above is or not attributable to any act or omission on the
part of the assignor. And
(c) The fact or act of assignment itself.

Inquiry to be held by the Appellate Board on receipt of complaint to this effect and may revoke
the assignment, if necessary. However, the section mentions condition where the Board may not
revoke the assignment. Amendments have been made under these Sections by the Amendment
Act of 2012 which will be discussed in detail.
 2. PURPOSE OF ASSIGNMENT

In Gokulam Chit & Finance Co. (P) Ltd. V Johny Sugariaga Cinema Square1 it was held that the
purpose of assignment is to enable assignee to exploit rights that owner of copyright has in
literary, dramatic or musical work etc. Assignment serves two purposes, firstly, assignee gets
right of exploitation for specified period in specified territory, secondly, and assignee gets right
to receive royalty and to prevent others from exploiting the copyright.

3. ASSIGNMENT OF COPYRIGHT

(1) MEANING OF ASSIGNMENT

Assignment of copyright is the transfer or setting over to another by the owner of a copyright of
his/her entire interest or a part of his/her interest in the copyright. Since copyright is a private
right it is transmissible by assignment. An assignment carries with it the whole interest in the
thing assigned, including the right to reassign. In assignment, assignor transfers the right to an
assignee and once this right is transferred the assignee gets the whole of the legal interest in the
rights assigned. Section 18 deals with Assignment of Copyright and is covered under three
clauses which will be discussed separately.

(2) SECTION 18

I. Sub-section 1 of Section 18: Under this sub-section there is a provision made for the
assignment of copyright by the owner of the copyright in an existing work or the
prospective owner of the copyright in a future work. In both the cases, an assignment
may be made of the copyright, either:-
(a) Wholly or partially; or
(b) Generally or subject to limitations; or
(c) For the whole term of the copyright or any part thereof.

1
(2011) 3 CTC 747 (Mad).
However, the first proviso to Section 18 states that in case of assignment of copyright in any
future work, the assignment can take effect only when the work comes into existence.

By the Copyright (Amendment) Act, 2012 a second proviso has been inserted. It provides that no
such assignments shall apply to any mode of exploitation that did not exist or was not known in
commercial use when the assignment was made, unless the assignment specifically referred to
such medium or mode of exploitation of the work. This amendment strengthens the position of
the author if new modes of exploitation of the work come to exist.

Another proviso under S. 18(1), inserted through Amendment Act 2012, provides that the author
of a literary or musical work incorporated in a cinematograph film shall not assign or waive the
right to receive royalties in any form to be shared on an equal basis with the assignee of
copyright other than as a part of the film in a cinema hall. Any such agreement to the contrary
would be considered as void, except if this right is assigned or waived against the legal heirs of
the authors or to a Copyright Society for collection and distribution.

The fourth proviso added to this Section by this Amendment provides that the author of a literary
or musical work included in the sound recording but not forming part of any cinematograph film
shall not assign or waive the right to receive royalties in any form to be shared on an equal basis
with the assignee of copyright other than as a part of the film in a cinema hall. Any such
agreement to the contrary would be considered as void, except if this right is assigned or waived
against the legal heirs of the authors or to a Copyright Society for the collection and distribution.

II. Existing or future work

Works may be of two kinds, namely:-

(a) Those which are in existence;

(b) Those which are not in existence and cannot be in existence for some time to come.

Under the present law the assignment of both kinds of works is valid. Also the first proviso to
Section talks about future work. The first proviso to Section 18 states that in case of assignment
of copyright in any future work, the assignment can take effect only when the work comes into
existence.

III. Mode of Reproduction

The Act permits partial assignment of copyright, as the words “wholly or partially” bear out.

The word “either wholly or partially” provide the right of a copyright owner to divide his
copyright as to the mode of production of his work. He may divide the copyright as to:

(a) The right of painting and publishing;

(b) The right of translating;
(c) The right of performing;
(d) The right of reproduction by mechanical contrivances, such as record.

In each case, the assignee may be treated as the owner of the particular right assigned to him, but
not of any other part of the copyright which has not been assigned to him.2

Also reading sub-section (2) of Section 18 which states that:

“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.”

IV. Limitations- “Generally or subject to limitations”

The limitations may be with reference to:-

(a) The methods of reproduction;

(b) The locality in which the right may be exercised; and

2
British Actors’ Film Co. V. Glover (1918) 1 KB 299.
 (c) The term during which the right may be exercised;

The owner can specify the methods by which the reproduction may be done. In case this is done,
the assignee shall have the right to reproduce the work only in accordance with the specific
methods which the owner has prescribed by the assignment. The assignment of copyright in the
absence of a contract to the contrary, includes all the rights which go to make the copyrights.
Thus, if the owner/ assignor wants to reserve any of the rights, he must incorporate clear words
in the deed of assignment indicating that intention.

