difference between licence and assignment of copyright

The Difference Between Copyright Assignments and Licenses

The Difference Between Copyright Assignments And Licenses

There are two ways that a copyright owner can transfer some or all of his or her copyright rights: through a license or an assignment.

In an assignment of copyright rights, the owner sells his or her ownership rights to another party and has no control over how the third party uses those rights. A copyright assignment is sometimes referred to as a sales agreement for copyright.

The buyer (assignee) can then use the copyrighted work or do whatever he or she wants with it. He or she all of the assigned rights that the original owner had.

A valid assignment of copyright must be in writing and signed by, or on behalf of, the copyright owner/assignor. The subject of the assignment must be clear as to what copyright is being assigned in which work(s).

In a license of copyright rights, the owner maintains his or her copyright ownership rights, but allows another party (the licensee) to exercise some of those rights without the licensee’s actions being considered copyright infringement. A license is often preferred over an assignment when the copyright holder wishes to maintain and exercise some ownership control over the rights and how the licensee uses the copyright holder’s rights.

For example, a typical software license agreement is a copyright license agreement. The software copyright owner grants the user/licensee the right to use the software in a specified, restricted manner. In return, the user/licensee may agree to limit his or her use of the software in various ways and to pay the copyright owner a license fee.

Unlike a copyright assignment, a copyright license does not have to be in a signed writing. A license can be oral or arise by implication when considering all of the facts and circumstances surrounding the transaction between the copyright owner and the purported licensee.

If you own a copyright in a work that you are thinking about assigning, you should consider whether to license your copyright instead, thus allowing you to retain ownership, and license only certain rights to the other party.

For additional information about the difference between copyright assignments and license, please contact us .

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Copyright Licenses and Assignments

One of the primary benefits of copyright ownership is the ability to transfer some or all of those rights to third parties. These transfers can be for all of the copyright rights in a work (which is generally referred to as an outright assignment), or can be for a limited portion of the rights provided by the Copyright Act (which usually takes the form a copyright license).

The BitLaw discussion of assignments and licenses is divided into the following four sections:

transfers in general
implied licenses
termination of transfers
recordation of transfers

Transfers in General

Copyright is a personal property right, and it is subject to various state laws and regulations that govern the ownership, inheritance, or transfer of personal property. It is probably best to view copyright as a bundle of rights. The rights included in that bundle are the rights granted by the U.S. Copyright Act, as described in the BitLaw discussion on the scope of copyright protection . Any or all of these rights, or any subdivision of those rights, may be transferred.

A transfer of one of these rights may be made on an exclusive or nonexclusive basis. The transfer of exclusive rights is not valid unless that transfer is in writing and signed by the owner of the rights conveyed. Transfer of a right on a nonexclusive basis does not require a written agreement. For example, the author of a novel, as the original copyright owner of the novel, could transfer to a publisher the exclusive right to copy and distribute a novel (under the right of reproduction and distribution ), and also grant a screen play writer the nonexclusive right to create a movie script based on that novel (under the right to create derivative works ). The author's agreement with the publisher would have to be in writing to be valid. However, the agreement with the screen play writer could be oral and still be enforceable.

A transfer of copyright rights is usually either an assignment or a license. An assignment of copyright rights is like the sale of personal property. The original owner sells its rights to a third party, and can no longer exercise control over how the third party uses those rights. A license (or more properly "an express license") is an agreement where the copyright owner maintains its ownership of the rights involved, but allows a third party to exercise some or all of those rights without fear of a copyright infringement suit. A license will be preferred over an assignment of rights where the copyright holder wishes to maintain some ownership over the rights, or wishes to exercise continuing control over how the third party uses the copyright holder's rights.

A typical software license agreement is a copyright license agreement. The owner of the copyright in the software wishes to grant the end-user the right to utilize the software in a restricted manner. In return, the end-user may agree to limit its use of the software in a variety of ways and to pay a license fee payment to the copyright owner.

Implied Licenses

An implied copyright license is a license created by law in the absence of an actual agreement between the parties. Implied licenses arise when the conduct of the parties indicates that some license is to be extended between the copyright owner and the licensee, but the parties themselves did not bother to create a license. This differs from an express license in that the parties never actually agree on the specific terms of the license. The purpose of an implied license is to allow the licensee (the party who licenses the work from the copyright owner) some right to use the copyrighted work, but only to the extent that the copyright owner would have allowed had the parties negotiated an agreement. Generally, the custom and practice of the community are used to determine the scope of the implied license.

Implied licenses have been used to grant licenses in situations where a copyrighted work was created by one party at the request of another. In one case, a special effects company was hired to create a specific effect for a horror movie. The contract through which the special effects company was hired did not assign the copyright in the effect, and did not provide for a license for the effect to be used in the horror movie. The court ruled that the effect could be used in the horror movie through an implied license, since the effect was created with the intent that it be used and distributed in the movie.

A commonly discussed scenario where implied licenses are destined to play a major role is on the World Wide Web. When a Web page is viewed in a Web browser, the page is downloaded through the Internet and placed on the user's screen. It is clear that a copy of the Web page is being made by the user. It is also clear that the Web page is protected against unauthorized copying by copyright law. But it would not make sense to allow the author of a Web page to sue a user who viewed her page, since the author intended that the page be viewed by others when she placed it on the World Wide Web. Rather, attorneys argue, courts should find that the Web page author has given end users an implied license to download and view the Web page. The extent of this implied license is unclear, and may someday be defined by the courts.

Termination of Transfers

Although a copyright owner is free to transfer her copyright rights as she sees fit, the Copyright Act contains a non-revocable right for a copyright owner to terminate any copyright transfer. The purpose for this is to give the creator of the work or the creator's heirs a second chance to exploit the work in situations where the value of the work may have been significantly enhanced since the original transfer. Generally, there is a five year window of time to accomplish the termination beginning either at

35 years from the assignment if the transfer was made on or after January 1, 1978; or
56 years from the date copyright was originally secured if the transfer was made before January 1, 1978.

