OWNERSHIP AND ASSIGNMENT OF COPYRIGHTS

OWNERSHIP AND ASSIGNMENT OF COPYRIGHT

INTRODUCTION

Copyright protection is given for  a work having originality,ie it should be from the author and must have minimum degree of  creativity. So it is the author who is the real creator of the work thereby  first owner of the copyright and Indian law recognizes author as the first owner of the copyright [1].But by the term ‘ownership’ it means it includes not only the author ,but also assignee and can even a legal entity even though not defined in the Act. In Bern convention the term Author is not defined, instead it says the person  under whose name the work is disclosed ,which implies that it is not necessary that always the author should be the owner.[2] However Indian copyright Act defines the tern ‘Author’with respect to various works, but still leaves some problems. It becomes more complex in the context of changing technologies,ie cinematographic works, sound recording ,broadcasting etc which is a combination of different works, also when author does the work in the course of employment. When new technologies emerge, different mode of communication simultaneously arise and the exploitation of the copyright  by way of  assignment &licensing will add economic benefits to the copyright owner and the provisions of assignment and licensing becomes crucial. By amendments Indian Copyright Act has taken care of such provisions, but still leaving  lacunae & the role of judiciary becomes crucial in interpreting such provisions for effectively protecting the rights of the authors.

The attempt through this paper is to analyze the provisions relating to the ownership and assignment of copyright and in the context of changing mode of communication technologies  how it tackled the problems emerged in ownership, assignment and license of copyright, the adequacy of these provisions in effectively  protecting  the rights of the  author & tries to balance the rights of the owner  of copyright vis-à-vis public interest. Also  the role of judiciary in effectively protecting their rights.

 Ownership of copyright

The  owner of the copyright means person who possess and enjoys the legal right.The definition given to the author in the context of copyright protection depends on the nature of the work  & s.2(d ) [3]defines ‘author’.The creator of the work can also be joint authors,but dilemma lies in determining the criteria for joint authorship, S. 2(z) of the Copyright Act defines work of joint authorship[4].Such an issue came before the court in Najma Heptulla v.Orient longman Ltd.[5]the question before the Court was whether a person who gives form to the narration will become the joint author of the book India Wins freedom’. Eventhough the  work was composed by the Kabir the material for the book was supplied by the Azad with a clear understanding that kabir will describe those thoughts & conversations and write the same in English language and Kabir’s function  was only to record Azad’s findings and not to let his views colour the narrative . The preface itself shows It is the Azad who decided as to which 30 pages of the book were not to be publish and which of his views should be contain in his book and read every word of manuscript and made alterations additions, omissions and correction.

But the finding of the Court was  Azad and Kabir are the joint authors of the work and Kabir was more than a mere scribe of thoughts of Azad. Since both of them actively and intellectually collaborated in the composition of literal work. However no specific criteria was laid down by the court to determine what amount to active and close intellectual collaboration to determine join authorship. It raises an interesting question whether a person who has not himself put pen to paper but someone else has done that effectively writing what the first person had created can become a joint author. Or mere recording a narration makes him a joint author.  However, after this case no such issue has came before the judiciary.

In U.S. the condition to satisfy joint authorship has to prove (a) in what part of expression of the work he significantly and substantially collaborated and that it originated from him. (b)contribution must be original expression to the work (c) contribution of the joint author to the work need not be equal but has to be substantial or significant  (d) what constitute significant and substantial contribution involves his contribution to original expression, qualitatively and quantitatively, either equally or significantly or substantially pursuant to a common goal.

In Hardly v. Kemp[6] in the context of pop group one member devised the song and the group as whole performed them held members of the group were not joint authors. Contributions need to be creation of musical work not to the performance or interpretation of them here, however significant and skillful their contribution to the performance of  musical work are not right kind of contribution to give them sharing copy rights. Also the contributing to authoring of the software was like a proof reader skill not authorship skill[7].

Another  kind of complexity lies when the work is a combination of different works eg cinematographic works, sound recordings etc & the lack of clarity in the definition of “producer” adds to it [8]Such a question came before the court in GeePee Films(p) ltd. Vs. Pratik Chowdhary,[9]  the question before the court was  by taking the financial responsibility of sound recording whether one will fall under the definition of ‘producer’. Even though the plaintiff paid all the expenses of recording  including hire charges of studio and remuneration of musicians   it will not amount to taking responsibility of such recording and thus cannot be held to be a producer, since the ‘responsibility’ appearing in sec 2(uu) does nor refer to financial responsibility but “consequential legal liability” for such recording.