V. Sub-section (2) of Section 18

The sub-section (2) of the above section deals with the Effect of Assignment:-

(a) The assignee of a copyright to any right comprised in the copyright, as respects the right
so assigned, as the owner of the copyright, and the provisions of the Act have effect
accordingly;
(b) The assignor as respects the right not assigned to the ownership of copyright, and the
provisions of the Act have effect accordingly.

This of course assumes that the assignment is an effective one and not sham or unreal. If the
assignment is not bona fide, or the assignee is a benamidar for the author, he can’t become
entitled to any right comprised in a copyright, and can’t sue also, without joining the assignor as
co-plaintiff, because in such cases, the title continues to remain in the assignor.3

In the case of Jogendra Nath Sen V. State4 the assignee was given the right to publish while all
the other rights were not assigned by the author of the copyright to the assignee. Thus, as
respects the right to publish so assigned, even the author, though still owning all the other rights
may be held guilty for infringement for publication without the consent of the assignee.

3
Landekar & Brown V. Wolff (1907) 52 Sol Jo 45.
4
AIR 1991 Cal. 308.
VI. What passes on assignment?

If the assignor assigns his copyright to another, then in the absence of express terms, the
condition is implied that the assignor will not do anything that will render what he has conveyed
valueless and futile. In the case of Re Jude’s Musical Composition5 where there is an assignment
of the copyright in a work- whether an entire work or a work consisting of several articles or
compositions- the assignee has full power of publishing the various compositions in any way,
either separately, or together, or in part.

And the question, whether, in any case, there is assignment, depends on the terms of the
particular document involved.

VII. Sub-section (3) of Section 18

It lays down that the expression “assign” as respects the assignment of copyright in any future
work includes the legal representative of the assignee, if the assignee dies before the work comes
into existence.

4. DIFFERENCE BETWEEN ASSIGNMENT AND LICENSE

An assignment transfers an interest, and deals with, the copyright itself, as provided in this
Section, but a license does not convey the copyright, but only grants a right to do something
which, in the absence of the license, would be unlawful. The difference between assignment and
license is stated as follows:6

“While assignment transfers right in the copyright, a license merely permit certain things to be
done by the licensee. The following chief differences are to be noted. The assignee being
invested, with title in the copyright, may re-assign. The license is personal and, therefore, not
transferable. Furthermore, the assignee can sue for infringement without joining the assignor.7

5
(1907) 1 Ch 651 at p. 661.
6
Ladas on International Protection of Literary and Artistic Property, Vol. II.
7
Photo Drama Motion Picture Co. V. Social Uplift Film Co. (1914) 213 Fed 374.
The licensee can’t sue in his own name for the infringement of the copyright, since the copyright
belongs to the licensor.” The distinction between a license and an assignment is brought out in
Oldfield on the ‘Law of Copyright’8 thus:

‘”That there is a difference between a license, even on exclusive license, and an assignment is
well settled.” An assignment carries with it the whole interest in the thing assigned including the
right to re-assign, while a license is personal and not assignable without the grantor’s 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.

A licensee has no title to sue in his own name, but under sub-section (2) of this Section, the
assignee, as respects the right so assigned, is treated for the purposes of this Act, as the owner of
copyright with all rights which attach to an owner of copyright under this Act.9

An assignment of copyright is a transfer of ownership. It must always be in writing and

signed by the copyright owner. A license simply allows another person to use the work
without transferring ownership. It does not need to be in writing.

In Deshmukh and Co. (Publishers) (P) Ltd. V. Avinash Vishnu Khandekar 10 the Court
observed the following differences between the two:

(1) An assignment transfers an interest in and deals with the copyright itself as
mentioned under Section 14 but license does not convey the copyright but only
grants a right to do something, which in the absence of license would be unlawful.
(2) An assignment transfers title in the copyright whereas a license merely permits
certain things to be done by licensee.
(3) The assignee being invested with the title in copyright may re-assign, whereas the
license is personal and therefore not transferable or assignable without the
grantor’s consent.

8
2nd Ed. At p. 92-93.
9
Heap V. Hartley (1889) 42 Ch. D 461.
10
(2005) 3 Mah LJ 387.
 (4) The assignee can sue for infringement without joining the assignor whereas the
licensee cannot sue in his own name for the infringement of copyright since
copyright belongs to the licensor.

5. GRAMOPHONE CO. OF INDIA LTD. V. SHANTI FILMS

CORPORATIONS. 11

In this case, the High Court of Calcutta decided on the important question of difference between
the assignment of copyright (Sections 18, 19) and licensing of a copyright (Sections 30) under
The Copyright Act, 1957.