The ability to terminate a transfer cannot be negotiated away. Thus, the author of a valuable book has the right to reclaim the copyright in the book by terminating the transfer, even if the agreement signed by the author stated that the assignment of her copyright rights was permanent and irrevocable. Exceptions to this ability to terminate a transfer are made for those parties who created derivative works prior to the termination (see the BitLaw discussion on derivative works for more information on this subject). In addition, works made for hire are not subject to this termination of transfer right (works made for hire are discussed in the BitLaw section on copyright ownership ).

Recordation of Transfers

A document that transfers copyright ownership or any other document pertaining to a copyright may be recorded in the Copyright Office. Although recordation is not required to make a valid transfer of a copyright, recordation of the transfer document does provide certain legal advantages and may be required to validate the transfer as against third parties.

The Difference Between Assignment and License of Copyright

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The Difference Between a License & Right of Entry

How to obtain a clothing store license, kinds of copyrights.

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A copyright is an ownership interest in a creative work that gives the owner exclusive rights to use the work. A small business interested in using an image or a piece of music in its advertising, for example, will need to acquire the rights to those works either by buying them completely and getting an assignment, or by purchasing a license to use the works for a specific purpose.

Assignments

An assignment is a permanent transfer of one or all of the copyright rights, similar to the sale of personal property. Assignments are normally more expensive because the purchaser has total ownership and can resell or license the works themselves.

A license is a temporary or limited transfer of certain copyright rights. It can be made on an exclusive or non-exclusive basis, meaning the copyright owner can license the work to more than one person at the same time. As a result, licenses are more economical ways for small businesses to use copyrighted content.

United States Copyright Office Circular #1

Kevin Doran has been a writer and editor since 2009 whose work has been published in the "Southwestern Journal of International Law." He received a BA in Classics from USC and a JD from Southwestern Law School and is currently pursuing an MA in History at Western New Mexico University.

What is a non-exclusive license, the advantages of assigning a patent, what is a statement giving permission to reproduce copyrighted material, copyright law on jingles, copyright ownership agreement, how to get a general contractor license in new jersey, how is copyright intangible, what is the drm license on the android, how to rename a photo album in facebook, most popular.

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Assignments and Licensing of Intellectual Property

Intellectual property rights such as patents and copyrights are often transferred in whole or part so that a third party can make use of them. Some common examples of assignments and licensing of intellectual property include an author who licenses her copyrighted novel to a publisher for a time or a software developer that purchases the right to incorporate code created and owned by another into one of its products.

Licenses and Assignments as Options

Licenses and assignments are both ways of granting rights in intellectual property to a third party, but the two alternatives are quite a bit different, and it is important that a person or organization transferring intellectual property rights understand the difference and the ramifications of each. It is equally important that a party seeking to purchase intellectual property rights enters into the type of agreement that will allow the intended use on the intended terms.

Working with an experienced intellectual property lawyer when you are considering entering into a licensing or assignment agreement will ensure that you have the information you need to make the best decision. The attorney can also draft or review the agreement to ensure that the language accurately reflects your intentions and there are no unanticipated obligations or limitations.

Intellectual Property Licensing

Licensing a patent or copyright to a third party means granting that person or organization permission to exercise some or all of your rights. When you grant a license, you still own the intellectual property rights, although the terms of the license may place some limitations on your use of those rights. A license may be exclusive or non-exclusive.

Non-Exclusive Licensing

A non-exclusive license grants a third party the right to use your intellectual property but does not prohibit you from using those rights yourself, or from granting licenses to others. A simple example would be a software platform provider such as Salesforce. Salesforce licenses a customer the right to use its protected intellectual property to manage customer contacts and prospects–the software can even be integrated with other platforms or tweaked to serve the customer’s needs. However, the company’s business model requires that it have the freedom to license that software again and again, to thousands of clients at a time. Thus, the licenses it grants are non-exclusive.

Exclusive Licensing

An exclusive license grants the purchaser the sole right to use the intellectual property, or some portion of it, for either the duration of the licensing period or a portion of the licensing period. For example, when a magazine or other publication purchases an article from a writer, the publication typically takes an exclusive license for a specified period of time, such as 90 days. That short period of exclusivity allows the publication the benefit of being the first to publish and the only source for a period of time. The agreement may also include a non-exclusive license that lasts longer so that the publication can include the piece in anthologies or keep it in an online archive.

Limited Licensing

A license, whether exclusive or non-exclusive, may be limited in various ways. One of the most common is that the license may be time-limited: a license may be granted for a specific time period or in perpetuity. Another is that the license may apply to fewer than all the rights associated with the copyright or patent. For example, a novelist may license book rights to a publisher, but retain movie rights for herself or to license to another party.

Assignment of Intellectual Property Rights

The key difference between a license and an assignment is that an assignment transfers rights away from the original copyright or patent holder. Whereas the licensor retains ownership of the intellectual property rights, the assignor gives up the rights entirely. In simplest terms, licensing is akin to rental, whereas an assignment operates as an outright sale. A copyright or patent holder who has assigned his rights retains no interest in the intellectual property, just as a person who sells a car no longer has a legal interest in that vehicle.

Obviously, a patent or copyright holder who is considering an assignment must think carefully about the legal ramifications and the impact on existing products and systems, and must ensure that the compensation is commensurate with the rights transferred.

Talk to an Intellectual Property Lawyer Before Licensing or Assigning Your Rights

The decision as to whether to license or assign your rights as the holder of intellectual property rights or to pursue a license or assignment as a purchaser, can be a complex one. A miscalculation could mean serious complications and costs. Protect yourself before you start by getting knowledgeable guidance from an experienced attorney at KPPB LAW who can ensure that your agreement protects your interests.