Also to decide the ownership of copyright when the author does the work at the instance of  any person for valuable consideration, or in the case of the course of employment under contract of service [10]  faces some complexity and what amounts to contact of service also depends on facts of each case & judiciary has laid down different tests to determine it. An author may create a work independently, or he may create a work under a contract of service or contract for service

One of such instance that came before the court was in  V.T Thomas v. Malayala Manorama,[11]  where the question before the court was after termination of employment  of employee(Tom) from Manorama regarding the future work of Tom manorama  can claim authorship it was held that in the case of termination of the employment, the employee is entitled to the ownership of copyright in the works created subsequently and the former employer has no copyright over the subsequent work so created. . After his termination of employment from Manorama  Tom is the author of the work he is free to draw the cartoons and Manorama has no right to restrain him from drawing the cartoon.. Here the interesting question is that if the Manorama contented that they are the owner of the cartoons then  is it possible for them to restrain Tom to use such characters. If the cartoon is developed during the course of employment whether the author can use it after his termination from employment. It seems rather than giving clear reasoning to the legal questions arised the court allowed both parties to continue the publication of the cartoons. Concluding that cartoon characters were developed by the author in 1957 which entitle him to copyrights.

In determining whether  a person is engaged in a contract of service or contract for service fundamental test to be  applied is “whether a person who has engaged himself to perform these services is performing them as a person in business on his own account” If the answer is yes then it is contract for service or whether  the employee employed is part of business and his work is integral part of the business, or whether his work is not integrated into the business but is only accessory to it or the work done by him in business on his own account. In the former case it is a contract of service and in the latter a contract for service. [12]

A different  test was  considered  and laid down by the court in Zee Entertainment Enterprises Ltd v. Gajendra Singh and ors [13]Here the plaintiff  (Zee TV) alleged that the defendents (star TV) employee was  in contract of service with the plaintiff from 1992-1997 and created a concept note  of Anthakshari & during the course of his employment with the Plaintiff, Defendant No. 1 in consultation with other senior employees and the Plaintiff’s programming team originated the format of a television game show titled `Antakshari’ and reduced the same to writing in the form of a concept note,hence the employer is the owner of the copyright.The  question before the court was whether the defendant was in contract of service or contract for service. After  going through the the  employment agreement of 1994 find some clauses indicates contract of service and some clauses was in favour of contract for service .Taking in to consideration of  the facts that the signing of the voucher by the defendants on behalf of the the plaintiff to make payments, TDS certificate indicates  him as contractor, Regarding  letters send to defendants by the plaintiff appointing as a chairman ,seeking his career progress, Gross salary package revised, usually. the word salary never used etc held as   contract of service.

In University of London Press v. University Tutorial Press,[14] the examiner was free to prepare his questions at his convenience so long as they were ready by the appointment for the examinations, and it was left to his skill the syllabus, the book work, and the standard of knowledge to be expected at the matriculation examination, and in view of this aspect of matter, the examiner was not acting under the contract of service but contract for service.

Where a man employs another to do work for him under his control, so that he can direct the time when the work shall be done the means to be adopted to bring about the end, and the method in which the work shall be arrived on, then the contract is contract of service, copyright vest in the employer. If, on the other hand, a man employs another to do certain work but leaves it to that other to decide how that work shall be done. What step shall be taken to produce that desired effect, and then it is a contract for service. In such cases a copyright vests in him and not the employer. Control test is a useful way of determining whether a person is an employee where the parties are in master -servant relationship.[15] But it provides little help in relation to those professions where a person has considerable amount of freedom. In the circumstances the courts have stressed that the question of whether some one is an employee depends on whether the work they perform is an integral part of the business. In determining whether someone is an employee, court, looks at nature of relationship and what is that and what it is that a person does in day to day activities. Also factors like their responsibility provide their own equipment, hire their own helpers, take financial risk and have opportunity of profiting from the task they perform. Also financial arrangement between the parties etc.

