This article is written by Bushra Asif, pursuing a Diploma in Advanced Contract Drafting, Negotiation and Dispute Resolution from Lawsikho.com.
According to World Intellectual Property Organisation (WIPO), Intellectual property is a global overall term defining creations of the mind – in other words, ‘things’ that people create from their personal imagination: a story, a wood carving, a song, a dance routine, or an invention. The collection of intellectual property laws, i.e. patent, trademark, and copyright law, are the commercial and legal frameworks that have been built around these creations.
In this article I will try and make it easy to understand what are Copyrights? What all rights are with the author of a book? What rights can be transferred to the publisher? And, lastly how to best draft a Copyright Assignment clause?
“Just write every day of your life. Read intensely. Then see what happens. Most of my friends who are put on that diet have very pleasant careers.” ~ Ray Bradbury
It is true that there are many writers now than ever before – maybe due to a plethora of resources present to take inspiration from, to enhance their specific career, for financial gains, to share a story, to influence the world or just to remain sane and release stress.
However, WRITERS BEWARE!!!
There are a host of novice writers who are duped into giving up more of their rights than required. Once the Agreement gets signed there is little they can do about it.
I was working in a Law Firm and I remember a distressed publisher had approached us, his complaint was that he had paid a writer to create some work for him. There was a trail of emails that could be traced in which it could be seen that the publisher had paid a reasonable sum to the writer for his writings which the publisher was then entitled to sell. Sometime after the creation of works when the publisher started selling them, the writer contacted the publisher that he was not happy for him selling his work and wanted to reclaim the rights to the written works thus prohibiting the publisher to sell works thereafter. Although the publisher had paid the fee for the written works the writer was well within their rights to claim copyright for the works. If a proper copyright assignment agreement had been in place this writer would not have been able to claim back his rights. A proper assignment Agreement signed can eliminate such conflicting scenarios.
Table of Contents
What are Copyrights?
Copyright is a type of intellectual property – res incorporalis – which means it has no tangible existence but carries a proprietary right for its creator. The creative work may be in a literary, artistic, educational, or musical form. For example, a novel, a photograph, a movie, lyrics to a song, a painting etc. Authors do not have to file for copyrights, they get it as soon as they put pen to paper. However, getting it registered gives an extra protection to the author as the author is thereby promulgating his/her ownership.
It is governed by Copyright Law (every country has their own IP Law) which gives the author or creator of a work a diverse bundle of exclusive rights over his/her work for a limited but lengthy period of time. By virtue of these rights the author controls how they may be used and what financial benefit he/she may garner from it, i.e. royalties. The purpose of creating Copyright was to protect the rights of the creators to prevent their work from reproduction, dissemination, display, misuse and generating profit from their work. Infringement of these rights for profit is a legal offense.
What rights does the author of the book have?
- To translate, adapt or reproduce the work created
E.g., make physical or digital copies of the work, convert it into a movie or get it translated in another language.
- To prepare derivative works from it
E.g., prepare a subsequent article, chapter, or sequel that builds upon their original work.
- To distribute copies of the work
E.g., distribute physical or digital copies of the work created.
- To perform the work publicly
E.g., publicize the work or show/make videos of it
- To publicly display the work
E.g., show photos, exhibits, excerpts from the work in public/ for public
- To broadcast work
E.g., for those working with sound recordings, to digitally transmit your work (broadcast online, etc.)
When a copyright owner contracts with another party to permit use of their rights, the owner can give away one, some, none, or all of their rights. He or she can transfer or license the rights. He or she can enter into an exclusive or non-exclusive, irrevocable or revocable license. Or, he can give up all his rights over it by assigning his rights to the assignee.
What rights can be transferred to the publisher?
Most authors of literary works are required to sign an agreement with their publisher as a condition before publication. It is always prudent to go through these agreements carefully as they will be legally binding and dictate what you can and cannot do with your literature. The author should be able to negotiate with the publisher if he wants to retain some or all of the copyrights associated with the work.
The “bundle of rights” as stated above give copyright owners control over each of the rights either individually or as a group. If the authors are aware of their rights they will be in a better negotiating position with a publisher and will be able to protect their rights.
There are two ways an author can transfer rights to the publisher, either wholly without retaining anything generally known as “assignment”, or partially known as “licensing”.
A befitting analogy for licensing or assigning was given by Intellectual Property Office UK – “Just as with real property, you could choose to let your house to a lodger or tenant whilst retaining the freehold, or you could choose to sell your house outright and assign your proprietary rights to the purchaser – so too with copyright.”
How to best draft a Copyright Assignment – from the writer to the publisher?
Of course, when an Author writes a book or any literary work it is usually meant to be shared with the world not so that it may sit on a shelf forever. For this the author will require to engage a publisher to publish his/her manuscript. Authors and publishers will generally have a publishing agreement.
Publishers will have different types of agreements depending upon the kind of work that is going to be published, e.g – it could be a book, chapter, journal article or conference paper. Some publishers might not use publishing agreements, usually in case when they only have the right to print and publish the work for the purpose it was submitted.