Intellectual Property Attorneys at KPPB LAW

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Assignment of Copyrights & Legal Implications

Copyright gives authors a bundle of personal property or economic rights in an original work of authorship. These rights include the rights to reproduce, create derivative works, distribute work to the public, publicly perform a work, publicly display visual works, and digitally transmit sound records. They belong exclusively to a copyright holder.

Usually, the copyright holder is the person who created the work. However, any of these economic rights, or any part of these economic rights, can be transferred. Under the Visual Artists Rights Act (VARA), an artist’s moral rights in a work of fine art can be waived but not assigned.

An original owner who assigns their copyright to someone else will not retain any right to control how the work is used.

The transfer of economic rights may be on an exclusive basis, which requires a written agreement, or a non-exclusive basis, which does not require a written agreement. Most commonly, this transfer is accomplished by assignment or license. Unlike a license in which the copyright owner maintains their ownership, an assignment is similar to a sale. The original copyright owner sells the rights to a third party and cannot control how the rights are used, just as they would not be able to control how personal property that they sold was used once it was transferred.

Generally, a license is preferable if a copyright holder expects to continue exercising interests and control over the work. For example, if you assign your copyright in a song to a music producer, the decision about whether to allow a film studio to use your song in a film will belong to the producer, not to you. If you license your copyright in a song in a limited capacity to a music producer, however, you will continue to be able to license your copyright in the song to a film producer.

Assignments can be used for many different purposes, such as security for debt, as an asset passed to heirs, or as part of the distribution of assets after a bankruptcy proceeding. Once you assign your rights to somebody else, however, you are permanently giving away your right to control the work. That means if you try to exercise any of the rights you have assigned, you are committing copyright infringement even though you created the work. If you assign your copyright to somebody else and regret the loss, you may be able to buy your copyright back from that person, but whether or not to sell it back to you is up to the assignee.

How Is Copyright Assigned?

Under Section 204 , a transfer of ownership is only valid if the instrument, note, or memorandum of transfer is in writing, signed by the copyright owner or their duly authorized agent. Generally, a certificate of acknowledgment is not required for the transfer to be valid, but it can be used as prima facie evidence that a transfer was executed if it is issued by someone authorized to administer oaths in the United States or, if the transfer is executed abroad, if the certificate is issued by a United States diplomatic or consular official, or a person authorized to administer oaths who also provides a certificate.

Formally recording an assignment with the Copyright Office is not required but can be advantageous.

You do not have to record an assignment in order to assign the interest. However, there are advantages to recording the assignment, such as creating a public record of the transfer details, giving constructive notice to members of the public, establishing priority of rights when there are conflicting transfers of ownership, validating the transfer of the copyright against a third party, or in some cases perfecting a security interest.

Last reviewed October 2023

Intellectual Property Law Center Contents

Intellectual Property Law Center
Copyright Infringement & Related Lawsuits
Copyright Ownership Under the Law
Assignment of Copyrights & Legal Implications
Copyright Licensing Under the Law
Copyright Registration Under the Law
Safe Harbors for Online Service Providers Under Copyright Law
Criminal Copyright Infringement Laws
Enforcement of Copyrights Through Lawsuits & Criminal Charges
Fair Use Defense to Copyright Infringement Lawsuits
Software Development Agreements & Related Legal Concerns
End-User License Agreements Imposing Legal Restrictions on Software
Lists, Directories, and Databases Under Copyright Law
Photos of Buildings and Architecture Under Copyright Law
Photos of Copyrighted or Trademarked Works & the Fair Use Defense to Infringement Lawsuits
Works in the Public Domain After Copyrights Legally Expire
Copyrights and Credits for Songwriters Under the Law
Music Samples and Copyright Infringement Lawsuits
Playing Music in Stores or Restaurants — How to Avoid Copyright Infringement Lawsuits
Consignment Sales by Artists to Stores & Legal Protections
Destruction of Copyrighted Works & Limited Legal Protections
Copyright Legal Forms
Trademark Law
Trade Secret Law
Choosing Among Patent, Copyright, and Trademark for Legal Protection
Intellectual Property Law FAQs
Find an Intellectual Property Lawyer

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Assignment and Licensing of Copyrights under Copyrights Act

Intellectual Property Rights Subject-wise Law Notes
January 8, 2021

Introduction

IP is an intellectual work which is produced by intellectual human brain. For e.g. literary work, musical work, inventions, etc. it is an intangible property. It is described as property because it is capable of sale, purchase, mortgage, etc. the owner if IP has rights over his intangible property. No one can make use of IP without the consent of the owner. IP is made to protect their rights and the infringement.

Copyright is a protection given to the creators of certain types of works as an acknowledgment to their intellectual input [1] . The objective of copyright has always been the protection of the interest of a creator, coupled with dissemination of knowledge. Though this protection started with the recognition of rights of authors in their books, but modern technology has substantially changed the nature of work and its mode of exploitation.

Economic rights allow an owner to reap economic benefits from his intellectual creations. According to section 14 of the Copyright Act, 1957, different rights are recognised with respect to the nature of the work. As per this section, it is the exclusive right of the owner to do or authorise the doing of the acts provided thereunder.

Today copyright includes a variety of industries like: the information industry and the entertainment industry and industrial design.

Assignment of Copyrights : Section 18 of Copyrights Act

The owner of the copyright of a work has the right to assign his copyright to any other person. The effect of assignment is that the assignee becomes entitled to all the rights related to the copyright to the assigned work. [2] However, mere grant of right to publish and sell the copyrighted work amounts to publishing right and not assignment of copyright.