Facts- The Gramophone Co. of India Ltd., is the plaintiff who filed suit for grant of relief for the
acts of infringement of copyright against the defendants (Hereafter referred as ‘Plaintiff’)., where
the defendant no. 1 is Shanti Films Corporation, was alleged to have licensed the copyright
interest in the film ‘Shatru’ to defendant no. 2 in the suit for publishing cassettes of the film and
it was alleged by the plaintiff that such ‘further licensing’ by the defendant no. 1 is illegal and
void, owing to the Assignment agreement between the plaintiff and the defendant no. 1
(Gramophone Co. and Shanti Films respectively),through which Shanti Films in agreement in
writing assigned the copyright in the sound track of the Film ‘Shatru’ in favour of the plaintiff.
The defendants Shanti Films submitted before the court that the agreement in writing was not
that of the assignment of the copyright in the film, but it was simply licensing of the interest in
copyright of the production and sale of records etc., of the film. Briefly, as a matter of fact the
agreement between the parties stated:

“3. (A) The producer hereby assigns and transfers and agrees to assign and transfer to the
company absolutely and beneficially for the world...”, “the sole and exclusive right to make or
authorise the making of any record embodying the contract recordings, either alone or together
with any other recordings...” and “The producer undertakes to execute or obtain the execution of
such further assignments or assurances as may be required to safeguard the parties' rights.”

11
AIR 1997 Cal 63.
Issues covered under the case were:

(a) Whether the agreement between the parties is that of assignment of copyright or a mere
license of copyright?
(b) What is the determining factor while deciding the nature of the agreement?
(c) Will the non-payment of the royalty to the defendant no. 1 automatically make the
assigned copyright revert back to the defendant?

Held- In order to ascertain an agreement to be that of assignment or a license, the intention of the
parties are of paramount significance. To gather the intention of parties in normal course,
whether they intended to have assignment or a license,

(a) The written agreement needs to be critically analysed, and the words therein form the basis of
ascertaining the intention of the parties.

(b) Assignment should be readily accepted, irrespective of the royalty paid or not in future.

(c) Also the assignment will take effect immediately, and most importantly one needs to focus on
the right of recipient to deal with the copyright as owner thereof, by which the right to destroy
the copyright at his own volition;

These three factors in the courts opinion are determining factors to decide between assignment
and licensing.

The High Court came to the conclusion that the Plaintiff has made out a prima facie case of
assignment for the reasons, i) there is no restriction or any compulsion or any stipulation or the
grant is not conditional on whose occurrence the assignment will take place, therefore it is not a
partial assignment. Importantly the most significant factor of the ruling was that it took into
consideration the words chosen in the agreement which were "hereby assigns and transfers...
absolutely and beneficially for the world." Therefore the courts came to the conclusion that there
was assignment within the meaning of section 18 read with section 19 and the defendants have
involved in copyright infringement. The balance of convenience was held to be in the favour of
the plaintiff and hence the temporary injunction was granted by the court.

This case is a landmark judgment and caters the need of the dynamic nature of copyright law and
substantially differentiates the two modes i.e. Assignment and licensing of the copyright. In the
light of this discussion Gramophone case is significant to the extent that the agreement between
the parties and the wordings therein have the most important consideration while deciding the
question of assignment or license of copyright.

6. MODES OF ASSIGNMENT

Section 19 of the Act talks about the modes of assignment. The first sub-section of Section 19
clearly states that an assignment of the copyright in any work shall not be valid, unless-

(a) It is in writing;
(b) It is signed by the assignor or his duly recognized agent.

The word “writing” is not defined in this Act but in Section 48 of the English Act of 1956, it is
stated to include any form of notion whether by hand or printing, typewriting or similar
processes. Therefore, an oral assignment of the copyright would be invalid. Where the
assignment is in writing it must be clear and unambiguous. The other condition is that it must be
duly signed by the assignor or his duly recognized agent. With regard to duly recognized agent,
no writing is necessary to constitute a person an agent or even a ‘duly authorized agent.’

The sub-section (2) of Section 19 identifies the work assigned and specifies the right assigned as
also the duration and territorial extent of such assignment. Section 19(3) specifies the amount of
royalty payable, if any, to the author or his legal heirs during the currency of assignment, which
may be revised, extended or terminated on terms as mutually agreed upon by the parties. Sub-
section has been amended by the Amendment Act, 2012 to provide that the assignment shall
specify the ‘other considerations’ besides royalty, if any, payable to the assignor. Therefore, it is
not necessary that only monetary compensation by way of royalty could lead to assignment.
Section 19 sub-section (4) states that where the assignee fails to exercise his rights within one
year from the date of assignment, the assignment in respect of such right shall be deemed to have
lapsed, unless otherwise specified in the assignment deed. However, if the period of assignment
has not been stated, it shall be deemed to be five years from the date of assignment. [Section
19(5)]. As per sub-section 6 of Section 19 the agreement deed may specify the territorial extent
of such assignment. If silent, it shall be presumed to extend within India. Sub-section (7) makes
the provision for sub- sections (2) to (6) as prospective since it is specifically stated that these
provisions mentioned before shall not apply to assignment made prior to commencement of
Copyright (Amendment) Act, 1994.

