Assignment, licences and compulsory licensing

1. Assignment and licence distinguished

The label the parties use does not decide the question. Courts look at the substance: whether the owner kept any interest in the right granted.

2. Assignment (section 18)

• The owner of an existing work, or the prospective owner of a future work, may assign the copyright wholly or partially, generally or subject to limitations, for the whole term or part of it. A future assignment takes effect only when the work comes into existence.
• The assignee becomes owner of the rights assigned, and the assignor remains owner of the rest.
• Unknown media. A proviso added in 2012 says that no assignment applies to a medium or mode of exploitation not in existence or in commercial use at the date of assignment, unless the assignment specifically refers to it. Before 2012, the Bombay High Court in Video Master v. Nishi Productions (1998) had already treated satellite broadcasting as a distinct right not carried by an earlier grant of video rights.
• Royalty provisos (2012): authors of literary and musical works included in films or sound recordings cannot assign or waive the right to an equal share of royalties for uses other than exhibition in a cinema hall, except to legal heirs or a copyright society.

3. Mode of assignment (section 19) and the default rules

The assignment must be in writing signed by the assignor or his authorised agent. It must identify the work, the rights assigned, the duration and territorial extent, and the amount of royalty or other consideration payable. Then the Act fills gaps in the author’s favour:

1. If the assignee does not exercise the rights within one year, the assignment is deemed to lapse, unless the deed says otherwise (section 19(4)).
2. If the period is not stated, it is deemed to be five years (section 19(5)).
3. If the territory is not stated, it is presumed to be India (section 19(6)).
4. An assignment contrary to the terms of a copyright society to which the author belongs is void (section 19(8)), and authors of works in films and sound recordings keep their equal share of royalties (section 19(9), (10)).

Disputes (section 19A). If the assignee fails to exercise the rights sufficiently, or the consideration is not paid, the Commercial Court (formerly the Copyright Board, then the IPAB) may on complaint revoke the assignment or order payment.

4. Transmission and relinquishment (sections 20 and 21)

Transmission

Assignment is a transfer by act of the parties. Transmission is a transfer by operation of law or on death: copyright is movable property and passes under a will, on intestacy, on insolvency, and on amalgamation of companies under a scheme sanctioned by the tribunal. A will is not an assignment under section 18, so the writing and signature rules in section 19 do not govern it; the will is the instrument of title.

Section 20 deals with one common problem: the author leaves the manuscript to one person and says nothing about the copyright. Where a person is entitled under a bequest to the manuscript of a literary, dramatic or musical work, or to an artistic work, and the work was not published before the testator’s death, the bequest is construed as including the copyright, so far as the testator owned it, unless the will or a codicil shows a contrary intention. “Manuscript” means the original document embodying the work, whether handwritten or not. The rule keeps the physical work and the right to publish it in the same hands. Disputes over an author’s legacy, such as the Yakshagana works of Dr. Shivarama Karanth in Academy of General Education v. B. Malini Mallya, 2009 INSC 56, show why the question of who inherits the copyright matters.

Relinquishment

• Who and how (section 21(1)): the author may relinquish all or any of the rights comprised in the copyright by notice in the prescribed form to the Registrar of Copyrights or, since 2012, by public notice. The rights cease to exist from the date of the notice.
• Publicity (section 21(2) and (2A)): the Registrar publishes the notice in the Official Gazette and, within fourteen days, posts it on the Copyright Office website for at least three years.
• Existing rights saved (section 21(3)): relinquishment does not affect rights subsisting in favour of any person on the date of the notice, so an existing licensee or assignee is protected.
• Moral rights. Section 21 speaks of rights “comprised in the copyright”, that is, the economic rights in section 14. The author’s special rights under section 57 exist independently of the copyright and are not given up by a section 21 notice.

Relinquishment is a dedication to the public domain, and cannot be undone. A Creative Commons or open-source licence is different: the author keeps the copyright and grants permission on conditions, which can be enforced. The US has no statutory equivalent, and courts there ask whether the owner abandoned the right by an overt act; UK law has no relinquishment procedure. India’s section 21 is unusual in providing one.

5. Licences (sections 30 and 30A)

The owner, or prospective owner of a future work, may grant any interest in the right by licence in writing signed by him or his agent. Section 30A applies the assignment rules in section 19 to licences, so the same presumptions about period, territory and non-use apply. An oral or implied licence may still be relied on as a defence by a user, but not to create an exclusive licence.

The difference between selling a copy and licensing copyright was explained in Engineering Analysis Centre of Excellence v. CIT, 2021 INSC 137: an end-user licence for software transfers no interest in copyright, only a right to use a copy.

6. Compulsory and statutory licences

Here the State overrides the owner’s refusal to deal. The utilitarian theory supports these provisions: exclusive rights exist to encourage dissemination, not to suppress it.

Entertainment Network (India) v. Super Cassette Industries (2008)

In Entertainment Network (India) Ltd. v. Super Cassette Industries Ltd., 2008 INSC 708, (2008) 13 SCC 30, a private FM radio company sought a compulsory licence under section 31 to broadcast the respondent’s sound recordings, which it had refused to license on terms acceptable to the broadcaster. The Supreme Court held that section 31 applies to broadcasters; that a refusal to license on terms the Board finds unreasonable can amount to withholding the work from the public; and that the Board may grant compulsory licences to more than one applicant. At the same time the Court said the owner retains a right to decide terms, and the Board must balance the owner’s interest in exploitation against the public interest in access. Parliament later added section 31D.

Section 31D was the subject of Tips Industries v. Wynk Music (Bombay High Court, 2019), which held that internet streaming services cannot use the broadcasting statutory licence. A 2016 office memorandum of the Government that suggested otherwise was held not to bind the court.

7. Practical drafting points

• State each right assigned with reference to section 14, the media, the territory and the term.
• Address existing and future media specifically, to meet the 2012 proviso.
• Provide for royalty accounting, audit and reversion on non-exploitation.
• For films, deal separately with the underlying works, the performers’ consent under section 38A, and the royalty rights that cannot be assigned.

How this is examined

An essay on assignment and licences should cover sections 18, 19, 19A, 30 and 30A, then the compulsory and statutory licences with Entertainment Network, and end with a critical paragraph drawing on the EU and US comparison. A short note on compulsory licensing uses section 6 alone. The syllabus pairs assignment with “transmission” and “relinquishment”: a short note on either uses section 4.