Where the assignee of a copyright becomes entitled to any right comprised in the copyright, he shall be treated as the owner of the copyright in respect of those rights. The assignor shall also be treated as the owner of copyright with respect to unassigned rights. The legal representatives 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 Production [3] , the Bombay High Court considered the issue whether assignment of video rights would include the right of satellite broadcast as well. The Court agreed with the contentions of defendant that there were different modes of communication to the public such as terrestrial television broadcasting (Doordarshan), 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, satellite broadcast copyright of film was a separate right of the owner of the film and the video copyright assigned to the plaintiff would not include this.

Mode of Assignment: Section 18 of Copyrights Act

As per section 19, assignment of copyright is valid only if it is in writing and signed by the assignor or his duly authorized agent. The assignment of a copyright in a work should identify the work and specify kind of rights assigned and the duration and territorial extent of such assignment. Further, it should specify the amount of royalty payable, if any, to the author or his legal heirs during the continuance of assignment and the assignment will be subject to revision, extension or termination on terms mutually agreed upon by the parties.

If the period of assignment is not mentioned it will be deemed to be taken as five years from the date of assignment. If the territorial extent of such assignment is not stipulated, it will be taken as applicable in whole of India.

Also, Section 19(8) contemplates that the assignment of copyright work against the terms and conditions on which rights have been assigned to a particular copyright society where the author of the work is a member shall be void. Further, Section 19(9) and section 19(10) opine that the assignment of copyright for making cinematograph film or sound recording shall not affect the right of the author to claim an equal share of the royalties and consideration payable with respect to use of his protected work.

In Saregama India Ltd v. Suresh Jindal [4] , it was held that 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 and once the assignment is made the assignee for the purpose of this Act is treated as the owner of the copyright.

Licensing of Copyright

The owner of copyright may grant a license to do any of the act in respect of which he has an exclusive right to do. The license can be classified into following categories:

Voluntary license: : Section 18 of Copyrights Act

The author or the copyright owner has exclusive rights in his creative work and he alone has right to grant license with respect to such work. According to section 30 of the Copyright Act 1957, the owner of the 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 authorised agent. A license can be granted not only in existing work but also in respect of the future work, in this situation assignment shall come into force when such future work comes into existence. Where a licensee of the copyright in a future work dies before such work comes into existence, his legal representatives shall be entitled to the benefit of the license if there is no provision to contrary.

The mode of license is like an assignment deed, with necessary adaptations and modifications in section 19 (section 30A). Therefore, like an assignment, a license deed in relation to a work should comprise of following particulars:

Duration of license
The rights which have been licensed
Territorial extent of the licensed
The quantum of royalty payable
Terms regarding revision
Extension and termination

Voluntary licenses can be:

Exclusive – The term exclusive license has been defined in Section 2(j) as a license which confers on the licensee and persons authorized by him, to the exclusion of all other persons, any right comprised in the copyright work.

Non-exclusive – It does not confer right of exclusion. It is mere grant of an authority to do a particular thing which otherwise would have constituted an infringement. When owner grants an exclusive right, he denudes himself of all rights and retains no claim on the economic rights so transferred.

Co-exclusive – Here the licensor grants a license to more than one licensee but agrees that it will only grant licences to a limited group of other licensees.

Sole license – Where only the licensor and the licensee can use it to the exclusion of any other third party.

Implied license – Author impliedly allows or permits the use of his work. For example, he had knowledge that someone is using his work but he did not take any action.

Compulsory Licenses

Compulsory and statutory licenses can impact both the identity of the licensee who the owner chooses to deal with and the terms, including rates of royalty, that the owner may stipulate for such dealing. Viewed from this perspective, compulsory licenses are less of an infraction on owner autonomy, on both these counts. The owner does retain a fair bit of autonomy to enter into appropriate licensing arrangements with those who he may deem fit, and he is also permitted to negotiate on the terms of the license within the zone of reasonableness. Normally, it is an unreasonable refusal to deal with a person that gives rise to a compulsory license. This brings us to the third important distinction between a compulsory and statutory license. The former is always granted upon specific application by an individual to the competent authority. The latter, on the other hand, is a blanket fixation of rates of royalty by the authority and a grant of standardised licenses to all those who are interested in availing the same. The owner, as a necessary corollary, has no autonomy on the identity of those who obtain the license, or what they pay as royalty for the same.

Categories of Compulsory Licenses

There are five main categories of compulsory licenses currently operating in India.

These are:

1. Licenses in respect of works unreasonably withheld from the public;

2. Licenses in respect of orphan works;

3. Licenses in respect of works for the differently abled;

4. Licenses in respect of translations;

5. Licenses in respect of reproduction and sale of works unavailable in India.

Statutory Licenses

As seen from the above discussion of compulsory licenses, such licenses can be understood as a particularised expropriation of owner autonomy in respect of the copyrighted work. The need for such expropriation arises only upon acts or inaction on the part of the owner that render the work unavailable to the public or differently abled persons. Statutory licenses, on the other hand, do not require any examination into the conduct of the owner. It attempts a wholesale expropriation of owner autonomy, once the work fits within the broader class of works that can be so licensed.

There are two such categories of statutory licenses, namely cover version recording licenses (Section 31C) and broadcasting licenses (Section 31D).

The first has existed, though as part of the fair dealing exceptions in Section 52, from the very beginning. The second is a very recent addition to the Act vide the 2012 amendment.

The term ‘assignment’ and ‘license’ are not interchangeable. An assignment is different from a license. Generally, in absence of any provision to the contrary the assignee becomes the owner of the assigned work, whereas in case of a license the licensee gets the right to exercise particular rights only.

An assignment may be general, i.e. without limitation or an assignment may be subject to limitations. It may be for the whole term of copyright or any part thereof. An assignment transfers an interest in and deals with copyright itself as provided under section 14 of the Act, but license does not convey the copyright but only grants a right to do something, which in absence of license would be unlawful. An assignment transfers title in copyright, a license merely permits certain things to be done by licensee. The assignee being invested with the title in the copyright may reassign [5] .

