A

PROJECT ON

Ownership and Assignment of Copyright

SUBMITTED TO:

VISHAL TIWARI SIR

(ASSISTANT PROFESSOR)

SUMBITTED BY:

BHAGYAWATI NAYAK

B.A. LLB -IX SEMESTER

ROLL NO :- 17001246

DATE OF SUBMITTION :- 25/11/2021

SCHOOL OF LAW

GURUGHASIDAS CENTRAL UNIVERSITY, BILASPUR

 DECLARATION

I BHAGYAWATI NAYAK , Roll no.:- 17001246 , B.A.LLB semester-9 TH of Guru Ghasidas University to
hereby declare that, this project is my original work and I have not copied this project or any part
thereof from any source without due acknowledgement. I am highly indebted to the authors of
that I have referred in my project as well as all the writer of the book the owner of information
taken from website for it. It is only because of their contribution and proper guidance of my faculty
advisor VISHAL TIWARI SIR that I was able to gather light on the subject.

BHAGYAWATI NAYAK

ROLL NO. :- 17001246

B.A.LLB. :- SEMSTER IX
 CERTIFICATE

I am glad to submit this project report on “Ownership and Assignment of Copyright” as a part of
my academic Assignment. The project is based on research methodology. It further studies
meaning, source an Methods of research methodology and further discuss the interview method. I
hope this would be significant for academic purposes as well as prove informative to all readers.

Here through I declare that this is an original piece of research and all the borrowed texts
and ideas have been duly acknowledged.

BHAGYAWATI NAYAK Faculty Signature:

Roll No. 17001246

B.A.LLB. SEMESTER IX
 ACKNOWLEDGEMENT

I would like to express my special thanks of gratitude and deep regards to my teacher MR. VISHAL
TIWARI SIR for his exemplary guidance, monitoring and constant encouragement, who gave me the
golden opportunity to do this wonderful project on the topic “Ownership and Assignment of
Copyright ” which also helped me in doing a lot of research, the blessing, help and guidance given
by his time to time shall carry me a long way in the journey of life on which I am about to embark
and I came to know about so many new things. I am really thankful to them.

Secondly I would also like to thank my parents and friends who helped me a lot in finishing this
project within the limited time. I am making this project not only for marks but to also increase my
knowledge.

THANKS AGAIN TO ALL WHO HELPED ME.

BHAGYAWATI NAYAK

Roll No.:- 17001246

B.A.LLB :- IX semester
 R E S E A R C H M E T H O D O L O G Y

This project is based upon doctrinal method of research. This project has been done after a thorough
research based upon intrinsic and extrinsic aspects of the project.

Sources of Data:

The following secondary sources of data have been used in the project-

1. Articles.
2. Books
3. Journals
4. Websites
Method of Writing:

The method of writing followed in the course of this research project is primarily analytical.

Mode of Citation:

The researchers have followed the Blue Book mode of citation throughout the course of this
project.
 T A B L E O F C O N T E N T

 Introduction
 Ownership of copyright
 Assignment of Copyright
 Transfer of copyright
 License
 Compulsory Licence
 Termination of Licence
 Assignment and Licence of Copyright
 Difference Between Assignment and Licence
 Mode of Assignment
 Assignment of Future Rights
 Re-sale Share Right
 Revocation of Assignment
 Rights of author to relinquish copyright
 Conclusion
 Bibliography
INTRODUCTION
Copyright protection is given for a work having originality, i.e. 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
copyright1. .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, i.e. 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 &
1
Section 17 statutorily recognizes the author of the work to be the first owner of the copyright. The author is defined
under the Act for various works, which comes u/s2(d) of the copyright Act
2
Art 1 &15(1) of Bern convention
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 Heptullav.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’. Even though 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 come before the judiciary.

3
Section s defines author, it says “Author” means, -

(1)   In relation to a literary or dramatic work, the author of the work;

(2)   In relation to a music work, the composer;

(3)   In relation to artistic work other than a photograph, the artist;

(4)   In relation to photograph, the person taking the photograph, the artist;

(5)   In relation to a cinematograph film or sound recording, the producer; and 

(6)   In relation to any literary, dramatic, musical or artistic work which is computer- generated, the person who causes
the work to be created. 