The modern approach has been to abandon the search for a single test, and instead to take a multiple or ‘ pragmatic ‘ approach, weighing upon all the factors for and against a contract of employment and determining on which side the scales eventually settle. Factors which are usually of importance are as follows – the power to select and dismiss, the direct payment of some form of remuneration, deduction of PAYE and national insurance contributions, the organisation of the workplace, the supply of tools and materials (though there can still be a labour-only sub- contract) and the economic realities (in particular who bears the risk of loss and has the chance of profit and whether the employee could be said to be ‘in business on his own account’). A further development in the recent case-law (particularly concerning atypical employments) has been the idea of mutuality of obligations ‘ as a possible factor i.e. whether the course of dealings between the parties demonstrates sufficient such mutuality for there to be an overall employment relationship

In IPRS Vs. Eastern India Motion Pictures,[16]  The question before the court was whether the producer of a cinematography film can defeat the rights of composer of music or lyrist and the court held that u/s17(b) there is automatic transfer of all rights of the author.  Therefore, the producer is the owner of musical or sound recording the producer can defeat right of the composer of music or lyrist .But Sec 13(4) says that copy right in a cinematographic film or a sound recording shall not affect the separate copyright in any work in respect of it or a substantial part of which, the film, or, as the case may be, the sound recording is made, so by the combined reading of sec. 13(3) and (4) presupposes contractual relationship with these creators to safeguard the interest S.17 contemplates  contract of employment and in the case of 17(b) cinematography film can be made under contract for employment in such cases copyright of composers and lyrists still remains with them. It is the contractual obligation which binds the producers and composers and lyrists   , and 17(b) there is no automatic transfer of all rights of the author. In 17(b) there is no mention of the sound recording or literary or musical work only cinematographic film is mentioned.  Therefore, the producer is not the owner of musical or sound recording unless it complies with S.17(c) thus the producer cannot defeat right of the composer of music or lyrist. So it is clear that intention behind S.17(b) is to provide incentive to the author of  literary or musical or sound recording work otherwise the whole purpose of sec. 17 and 13(4) which safeguards the balance will be defeated. But here the court give different interpretation to 17(b) without considering S 13(4) and (5) and held that there is automatic transfer of all rights of authors u/s.17(b) .By this decision, it will be the producer who will be enjoying economic benefits from the work of composer or lyrist. The producer is getting the right to incorporate literary or musical work in the cinematographic film. So once the literary or musical work of the composer or lyrist is incorporated in cinematographic film i.e., right u/s. 14(a)(iv) is transferred to the producer but the other rights of author on musical and literal work still rest upon composer or lyrist.To an extent it was made clear by later  amendments in s. 2(g) &(uu)also s.14.

In the case of Govt. work Govt shall be the first owner of the copyright in the absence of agreement to the contrary,  In BM Piros Vs. State of Kerala[17] the Govt. (defendant) as part of information technology implementation in Govt. department a software development project was entrusted to CDIT they in turn entrusted the work to plaintiff. On completion of the work plaintiff filed a suit claiming to be owner of the program. So it was  held that work was a government work and hence defendants (State of Kerala) was the author of the work. U/s 17(d) which states that in the case of Govt. work Govt shall be the first owner of the copyright in the absence of agreement to the contrary, here there was no agreement to contrary.

Transfer of Copyright

One of the rights of the copyright owner is the right to transfer his rights u/s,14 of the copyright Act either wholly or partially by assignment or license, even exclusive license. In the case of tangible property by assignment of his property he loses his rights over it but in the case of IP even after its assignment the owner can still enjoy the property depending upon the right assigned. This major difference is due to the nature of intellectual property from other property. In the case of copyright the transfer of right depends upon diverse nature of IP.  Even though there is exclusiveness in the copyright but copyright owner cannot exclude independent creators of work.  It is only expression that is protected not the idea is based on its implication in public interest.

Assignment and License of copyright

Change of concept of indivisibility to licensing of copyright is due to changing technologies and tremendous advancement in the field of communication technology. One of the characteristics of the copyright is that it has the potential to be used by a range of different users at the same time.   For example, a sound recording can be played in numerous public places simultaneously. As works are increasingly exploited in this manner, the role of licensing in exploitation becomes ever more important. It enables copyright to be transferred to those who can exploit it most profitably. And the terms of the transfer agreement will determine how the profits are to be distributed. The Indian copyright recognizes two types of transfer of IP i.e., license and assignments, it always depends upon nature of property transferred. Depending upon the nature of monopoly created by IP and its implication on public interest has created problems in respect of licensing and assignment. The terms and conditions incorporated in the agreement determines whether the party intended is assignment or license ie from the intention of the parties[18]. The word “devolves upon” is a term similar to assignment[19]. But sometimes  the court finds it extremely difficult to distinguish the exclusive license and partial assignment, if the agreement contain express words or terms like the copyright vest on the owner or ,liability to revise the book vest on the owner or  not to edit similar kinds of work or  if the demand of the work has ceased the agreement was considered as terminated it is an assignment. Where the agreements contain no such terms ,but the consideration is the payment of royalties or a share of profits instead of downright payment then the copyright is not assigned it would be an exclusive license to sell. So if the payment is by way of royalty  or some other way then it is a license such interpretation is quite absurd[20]. If  there is a usual term of payment of certain percentage of royalty to the owner of the copyright or by a share in profits instead of a sum of money paid down, the inference is that copyright is not assigned, but sole and exclusive license is concerned upon the publisher [21]This kind of wrong interpretation assumed by the court in deciding the agreement is a license or assignment by taking in to account of the nature of consideration paid  is what later followed in  KPM Sundarams case.What the court has to look into is the real intention of the parties, if  the terms are expressed clearly then to follow plain interpretation. It was nature of the agreement which decides the nature of property transferred.