[1] This is known as the ‘Doctrine of Sweat of the Brow’, whereby a work is given copyright protection if the author has applied ‘labour, skill or judgment’ in creating the work irrespective of the level of originality in the work. Evolved from the decision in Ladbroke v William Hill, [1964] 1 All E.R. 465.

[2] Section 18(2); Copyright Act, 1957.

[3] 23 IPLR 388 (1998).

[4] 2007 (34) PTC 522 (Cal).

[5] Deshmukh & co (publishers) pvt ltd v/s avinash vishnu khadekar 2006 (32) PTC 358 (Bom)

Author Name: Muskaan Mathur [Student, Savitribai Phule, Pune University (SPPU)]

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Digital Media Law Project

Legal resources for digital media, search form, understanding the difference between a transfer and a license.

A transfer of copyright is a conveyance of ownership, much like the sale of personal property. When you transfer your entire interest in a copyrighted work, or one or more of your exclusive rights under copyright, you give up all claim to the right(s) you convey (except as explained in the Termination of a Transfer or a License section). The recipient of the transfered right(s) may:

exercise the right or rights transfered;
authorize others to exercise the right or rights transfered via another transfer or via license; and
sue for copyright infringement of the transferred right(s).

A license is a grant of permission to exercise your rights under copyright. In copyright terminology, there are "non-exclusive" and "exclusive" licenses. When you give someone a non-exclusive license, you give the licensee permission to exercise the right in question, but you also reserve the right to continue exercising it yourself and to authorize others to do so. When you give someone an exclusive license, you promise that the licensee and only the licensee may exercise the right. This means that when you grant an exclusive license, even you may not exercise the granted right, nor may you authorize anyone else to do so.

Copyright law treats an exclusive license like a transfer. Therefore, the recipient of an exclusive license to a right or right(s) may:

exercise the right or rights licensed;
authorize others to exercise the right or rights licensed via a transfer or license; and
sue for copyright infringement of the licensed right(s).

The recipient of a non-exclusive license may exercise the right or rights licensed, but MAY NOT:

authorize others to exercise the right or rights licensed via transfer or license without permission of the copyright owner; and

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Assignment And Licensing Of Copyrights

Coverage of this Article

Key takeaways.

-The owner of a work's copyright has the ability to assign his copyright to anyone else. As a result of the assignment, the assignee acquires all rights relating to the copyright of the assigned work.

Introduction

-Copyright is legal protection granted to creators of certain types of works in recognition of their intellectual contribution.

Assignment of Copyrights (Section 18)

-The owner of a work's copyright has the ability to assign his copyright to anyone else.

Mode of Assignment (Section 19)

-According to section 19, a copyright assignment is only legal if it is made in writing and signed by the assignor or his lawfully authorized representative.

Disputes with Respect to Assignment of Copyright (Section 19a)

-According to Section 19(a), if the assignee fails to make sufficient use of the rights assigned to him and such failure is not attributable to any act or omission of the assignor, the Appellate Board may revoke the assignment after receiving a complaint from the assignor and conducting such inquiry as it deems necessary.

Assignment by Operation of Law (Section 20)

-If the owner of the copyright dies without leaving a will, the copyright will pass to his personal representative as part of his estate.

Licensing of Copyright

-The owner of a copyright may give a license to perform any of the acts over which he has sole authority.

Section 18 of the Copyrights Act defines a: Voluntary Licence

-The author or copyright owner has exclusive rights to his or her creative work, and he or she is the only one who may grant a license for it.

Compulsory license

-Compulsory and statutory licenses can affect the identification of the licensee with whom the owner chooses to do business, as well as the terms, including royalty rates, that the owner may establish.

Statutory license

-Statutory licenses, on the other hand, do not necessitate any investigation into the owner's behavior

-The terms "assignment" and "licensing" are not synonymous. A license is not the same as an assignment.

The owner of a work's copyright has the ability to assign his copyright to anyone else. As a result of the assignment, the assignee acquires all rights relating to the copyright of the assigned work.
If the assignment period is not specified, it will be assumed to be five years from the date of assignment.
In the event of a dispute over the assignment of copyright, the Appellate Board may issue a proper order after receiving a complaint from the aggrieved party and conducting any investigation it deems necessary, including an order for the recovery of any royalties due.
The owner of the copyright may also give a license to perform any of the acts over which he has sole authority.

Copyright is legal protection granted to creators of certain types of works in recognition of their intellectual contribution. The purpose of copyright has always been to safeguard a creator's interests while also disseminating knowledge. Though this protection began with the acknowledgment of authors' rights in their writings, contemporary technology has fundamentally altered the nature of work and the means by which it is exploited. An owner's economic rights allow him to profit financially from his intellectual contributions.

Different rights are recognized depending on the nature of the work, according to Section 14 of the Copyright Act of 1957. According to this provision, the owner has the exclusive authority to perform or authorize the performance of the activities listed.