4
S. 2(z) of the Copyright Act defines work of joint authorship which means a work produced by the collaboration of two
or more authors in which the contribution of one author is not distinct from the contribution of other author or authors
5
AIR 1989 Del 63
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. Kempin6 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 GeePeeFilms(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
service10 faces some complexity and what amounts to contact of service also depends on facts of
6
(1999) E.M.L.R589
7
Fyled Microsystem v. Key Radio (1998) FSR 449
8
Section 2(uu) defines the producer, in relation to cinematographic film or sound recording, means a person who takes
the initiative and responsibility for making the work.
9
(2002 )( 24) PTC 392
10
Section17 (a) provides that where a work is made by the author in the course of his employment by the proprietor of a
newspaper, magazine or a periodical under a contract of service or apprenticeship for the purpose of publication in a
newspaper, magazine or periodical, the said proprietor, in the absence of any agreement to the contrary will be the first
owner of the copyright in the work in so far as it relates to the publication of the work in any newspaper, magazine or
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. MalayalaManorama,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

similar periodical or to the publication of the work for the purpose of being so published. Except in such cases, the
author will be the first owner of the copyright in the work.

Section 17(b) provides that where a photograph is taken or a painting or a portrait drawn, or an engraving or a
cinematograph film made, for valuable consideration at the instance of any person, such person, in the absence of any
agreement to the contrary, shall, be the first owner of the copyright therein.

Section 17 (c) provides that in the case of work made in course of the author’s employment under a contract of service
or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to
the contrary, be the first owner of the copyright therein

11
AIR 1989 Ker 49
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 ors13Here 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 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

12
(1973)RPC 765
13
2008,53 PTC(36)(Bom)
14
(1916) 2 ch 601.
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/s 17(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)
15
N.S Gopalakrishnan& T.G Agitha,Principles of Intellectual Property Law ,EBC puhlishers,first edition,2009
16
(1977) 2 SCC 820
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 17the 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

17
2004 IPLR 26 Section 17(cc) provides that in case of any address or speech delivered in public, the person who has
delivered such address or speech such address or if such person delivered such address or speech on behalf of any other
person, such other person shall be the first owner of the copyright therein notwithstanding that the person who delivers
such address or speech, or, as the case may be, the person on whose behalf such address or speech is delivered, is
employed by any other person who arranges such address or speech or on whose behalf or premises such address or
speech is delivered; 

Section 17(d) provides that in the case of a government work, the government shall, in the absence of any agreement to
the contrary, be the first owner of the copyright therein; 

Section 17(dd) states that in the case of a work made or first published by or under the direction or control of any public
undertaking, such public undertaking shall, in the absence of agreement to the contrary, be the first owner of the
copyright therein; 
claiming to be owner of the program. So it was held that work was a government work and hence
defendants (State of Kerala) were 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.

ASSIGNMENT OF COPYRIGHT

The owner of copyright in a work may assign copyright either wholly or partially for the whole or
any part of such copyright to any person. Copyright may also be assigned generally or subject to
some limitation.18

In Raj video vision vs K Mohan Krishna 19, court said that where the assignee of copyright becomes
entitled to any rights comprised in the copyright, he shall be treated as the owner of copyright in
respect of those rights. The legal representative of the assignee shall be entitled to the benefits of
assignment, if the assignee dies before the work comes into existence.

In Video master v Nishi productions20, the Bombay high court considered the issue whether
assignment of video right would include the right of satellite broadcast as well. The court agreed
with the consideration that there were different modes of communication to the public, such as,
theatrical, terrestrial television broadcasting, satellite broadcasting and video TV. The owner of the
film had separate copyright in all those modes and he could assign it to different persons. Thus, the
satellite broadcast copyright film was a separate right of the owner of the film and video copyright
assigned to plaintiff would not include this.

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

18
Copyright act 1957, S 18
19
AIR 1998 Mad 294
20
(1998)23 IPLR 388
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.