Difference Between  Assignment and License

Assignment of copy right and copyright license are two forms of contract involved in the exploitation of copyright work by a third party. Each has its own distinct characteristics. A license is an authorization of an act without which authorization would be an infringement. Licensing usually involves licensing of some of the rights and not the whole. Licenses can be exclusive or non exclusive.  An assignment involves the disposal of the copyright: the author (assigner) assigns the copyright to another person (assignee) or transfer of ownership of the copyright[22].In the case of license only specified interest in IP is transferred not the ownership is transferred to the licensee. A license normally does not confer any right to licensee against licensor or third party but exclusive licensee [23]has substantial rights against the licensor , even to sue the licensor. And by s.30 if the licensee in the case of future work dies before the work comes in to existence his legal representatives shall be entitled to such works, in the absence of any provision to the contrary.

Unless he joints the owner of copyrights as a party to the infringement action, he can not take an action for infringement against third party [24]but a purchaser in good faith and for value of the proprietors interest without notice of previous licensee is unaffected by it.[25] The licensee can however, sue the assignor for damages for breach of contract if the latter does not protect his interest. A licensee has a right to make alterations except in so far as his license expressly or impliedly restricts the right. A failure to pay royalties enables the licensor to revoke the license. But in the case of assignment it is not possible[26].. But if  there is any harsh terms which affect the author can lead to revocation if a complaint is made to the copyright Board. Where the assignee of a copyright becomes entitled to any right comprised in the copyright, the assignee as respects  to 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. The expression “assignee” as respects the assignment of the copyright in any future work includes the legal representatives of the assignee, if the assignee dies before the work comes into existence. The owner of the copyright has the power to assign his entire rights or assign only some of the rights. In case the rights are split up there is only partial assignment. Assignee will be the owner of the copyright as regard rights so assigned, the owner will be the owner of the copyright of remaining rights. The assignment could be for whole duration of the copyright or for a short duration.

Mode of assignment

No assignment of the copyright in any work shall be valid unless it is in writing signed by the assignor or by his duly authorized agent. It shall identify such work, specify the rights assigned, duration, territorial extent   of such assignment, amount of royalty payable to the author. If the period is not stated it shall be deemed to be five years  and territorial extend  shall be presumed to extend  within India. If the assignee does not exercise such rights within one year from the date of such assignment it shall be deemed to have lapsed unless otherwise specified in the assignment.[27] The assignor can file a complaint to the copyright board  if the assignee fails to make sufficient exercise  of the rights assigned, failure not attributable to the act or omission, then copyright. board after such enquiry  as it deem necessary may revoke the assignment, this provision may be used for u/s 31 as a ground for compulsory licensing. Also regarding any dispute to assignment it follows the same procedure   including an order for recovery  of any royalty payable. Provided that if the terms   of the assignment is harsh to the assignor(author) it shall revoke the assignment, but after five years  from the date of assignment. This proviso seems to be irrational, it may not help the author to revoke within five years which means he has to suffer.  s.19 & 19A are applicable in the of licensing too. . In the case of unpublished work the author must be a citizen of India or domiciled in India at the time of the creation of the work. Copyright in an architectural work will subsist only if the work is located in India irrespective of the nationality of the author.

Assignment of Future Rights

The owner of the copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copyright, either wholly or partially and either generally or subject to limitations and either for the whole term of the copyright or any part thereof. However, in the case of the assignment of copyright in any future work, the assignment shall take effect only when the work comes into existence.  when  new rights are granted  by the legislature on existing works due to the technological development, problem arises as to the ownership of the new rights,whether the assignor who assigned already all the existing rights on the work or the assignee is the owner of the future rights.