The owner of a work's copyright has the ability to assign his copyright to anyone else. As a result of the assignment, the assignee acquires all rights relating to the copyright of the assigned work. The mere grant of the right to publish and sell the copyrighted work, on the other hand, is a grant of publishing rights rather than a copyright assignment.
When an assignee of copyright becomes entitled to any of the copyright's rights, he is treated as the copyright's owner in respect of those rights. In the case of unassigned rights, the assignor is also considered the copyright owner. If the assignee dies before the task is completed, the legal representatives of the assignee are entitled to the assignment benefits.
In Video Master v. Nishi Production, the Bombay High Court reviewed whether a video rights assignment would include the right to broadcast through satellite as well. The Court agreed with the defendant's assertions that there were various channels of public communication, including terrestrial television transmission (Doordarshan), satellite broadcasting, and video television. In all of those modalities, the film's owner owned distinct copyright, which he might assign to multiple people.
As a result, the satellite broadcast copyright of a film was a separate right of the film's owner, and the plaintiff's video copyright did not include it.
According to section 19, a copyright assignment is only legal if it is made in writing and signed by the assignor or his lawfully authorized representative. The assignment of a copyright in a work should identify the work and specify the type of rights given, as well as the assignment's duration and territorial scope. It should also include the amount of royalty payable, if any, to the author or his legal heirs during the time of the assignment, as well as the fact that the assignment may be revised, extended, or terminated on mutually agreed-upon terms.
If the assignment period is not specified, it will be assumed to be five years from the date of assignment. If the territorial scope of the assignment is not specified, it will be interpreted to apply to the entire country of India.
Section 19(8) also states that copyright work assigned in violation of the terms and conditions under which rights have been assigned to a particular copyright organization where the author of the work is a member is void.
In addition, Sections 19(9) and 19(10) state that the assignment of copyright for the purpose of making a cinematograph film or sound recording does not affect the author's entitlement to an equal part of the royalties and consideration due for the use of his protected work.
It was held in Saregama India Ltd v. Suresh Jindal that the owner of the copyright in a future work may assign the copyright to any person for the whole or part of the copyright and that once the assignment is made, the assignee is treated as the owner of the copyright for the purposes of this Act.
According to Section 19(a), if the assignee fails to make sufficient use of the rights assigned to him and such failure is not attributable to any act or omission of the assignor, the Appellate Board may revoke the assignment after receiving a complaint from the assignor and conducting such inquiry as it deems necessary.

If the owner of the copyright dies without leaving a will, the copyright will pass to his personal representative as part of his estate. Section 20 states that if a person is entitled to copyright under bequest and the work has not been published before the testator's death unless the testator's will or any codicil thereto expressly states otherwise, such person is considered to have copyright in the work to the extent that the testator was the owner of copyright immediately before his death.

The owner of a copyright may give a license to perform any of the acts over which he has sole authority. The following are the different types of licenses:

The author or copyright owner has exclusive rights to his or her creative work, and he or she is the only one who may grant a license for it.
The owner of the copyright in a work may give any interest in his copyright to any person by license in writing, which must be signed by him or his duly authorized representative, according to Section 30 of the Copyright Act 1957.
A license can be issued not only for existing work but also for future work; in this case, the assignment will take effect when the future work is completed. If there is no stipulation to the contrary, a licensee of the copyright in a future work who dies before that work comes into existence will be entitled to the benefit of the license.
The license mode is similar to an assignment deed, with section 19 providing the appropriate changes and alterations (section 30A). As a result, just like an assignment, a licensing deed for a work should include the following information:
Duration of license
The rights which have been licensed
Territorial extent of the licensed
The quantum of royalty payable
Terms regarding revision
Extension and termination
Compulsory and statutory licenses can affect the identification of the licensee with whom the owner chooses to do business, as well as the terms, including royalty rates, that the owner may establish. Compulsory licenses, when viewed in this light, are less of a violation of owner sovereignty on both grounds.
The owner does maintain some liberty in terms of entering into proper licensing agreements with those he sees fit, and he is also allowed to negotiate the terms of the license within reason.
A compulsory license is usually triggered by an unjustified refusal to deal with a person.
This takes us to the third key difference between a mandatory and statutory license. The former is always granted after an individual makes a specific request to the appropriate authority.
The latter, on the other hand, is the authority's broad setting of royalty rates and the issuance of standardized licenses to all those who wish to use them. As a necessary corollary, the owner has no control over the identities of persons who receive the license or the amount of royalties they pay.
Statutory licenses, on the other hand, do not necessitate any investigation into the owner's behavior. Once the work fits into the broader class of works that can be licensed in this way, it tries a wholesale expropriation of owner autonomy.
Cover version recording licenses (Section 31C) and broadcasting licenses are the two types of statutory licenses (Section 31D).
The first has existed since the beginning, however as part of the fair dealing exceptions in Section 52. The second is a relatively new addition to the Act, as it was amended in 2012.

The terms "assignment" and "licensing" are not synonymous. A license is not the same as an assignment. In general, unless otherwise stated, the assignee becomes the owner of the assigned work, but in the event of a license, the licensee merely receives the right to exercise specific rights.

An assignment might be broad, i.e. without restrictions, or specific, i.e. with restrictions. It could be for the entire copyright term or just a portion of it. As stipulated by Section 14 of the Act, an assignment transfers an interest in and deals with copyright, whereas a license does not convey the copyright but merely offers permission to do something that would be illegal otherwise. An assignment grants copyright ownership, but a license just allows the licensee to do specified things. The assignee who has been given the copyright title may reassign it.

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Exclusive and Non-Exclusive Licenses

The exclusive rights of a copyright owner may be licensed on an exclusive or nonexclusive basis. A copyright exclusive license is one in which ownership in one or more rights is transferred by the copyright owner. A copyright nonexclusive license occurs when the owner retains ownership of the copyright and/or may license the same right to others.

There are several differences between exclusive and nonexclusive licenses pertaining to licensees ability to sue and their written requirements.

Ability to Sue

An exclusive licensee of one or more of the exclusive right is considered to be the owner of those rights. As the owner, the exclusive licensee can sue for infringement of those rights. On the other hand, a nonexclusive licensee is not considered to be a copyright owner and thus cannot sue for any infringement of the copyright in the work by others.

Writing Requirement

Exclusive licenses must be in writing, but nonexclusive licenses do not have to be in writing.

