Introduction and recap
Last week, we delved into the concept of Creative Commons license: licenses granting everyone authority to use the copyrighted works, provided the copyright owner is acknowledged. You can read the article here.
In this issue, we discuss the concept of transfer of copyright ownership. We take a look at various accepted methods of copyright transfer of ownership: assignment, licensing, testamentary disposition and transfer by operation of the law.
Assignment
An assignment is the permanent transfer (sale) of copyright ownership from the copyright owner (the assignor) to another party(assignee) unless otherwise agreed by the parties. One may assign all or part of his or her control to the assignee. The assignee becomes the new copyright owner upon successful assignment of the copyright.
An assignment will only be valid if it has been lodged at the Copyright Board. Upon lodging a copyright assignment application with the Copyright Board, the applicant is granted a certificate of record. An entry is also made in the assignment register kept by the Board.
Licensing
Licensing (renting), on the other hand, does not result in the transfer of the copyright ownership to the licensee. It is essentially an agreement where the copyright owner grants the licensee the rights to carry out certain specific acts in relation to the copyrighted work. These may include the right to make or distribute copies of the work, publicly display or perform the copyright (literary works) for a specified period of time.
A licence granted in respect of any copyright by the person who, in relation to the matters to which the licence relates, is the owner of the copyright, is binding upon every successor in title to his interest in the copyright, except a purchaser in good faith and without notice, actual or constructive, of the licence, or a person deriving title from such purchaser. An innocent purchaser in good faith without notice, is one who, after due diligence, buys a copyright material without having any knowledge of a competing superior ownership of the work.
Learn more: Copyright Due Diligence Best Practices
There are two types of licenses:
- Exclusive license
An exclusive license grants the licensee absolute control of the copyrighted work as per the terms of the licensing agreement. The copyright owner cannot do or license the doing to another party any acts covered by the exclusive licensing agreement during the period of validity of the agreement. The licensing agreement has to be in writing. It also has to be duly signed by all the parties involved. An exclusive licence can only be revoked in accordance with the contractual terms.
An exclusive licensee and exclusive sub-licensee are entitled to the same rights of action and remedies, as if the licence were an assignment. Those rights and remedies are also considered to be concurrent with the rights and remedies of the owner of the copyright under which the licence and sub-licence were granted.
- Non-exclusive license
A non-exclusive license allows the owner to retain ownership and control of the copyrighted work during the period of licensing. For example, the copyright owner of a literary work may grant a licensee the right to prepare a derivative work like a film script. But that license, unless it states otherwise, would not authorize the licensee to reproduce, distribute, perform, or display the original work. A non-exclusive licence may be in writing, oral, or inferred from conduct. It is, however, revocable at any time by the licensor.
Period of license validity
A license cannot be for an indefinite period of time, even in cases where the licensing agreement does not specify the date of expiry of the license. The Copyright Act provides that in the event that a licensing agreement does not specify the date of expiry of the license, the license is to be deemed to have expired at the end of three years.
Assignment and licensing of future works or non-copyrighted works
An assignment or licence may be effectively granted or made in respect of a future work, or an existing work in which copyright does not yet subsist, and the prospective copyright in any such work shall be transmissible by operation of law as movable property.
Other methods of copyright transfer
- Testamentary disposition – this refers to the transfer of copyright ownership by a will. A copyright owner may transfer copyright ownership to his or her heirs in accordance with the applicable succession laws.
- Transfer by operation of the law – this refers to an automatic transfer of copyright according to the existing laws. Transfer by operation of the law occurs in instances such as bankruptcy or death of the copyright owner.
Conclusion
A copyright owner may need to sell (assign) his or her work, license it or give the ownership to dependents by testamentary disposition. In any of these instances, understanding the concept of transfer of ownership is crucial. Copyright ownership may also be ‘forcefully’ transferred by operation of the law in instances such as death or bankruptcy.
In our next part, we discuss the applicability of copyright to internet service providers; how the law protects them from copyright infringement claims, and their statutory obligations. We also discuss situations that may necessitate issuance of a take-down notice.