LICENSE

The owner of copyright in a work may grant any interest in his copyright to any person by license in
writing, which is to be signed by him or by his duly authorized agent. a license may also be granted
by a prospective owner of the copyright in any future work, subject however to the condition that the
license shall come into effect only when such future work comes into existence. where a license of
the copyright in a future work dies before such work comes into existence, his legal representative
shall, in the absence of any provisions to the contrary in the license be entitled to the benefit of the
license.21

The provisions relating to mode of assignment, revocation of assignment and disputes with respect
to assignment of copyright shall, mutatis mutandis be applicable in respect of license of copyright in
a work.22

Compulsory Licences

India, being a developing country and party to the Berne Convention has incorporated provisions in the
Copyright Act 1957 for the grant of compulsory licences pursuant to the special provisions laid down in
Berne Convention for the developing countries. The Act provides for the grant of compulsory licences in
Indian work in the public interest in some limited circumstances.

i. Works withheld from public

The Copyright Act 1957 provides for the grant of compulsory licences in Indian work’s which has
been published or performed in public. It empowers the Copyright Board to direct the Registrar to
grant licence if a complaint is made to it in writing under the Act, during the term of copyright
stating the necessary facts which are conditions precedent to the exercise of its power, provided that
the owner has been approached in the first instance for the grant of a licence, and it is only if he has
21
SECTION 30 OF COPYRIGHT ACT
22
Ibid, SECTION 30A
refused to republish or allow the republication of the work, and by reason of such refusal the work is
withheld from the public; or if he has refused to allow communication to the public by broadcast of
such work or in the case of a sound recording the work recorded in such sound recording, on terms
which the complainant considers reasonable, that the compliant could be made.23 The Copyright
Board, after giving to the owner of the copyright a reasonable opportunity of being heard and after
holding such inquiry as it may deem necessary, may, if it is satisfied that the ground for such refusal
arc not reasonable, direct the Registrar of Copyright to grant to the complainant a licence to
republish the work subject to payment to the owner of the copyright of such compensation, and
subject to such other terms and conditions as the Copyright Board may determine.

In case where two or more persons have made a complaint, the licence shall be granted to the
complainant who in the opinion of the Copyright Board would best serve the interests of the general
public.

In Super Cassette Industries Ltd v Entertainment Network (India) Limited,Mumbai, 24 the

respondents who was running a Radio FM channel under the brand name ‘Radio Mirchi’ made
several attempts to obtain a licence from Super Cassette Industries Ltd (SCIL) to play its sound
recordings, but failed to get it. The Copyright Board ultimately issued them a compulsory licence,
against which an appeal has been filed in the Delhi High Court. After examining s 31, the court
observed:

when the licence have already been granted to other broadcaster, who have substantial presence, then
perhaps the application for grant of compulsory licence will be treated differently, than in a situation
where the artistic work has been totally withheld from the public. The legislature in its wisdom has
used the expression ‘may in section 31(1). According to section 31, it is not imperative for the Board
to grant licence to each and every complainant. In our opinion licence can be granted or denied on
valid ground.

The court further observed that in case compulsory licence had to be granted to all, then there was no
need of any enquiry as envisaged by s 31. The court was also of the opinion that once the copyright
was in public, refusal had to be made on reasonable and valid ground. While making an order under
s 31(1), the Board had to maintain a delicate balance between private rights and the copyright vis a
vis public interest. The case was sent back to the Copyright Board for fresh consideration.
23
Sec 31(1) b
24
(2004) 29 PTC 8 (DEL)
ii) Compulsory license in unpublished Indian works

Section 31A of the Copyright Act 1957 provides that in case of an unpublished work, the author
of which at the time of making the work was a citizen of India, where the author is dead, unknown
or can not be traced, or the owner of the copyright cannot be found, any person may apply to the
Copyright Board for a licence to publish such work or a translation thereof in any language. Before
making an application the applicant should publish his proposal in one issue of a daily newspaper in
English having circulation in the major part of India, and where the application is for the publication
of a translation in any language, also in one issue of any daily newspaper in that language. Where an
application is made to the Copyright Board, it may, after holding inquiries, direct the Registrar of
Copyright to grant to the applicant 2 licence to publish the work or a translation thereof, subject to the
payment of such royalty and subject to such other terms and conditions as the Copyright Board may
determine. The amount of royalty may be deposited in the public account of India or in any other
account specified by the Copyright Board in order to enable the owner of the copyright or, as the
case may be, his heirs, executors or the legal representatives to claim such royalty at any time. In
case of a work referred above, if the original author is dead, the Central Government may require
the heirs, executors or legal representatives of the author to publish such work within such period as
may be specified, if it considers that the publication of the work is desirable in the national interest.