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India: Licensing v. Assignment

Indian law provides intellectual property protection in the form of copyright to the creators of original works of authorship such as literary works (including computer programs, compilations and tables including computer databases which may be stated in codes, words, schemes or even in any other form, including a machine-readable medium), musical, dramatic and artistic works, sound recordings and cinematographic films.

The owner of copyright work can generate monetary profits not only by taking advantage of it himself but also by co-sharing it with others for mutual benefits. This can be done by way of licensing or assignment of copyright. For example, a small business interested in using a copyrighted work in its advertising will need to acquire the rights to that works either by buying them completely and getting an assignment or by buying a license to use the works for a particular purpose.

What is an assignment agreement?

As assignment agreement is a contractual agreement that assigns or transfers intellectual property rights from one person or entity to another. It is also a legal record that verifies the transfer of ownership of intellectual property rights. There are two parties in every assignment agreement, one party is the giving party i.e. assignor and the other is the receiving party i.e. the assignee.

It is the right of the owner of the copyrighted work to assign his copyright to any other person. The effect of the assignment is that the assignee becomes entitled to all the rights related to the copyright to the assigned work. Where the assignee of copyright becomes entitled to any right comprised in the copyright, he shall be treated as the owner of the copyright in respect of those rights. The assignor shall also be treated as the owner of the copyright for unassigned rights. If the assignee dies before the work comes into existence then the legal representatives of the assignee shall be entitled to the benefits of the assignment.

The Bombay High Court in Video Master v. Nishi Production considered the issue whether the assignment of video rights would include the right of satellite broadcast as well. The Court agreed with the contentions of the defendant that there were different modes of communication to the public such as terrestrial television broadcasting (Doordarshan), 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, satellite broadcast copyright of film was a separate right of the owner of the film and the video copyright assigned to the plaintiff would not include this.

Mode of Assignment (Section 19)

Section 19 of the Act states that the assignment of copyright is valid only if it is in writing and signed by the assignor or his duly authorized agent. In assigning the copyright of a work, it should identify the work and the duration and specify kind of rights assigned and territorial extent of such assignment. Additionally, it should specify the amount of royalty payable, to the author or his legal heirs, if any, during the continuance of assignment and the assignment will be subject to revision, termination or extension on terms mutually accepted by the parties.

If the period of assignment is not mentioned in the agreement then it will be deemed to be taken as five years from the date of assignment. If the territorial extent of such assignment is also not stipulated in the agreement, it will be taken as applicable in whole of India.

In Saregama India Ltd v. Suresh Jindal, it was held that according to the provisions of this 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.

What is a license agreement?

A license agreement is a contractual agreement that authorizes or licenses another person or entity to use the rights of a protected IP. A license is nothing but a contract that certifies the shared use of IP rights. There are two parties in a licensing agreement. The party that gives the license is called the licensor and the party who receives it is the licensee. The copyright owner also has the right to license the work to more than one person at the same time, meaning it can be granted on an exclusive or a non-exclusive basis. As a result of which licenses are more economical ways for small businesses to use copyrighted content. The conditions essential for grant of such a License are as follows:

(a) The work must have been performed or published in public.

(b) The author must have refused to allow the performance of the work in public or must have refused to allow the republication of the work and because of which the work is held back from the public;

(c) The author must have denied communication of a work to the public by broadcast on terms which the complainant considers reasonable.

Types of Copyright Licensing Agreement

Voluntary License
Compulsory licensing

The term 'assignment' and 'license' cannot be interchanged. A license is different from an agreement. Generally, in absence of any provision to the contrary, the assignee becomes the owner of the assigned work, whereas in case of a license the licensee gets the right to exercise particular rights only.

An assignment may be subject to limitations. It may be for the whole term of the copyright or it can be for any particular part. An assignment transfers an interest and deals with copyright. However, the license does not convey the copyright but only grants a right to do something, which in the absence of license would be unlawful. An assignment transfers title in copyright, a license merely permits certain things to be done by the licensee. The assignee being invested with the title in the copyright may reassign.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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Copyright Assignment vs Exclusive License

Is Copyright a Little Fuzzy? by Elias Bizannes from Flickr (Creative Commons License)

I recently got an email from someone who asked me to explain the difference between a copyright assignment and an exclusive copyright license. I told him to call me and I’d explain it and he never did. So I’m writing a post about it.

The main difference between an assignment and a license is who owns the copyright. In an assignment you give up ownership and in a license you retain it.

Copyright Assignment When you have a copyright assignment, you give someone else your copyright (usually in exchange for money). Once you assign your copyright, you no longer own it. You can’t get it back unless the person you assigned it to gives it back or sells it back to you. Copyright assignments have to be in writing to be valid.

If you assign your copyright in a work to someone and then you try to use that same work – perhaps in a new project or your portfolio, you could be committing copyright infringement. The person you previously assigned your copyright to would have the authority to make you stop using it.

This may sound bizarre to you and some people have trouble grasping the idea that you can create something and be in a position where it’s illegal for you to use it. Think of it in terms of other property: If you sell your neighbor your car, you’re no longer allowed to drive it without their permission. Likewise if you sell your copyright to someone, you need their permission to use it.

Exclusive Copyright License When you have a copyright license, you retain ownership of your copyright and you give someone permission to use it. In a license, you determine which of your copyright rights you’re letting the person use. (A copyright comes with the rights to copy, distribute, display, perform, and make derivative works.) A copyright license can be for all the rights, or just some of them.

An exclusive copyright license means that only the person who is licensing the rights can use them. You, as the copyright owner, can’t even use them while the license is in place. A copyright license can be perpetual or time limited. So when a person has an exclusive perpetual copyright license that covers all the copyright rights to a work, it looks similar to a copyright assignment, except that the ownership of the copyright didn’t change. If someone wanted an exclusive perpetual copyright license, that might be a situation where the owner might want to consider assigning the license.