License v. Transfer (or Assignment) of copyrights
An excerpt from a publisher’s agreement assignment clause reads,
“Author hereby grants and assigns to XYZ Publisher the exclusive, sole, permanent, world-wide, transferable, sub-licensable and unlimited right to reproduce, publish, distribute, transmit, make available or otherwise communicate to the public, translate, publicly perform, archive, store, lease or lend and sell the Work or parts thereof individually or togtheer with other works in any language, in all revisions and versions (including soft cover, book club and collected editions, anthologies, advance printing, reprints or print to order, microfilm editions, audiograms and videograms), in all forms and media of expression including in electronic form (including offline and online use, push or pull technologies, use in databases and data networks(e.g. the Internet) for display, print and storing on any and all stationary or portable end-user devices, e.g. text readers, audio, video or interactive devices, and for use in multimedia or interactive versions as well as for the display or transmission of the works or parts thereof in data networks or search engines, and posting the Work on social media accounts closely related to the Work), in whole, in part or in abridged form, in each case as now known or developed in the future, including the right to grant further time-limited or permanent rights.”
If you managed to read through the above tedious sentence, you will realise that an author after signing this, as present in a publisher’s agreement, would have actually transferred all of his/her copyrights FOREVER (life of author plus 70 years) to the publisher.
The preferrable way would be to ask the publisher to revise the clause so that the rights are transferred to the publisher for a limited time ONLY. For example, the revised statement might read, “Author hereby grants and licenses to Publisher for a period of (1-5) years, the exclusive, sole, right to….”
The EXCLUSIVE LICENSE is temporary! During that term the publisher is allowed to make profit from the work. After the expiry of the term, the author can continue a NON-EXCLUSIVE license for as long as the copyright’s duration or however long he/she may wish, but at all times, the author will retain the copyright in the works.
In Saregama India Ltd v. Suresh Jindal, it was held that according to the provisions of the Copyrights Act, the owner of the copyright in a future work may assign the copyright to any person either wholly or partially for the whole of the copyright or any part thereof. If an assignment is made to the assignee then he is treated as the owner of that copyright.
Assignment of Copyrights
The owner of a copyright (i.e. the creator) can legally transfer the ownership of the copyright to any third party. It is important to understand that by assignment the author is assigning all his rights in his/her work to the publisher. Once the agreement is signed the ownership of the work gets transferred to the publisher and thereafter the author will have to take permission from the publisher if he wants to use the transferred work in any way, e.g.- to create a derivate work, to get it translated, to use the text out of it for some commercial purpose etc.
Now, why would anyone do that? Why would they give up ALL their rights over something that they created solely?
The answers vary but generally the authors avail this option due to the fact that the publishers are much more established than them, with a wider reach, with greater resources thus they can distribute and make use of that particular piece of work in a much larger context than the author could do by himself/herself. The downside is that the author only receives a cut in the form of royalty from the publisher whilst losing all rights over their work. Moreover, unless the Agreement states otherwise the assignment is usually permanent. In some circumstances the publisher might agree to give certain rights back to the author.
What are the important points to include in the assignment agreement of a copyright:
- The date the agreement is made.
- Name of author and the person receiving the copyright.
- Details regarding the fact that the author wishes to assign his/her rights in the work to the assignee for the stated fee (in written monetary terms).
- The assignment consideration.
- When exactly the assignment will be effective, i.e- when will the ownership pass.
- What all is included in the assignment, i.e – whole or partial. Will the author be losing all rights to the written works/intellectual property, including their rights to royalties.
- Must be in writing and signed.
- Representations & Warranties of both parties.
- Further assurances, which include that the author will cooperate with the assignee and execute/ and/or sign any relevant or further document as and when required needed to fulfil the pertinent formalities involved.
- Duration/ territorial extent of assignment.
- Moral Rights shall stay with the author even after assignment.
- Governing Law.
- Witnesses.
Jaypee Brothers Medical v. Dr. Ramya Raghu & others: Issue was with respect to assignment of copyright. The contention was that the plaintiff (publisher) claimed that there was an assignment of copyright, the defendant (author) on the other hand stated that there was no assignment of copyright as there was no consideration. Court, after examining the terms of the agreement, decided that this was not a case of assignment of copyright. The agreement did not describe the plaintiff as assignee. The language was construed as making it only a standard contract of assignment of the right to publish the work and not assignment of the entire copyright work.
The decision in this case depicts the significance of negotiating clauses while drafting agreements. The clause relating to assignment in this case only said ‘transfer of rights to publish the work’ and not ‘transfer of copyright’. Due to this ambiguity arose in the mind of one party. But the court ruled in favour of defendants. As authors, they had no intention of assigning the copyright. Hence, the plaintiff could not restrain the defendants in the capacity of an assignee.
However, where there is ambiguity in the agreement, it was held in Hole v. Bradbury, that in the agreements between authors and publishers of theatrical products, it is, often difficult to distinguish between sole and exclusive licence and an assignment of copyright. Court held that where there is no express term as to the copyright contained in the publisher’s agreement, if consideration is paid to the author by way of royalties or a share of the profits instead of a sum of money paid down, the inference is that the copyright is not assigned but that a sole and exclusive licence is conferred upon the publisher.
Conclusion
Though the laws are clear and caselaw also tell us what needs to be done when a clear assignment is to be made from an author to the publisher. However, problems still arise and mostly due to a weakly drafted assignment agreement which leaves gaping loopholes that accommodate conflicts and parties have to resort to lengthy litigations to get their rights.
Therefore, before an author gets into an agreement with a publisher he/she must know what all rights they are giving up and for them are they being adequately compensated.
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