Amendment of 2012 in the act added three provisions under section 19 namely Ss. 19(8), 19(9)
and 19(10). A new sub-section (8) has been inserted making the assignment of copyright void if
contrary to the terms and conditions of the earlier assignment to a copyright society in which the
author of the work is a member. This amendment is an attempt to streamline the business
practices. Another amendment, insertion of sub-section(9) and (10), by providing claim to
royalties from the utilization of the work used to make a cinematograph or sound recording
irrespective of any assignment of the copyright in the same, is an attempt to rationalize the
business practices prevalent in the film industry. Sub-section (9) mainly talks about assignment
in any work to make a cinematograph film while sub-section (10) talks about assignment in any
work to make a sound recording which does not form part of any cinematograph film. In both the
cases the author has right to claim royalties and other consideration.

7. DISPUTES WITH RESPECT TO ASSIGNMENT OF COPYRIGHT

Section 19A of the Act provides for determination of disputes, if any, arising with respect to:-

(a) Any failure on the part of the assignee to make sufficient exercise of the rights assigned
to him;
(b) That failure referred to in (a) above is or not attributable to any act or omission on the
part of the assignor; and
(c) The fact or act of assignment itself.

In case of failure as referred to in (a) above being established along with the fact that such failure
was not attributable to any act or omission on the part of the assignor, the Appellate Board, the
term has been added by the Amendment Act of 2012, as before there was use of Copyright Board
instead of Appellate Board, may on receipt of a complaint to that effect, and after holding such
inquiry as it may deem fit, revoke the assignment.

Sub-section (2) of the Section clearly states that an order may be passed by the Appellate Board
after complaint is received and inquiry is made. The Appellate Board may pass any such order as
it may deem fit including an order for the recovery of any royalty payable. However, the
Appellate Board may not revoke the order unless-

(i) The assignor is himself the author of the work; and

(ii) The terms of assignment are, to the satisfaction of the Board are harsh to the assignor.

The second proviso clearly states that: “Provided further that, pending the disposal of an
application for revocation of assignment under this subsection, the Appellate 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.” The second
proviso is amended to provide that pending disposal of an application for revocation of
assignment, the Board may pass any order as it deems fit regarding implementation of the terms
and conditions of assignment. Thus, terms and conditions can be imposed by the Board while
passing an order for assignment. This order may also relate to the order to be paid for
consideration to be paid for the enjoyment of the rights assigned. The third proviso clearly
mentions that the right to order revocation of assignment, can’t, however, be made within a
period of five years from the date of assignment.

The inquiry contemplated under sub-sections (1) and (2) may be of summary nature but the same
must be conducted in conformity with the principles of natural justice. Questions whether the
assignee has failed to make sufficient exercise of the rights assigned to him or whether such
failure is or is not attributable to any act or omission on part of the assignee are questions of fact.

Sub-section 3 of section 19A clearly specifies the time limit to deal with the complaint received
under sub-section (2). According to which the Appellate Board may deal with the complaint
received within a period of six months from the receipt of the complaint as far as possible.
However, if there is any delay made in the passing the final order beyond six months the
Appellate Board shall record the reasons thereof.
 8. CONCLUSION

Assignment as mentioned under Section 18, 19 and 19A is mainly considered important as it
gives the right to the owner of copyright i.e., the creator to transfer the ownership to a third party.
There are certain moral rights attached with assignment of copyright. Moral rights are
independent of the author’s copyright and shall remain with the author even if he has assigned
his copyright. These include:-

• The creator of work has the right to claim ownership thereof;

• In case of any distortion, modification or mutilation of the original work, he shall have
the right to claim damages;
• If harm is being caused to the goodwill of the creator by commission or omission of any
act by the assignee, he shall have the right to damages provided such an act is done
before the expiration of the term of assignment.

To conclude, the sole objective of assignment process is to provide both pecuniary as well as
distribution benefits to the original work of the creator. It cannot be used to deprive the original
owner permanently from his creation. Copyright Assignment is an inevitable necessity in this
dynamic world. People can’t be self-sufficient in every respect. For the better frame of the Art, the
ownership right of the creation needs to change hands and bring out the full potential of the original
work by exploring various tiers of creativity.