iii) License to produce & publish translations

Section 32 of the Copyright Act 1957 provides that after expiry of a period of seven years from the
first publication of a literary or dramatic work, any person may apply to the Copyright Board for a
licence to produce and publish a translation of such work. Where the work is not an Indian work, any
person may apply to the Board for a licence to produce and publish a translation, in printed or
analogous form of reproduction, of a literary or dramatic work, in any language in general use in
India after a period of three years from the first publication of such work, if such translation is
required for the purposes of teaching, scholarship or research. But where such translation is in a
language not in general use in any developed country, such application may be made after a period
of one year from such publication. ‘Purposes of research’ does not include purposes of industrial
research, or purposes of research by bodies corporate (not being bodies corporate owned or
controlled by Government) or other associations or body of persons for commercial purposes.
‘Purposes of teaching, research or scholarship’ includes (i) purposes of instructional activity at all
levels in educational institutions, including schools, colleges, universities and tutorial institutions;
and (ii) purposes of all other types of organised educational activity.

iv) Reproduction and publication of works for certain purpose

s 32A of the Copyright Act 1957 provides that where, after the expiration of the ‘relevant period
from the date of the first publication of an edition of a literary, scientific or artistic work- (a) the
copies of such edition are not made available in India; or (b) such copies have not been put on sale in
India for a period of six months, to the general public, or in connection with systematic instructional
activities at a reasonable price by the owner of the right of reproduction or by any person authorised
by him in this behalf, then any person may apply to the Copyright Board for a licence to reproduce
and publish such work in printed or analogous forms of reproduction at the price at which such
edition is sold or at a lower price for the ourooses of systematic instructional activities. of
reproduction at the price at which such edition is sold or at a lower price for the purposes of
systematic instructional activities.

The Copyright Board, after holding prescribed inquiry and after giving the owner of copyright an
opportunity of being heard wherever practicable, may grant to the applicant a licence, not being an
exclusive licence, to produce and publish a reproduction of the work subject to the payment of
royalties of such amount as it may determine in the prescribed manner. The licence granted shall not
extend to the export of copies.

Further, conditions similar to those applicable for the grant of licence to produce and publish
translations under s 32 are applicable here with some changes. In addition, some conditions which
are required to be fulfilled are

(i) that the applicant undertakes to reproduce and publish the work at such price as may be
fixed by the Copyright Board, being a price reasonably related to the price normally
charged in India for works of the same standard on the similar subjects.
(ii) That a reproduction of the work has not been published by the owner of copyright within
6 months
 A licence to reproduce and publish the translation of a work under I s 32A shall not be granted
unless such translation has been published by I the owner of the right of translation or a person
authorised by him, and I the translation is not in a language in general use in India. However, a
licence may be granted for the reproduction and publication, or translation into a language in
general use in India, of any text incorporated in audio-visual fixations prepared and published
solely for the purpose of systematic instructional activities.

TERMINATION OF LICENSES

Section 32B of the Copyright Act 1957 provides for the termination of licences issued under ss 32
and 32A. It is provided that where the Copyright Board has granted a licence to any person to
produce and publish a translation of a non-Indian work in any language under s 32(1 A), if at any
time after granting the licence the owner of the work or a person authorised by him has published a
translation of the work in the same language which is substantially the same in content at a price
reasonably related to the price charged in India for the translation of works of the same standard on
the same or similar subject the licence granted will be terminated. The termination will not take
effect until after the expiry of three months from the date of service of a notice in the prescribed
manner on the person holding the licence by the owner of the right of translation intimating the
publication. The licence holder will be permitted to sell or distribute copies of the translation
produced before the termination of the licence takes effect until they are exhausted. A licence
granted under s 32A shall be terminated in the similar way with some necessary changes.

