OWNERSHIP AND ASSIGNMENT OF

COPYRIGHTS
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 copyright .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 that the person under
whose name the work is disclosed, which implies that it is not necessary that always the
author should be the owner. 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--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 ) 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.Such an issue came before the court
in Najma Heptulla v.Orient longman Ltd. 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 Kabirs
function was only to record Azads 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 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.
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 Such a question came before the court in GeePee Films(p) ltd. Vs.
Pratik Chowdhary, 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 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, 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. A different test was considered and laid down by the court in Zee Entertainment
Enterprises Ltd v. Gajendra Singh and ors Here the plaintiff (Zee TV) alleged that the
defendents (star TV) employee was in contract of service with the plaintiff from 19921997 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, 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. 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, 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 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. The word devolves upon is a term similar to assignment. 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. 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 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.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 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 but a purchaser in good faith and for
value of the proprietors interest without notice of previous licensee is unaffected by it. 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. 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. 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, 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 inMaganlal 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 Maganlals 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. 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. 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.
ConclusionAs 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-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
authors 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.