This question came before the court in Raj video vision v. K. Mohanakrishnan, [28]here the defendant (producer) assigned all negative rights to Azam and Co. and they transferred to defendant (D2) in 1961. But in 1988 D1 entered into agreement with plaintiff and assigned video right of film ‘Pasamalar’ and it exploitation, distribution and exhibition in India and Srilanka. In 1989 D2 restrained plaintiff claiming that they have entire copy right in film ‘Pasamalar’ and they have not assigned the video rights to anyone. So the plaintiff filed a suit to declare his rights as in agreements and restrained defendant from interfering with his video rights. After going through the agreement the court held that as per section 14(1)(ii) and Sec.2(d)(v)of copyright at the producer as the original owner had the said right on the date of assignment in favour of plaintiff and when the producers themselves were not aware of their future rights accrued due to scientific advancement, it cannot be said that they have already transferred the rights not in existence by way of assignment.  the D2 can not claim a right  which was not contemplated at the time of original assignment in the year 1961.But in Maganlal Savany Vs. Rupam Pictures [29]here the plaintiff was given wide rights of exploitation of the film’ Chupke Chupke’ by the producer  that is “the assignor here by agrees and undertake that the said picture shall not be exploited or distributed or exhibited commercially, non commercially or in any other manner what so ever in the contracted territory “ D1 (Producer) assigned satellite rights to the third party, which was not contemplated at the time of assignment to the plaintiff. The plaintiff wants to restraint the defendants by injunction. Here the court held that the term exploitation has to be given a wider meaning that is exploitation of a film takes in all the scientific and technological device that may be invented in future also and plaintiff could make use of those inventions.  Given such an interpretation of word exploitation satellite telecasting of the picture ‘Chupke Chupke’ will per se be violative of the provisions of the agreement  to the plaintiff.

Thus from the above two cases it could be seen that a very wide interpretation was given to the term exploitation in Maganlal’s case which is against the interpretations given in Raj video visions case. It seems that it is the nature of terms used in the agreements which made the judge to give such wide interpretation but the concern is that such interpretations will affect the rights of the producers who is the real owner of the works. In the event of new technological advancement new rights emerging from it which was not contemplated at the times of assignment, must vest upon the producer. Otherwise, it will be someone who will be enjoying the economic benefits emerging out of it. So the plight of the producer has to be considered by the judiciary while giving such interpretations.

Re-sale Share Right

The first owner of the copyright and his legal heirs are granted a right called resale share right in original copy. This right is exercisable even after the assignment of the work. This right is confined to certain works only i.e., original copy of painting, sculpture, or drawing or original manuscript of a literary or dramatic or musical work and is available only to the first owner of right or his legal heirs.[30] This right is conferred by S.53A the share shall be fixed by copyright Board. Different shares for different classes of work, share shall not exceed 10% of re sale price. The decision of the copyright Board shall be final if any dispute arises.

Right of author to relinquish copyright

The author of a work may relinquish all or any of the rights comprised in the copyright in the work by giving notice in the prescribed from to the Registrar of Copyrights and thereupon such rights shall, subject to the following conditions, cease to exist from the date of the notice. On receipt of a notice, the Registrar of Copyrights shall cause it to be published in the Official Gazette and in such other manner as he may deem fit.[31] The relinquishment of all or any of the rights comprised in the copyright in a work shall not affect any rights subsisting in favour of any person on the date of the notice.

Conclusion-

As the Indian copyright law tries to accommodate new changes ie challenges set by electronic information network and to be in tune with the international agreements ie controls to assure equitable or proportional remuneration to authors. ,it is ultimately  in the hands of the judiciary how effectively it protects the rights of the  authors especially in the case of cinematographic works & tries to balance the rights of the owner  of copyright vis-à-vis public interest, also in   interpreting the provisions of ownership, assignment and license of copyright   and in laying down the criteria for effectively protecting the author’s   rights in the course of employment. When new technologies emerge, different mode of communication simultaneously arise and the exploitation of the copyright  by way of licensing will add economic benefits to the copyright owner and the judiciary must be cautious while making interpretion,since it may have drastic economic impact on the actual owner of the work. If the law increases the range of individuals who can claim copyright and the territories in which they can claim, the task of securing all the necessary licenses become intolerably burdensome,eg  satellite broad cast licenses.  Such context gains importance of copyright law to set minimum standards  to protect individual creators  against the superior bargaining knowledge, skill and sheer powers of entrepreneurs.