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 i.e. from the intention of the parties. 25 The word “devolves upon” is a term
similar to assignment.26 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.27 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.28 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

25
Jaypee Bros Medical Publishers (p) Ltd V. RamyaReghu&ors 2008 (38 ) PTC 212 ( Del )
26
BharatiDutta v. Dr.Saradindu 2008 (37) PTC 178 (CB) Cal
27
K.P.M Sundaran v Rattan PrakasamMandir AIR 1983 Del 461
28
MisraBandhuKaryalaya v. ShivratanlalKoshal[21] AIR 1970 MP 261
copyright to another person (assignee) or transfer of ownership of the copyright. 29 In the case of
license only specified interest in IP is transferred not the ownership is transferred to the licensee. 30 A
license normally does not confer any right to licensee against licensor or third party but exclusive
licensee 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 cannot take an
action for infringement against third party 31 but a purchaser in good faith and for value of the
proprietors interest without notice of previous licensee is unaffected by it. 32 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 33. 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.

29
Brad Sherman and Lionel Bently,Intellectual Property Laws, oxford university press,Ist edition.
30
section 2(J) which reads as “ exclusive license” means a ‘license which confers on the licensee or on the licensee and
the persons authorized by him to the exclusion of all others including the owner of the copyright any right comprised in
the copyright in a work and exclusive license shall be construed accordingly’
31
Bharat Law House Vs. Wadhwa AIR 1988,Del 68
32
Coopinger.Intellectual property laws
33
Gramophone Co of India Ltd v. Shanti Films Corpn AIR 1997 Cal 63, Reotisaronsharma v. Numero Uno Internation,
[26] ( 1996 ) 16 PTC
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.34

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.

34
S.19A
This question came before the court in Raj video vision v. K. Mohanakrishnan,35 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
cannot claim a right which was not contemplated at the time of original assignment in the year
1961.But in MaganlalSavany Vs. Rupam Pictures36here the plaintiff was given wide rights of
exploitation of the film’ ChupkeChupke’ 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 ‘ChupkeChupke’ 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.
35
AIR 1998 Mad 294
36
2000 PTC 556 (Bom )
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.37

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.

REVOCATION OF ASSIGNMENT

Section 19 A of the copyright act 1957 provides for the revocation of assignment of copyright. 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, if the 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.

In case of a dispute with respect to the assignment of copyright, the copyright board may pass a
suitable order on receiving a complaint from the aggrieved party and after holding such inquiry as it
considers necessary. The copyright board shall not pass any order 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.

It is further provided under act that no order of revocation of assignment is to be made within a
period of 5 years from the date of such assignment. Thus this provision safeguard the interest of the
assignor where he is the author of the work and also the assignee.

37
S.53A
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.38

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 i.e. challenges set by electronic
information network and to be in tune with the international agreements i.e. 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 interpretation, 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

38
S.21
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.

BIBLIOGRAPHY
Books:

1. Law relating to intellectual property rights, Lexis NexisButterworthsWadhwa Nagpur by Dr.

V K Ahuja
2. Law relating to intellectual property rights by Dr. M K Bhandari, central law publications

Bare act:

 Universal’s intellectual property laws, universal law publishing house co.

Articles:

 Ownership & assignment of copyright by Rujitha T.R.Published on 22 March 2010

 Assignment of copyright: outsourcing transactions in India by: shakeelkudrolli, majmudar&
co., international lawyers, Bombay, India
Websites

 www.amarjitassociates.com/.../trademarks-deceptive-similarity.htm
 www.mondaq.com/.../Trademark/
 www.legalserviceindia.com/.../l226-Trademark-Infringement
 www.indiaitlaw.com/trademark.htm
 www.ipfrontline.com/depts/article.asp?id=12002&deptid=6
 www.tms.org/pubs/journals/jom/matters/matters-9610.html
 www.quizlaw.com/trademarks/what_are_the_remedies_for_trad.php
 www.iprconsindia.com/trademark.../trademark-infringement-in-india..
 www.meti.go.jp/policy/ipr/eng/infringe/remedy/remedy03-2.html