In a copyright license, you can have rights over what the person licensing the rights can do with it. For example, you might have the right to ensure that the licensing party is adhering to the standards you set regarding how the copyright will be used. If it’s a situation where you’ve licensed your copyright in exchange for share of the profits, you would be owed an accounting to ensure that you’re not being ripped off. Licenses tend to be complicated and should be in writing.

Deciding whether you should have a copyright assignment or a copyright license for your work can be a complicated decision that should be evaluated carefully, possibly with the assistance of a copyright attorney in your community who can explain your options and write effective contracts for you.

If you want to chat with me about copyright, feel free to connect with me on Twitter , Facebook , YouTube , LinkedIn , or you can email me. You can also subscribe to the Carter Law Firm newsletter . Please visit my homepage for more information about Carter Law Firm .

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Privacy Overview

Assigning and Licensing
About Copyright

Assignment of copyright and licences can include a number of limitations and conditions. These can include limitations on the type of use that can be made of the work, the period of time for which a licence applies and requirements for payment. Whether you are granting or getting a licence (clearance), it is always a good idea to record the details of the licence in writing. It is also a good idea to date the written record of the licence, and have it signed by both the licensor and licensee.

Licence Terms

The document recording a licence would usually include the following:

who the rightsholder is and your details, including relevant names and contact details — use letterhead if appropriate;
precisely identify the material to be copied, including which part or parts of the work you want to copy, page numbers, chapter titles, or any artworks included. This avoids confusion later, and allows the rightsholder to quickly identify the work, especially if they control a lot of material (such as a publisher);
how the material is going to be used, including information such as number of copies made, who they will be distributed to, where they will be distributed (for example, to staff in overseas offices) and whether the work will be distributed free of charge or for profit;
how long the permission lasts (eg, is it a one-off copy or will the material continue to be copied for a set period of time?);
will copying be paid for? And if so how and when will the charges be calculated?
will the rightsholder be acknowledged as the author or publisher in any way on your copies?
a warranty (which is a legal guarantee or legally binding promise) that the person granting permission does in fact control the copying rights in the work and that the work does not infringe any existing copyright.

This information is for guidance only. It is not legal advice.

MORE FROM AUSTRALIAN COPYRIGHT COUNCIL

The Australian Copyright Council publishes information sheets (such as ‘Assigning and licensing rights’, ‘Fees and royalties for the use of copyright material’, and ‘Permission: how to get it?’) and detailed guides , offers a legal advice service and runs an annual training program .

28 August 2015

Can I Assign or License Copyright?

By Sophie Pemberton Senior Lawyer

Updated on July 5, 2021 Reading time: 5 minutes

This article meets our strict editorial principles. Our lawyers, experienced writers and legally trained editorial team put every effort into ensuring the information published on our website is accurate. We encourage you to seek independent legal advice. Learn more .

How Do I Licence My Copyright?

How Do I Assign My Copyright?

Can I Include Restrictions When Licensing or Assigning My Copyright?

What if someone breaches the licence or assignment agreement.

Key Takeaways

Frequently Asked Questions

In Australia, copyright ordinarily grants you, as the copyright owner, an exclusive right to the creative expression of your work. If you want to allow others to use or reproduce your copyrighted work, you may decide to license or assign your copyright for a specific purpose. This article sets out the differences between a copyright licence and a copyright assignment and when you might want to use them.

If you licence your copyright, you are allowing another person or company to use your copyright, but you are not giving them ownership of your work. A copyright licence should be clearly drafted to set out the terms and conditions of your agreement. It should clearly identify:

who the copyright owner is;
who you are granting a right to use the copyright work;
the exact copyright material that the licensee may copy;
how the licensee will be able to use the copyright material; and
whether there will be a distribution of profits, if the work will produce revenue while being licensed.

For example, if you want to licence the copyright in part of your website, the licence should include details about:

which exact parts of your website you will licence;
how long the licence lasts; and
where the licensee can reproduce the content.

A licence for copyright material can often be very detailed, so it is important to have a lawyer specialising in copyright look over the terms including whether any warranties apply.

There are also different types of licences that are available, including:

exclusive licences (a licence that only permits the licensee to use the copyright material the licence covers, and also excludes you as the licensor from using the copyright material);
non-exclusive licences (a licence that allows multiple people to use your material);
sole licences (a licence that allows you to use the copyright material at the same time as the licensee); and
implied licences (in certain circumstances where you permit the use of your copyright material, you may be granting an implied licence; for example, where you have consented to them using your work, but not by way of formal agreement).

How Do I Assign My Copyright?

When you assign your copyright, you are effectively transferring your ownership. The person who receives the transfer of the copyright becomes the new owner. You may want to assign your copyright as an individual to your business, to add to your business’ IP portfolio .

A valid assignment of copyright must be made in writing, usually in the form of a deed or agreement. This agreement should include:

what you are assigning;
when this assignment will take place; and
any warranties, including guarantees that you are the sole owner of the copyright and you have the authority and capacity to assign the copyright.

It is also possible to assign copyright in material that is yet to exist or you are currently creating.

You will often want to include certain limitations or conditions in your licence or assignment agreement, so that you have more control over how others can use your intellectual property .

For example, you could limit the use of the copyright by:

geography (e.g. in Australia only);
a period (e.g. for 12 months only);
sub-license (e.g. prohibiting the licensee to allow others to use the material);
the application of the rights (e.g. to publish online only, and not in print); or
requirements for payment (e.g. flat-fee, periodic fee or on a royalty basis).

If someone uses your work beyond the terms of your agreement, they are doing so without your permission. This is likely to be considered copyright infringement and a breach of your intellectual property rights.

Where someone has infringed your copyright, you have a number of options.

For example, you may be entitled to:

an injunction to stop the licensee or assignee from continuing to use your work; or
seize the offending material from the licensee or assignee.

If you believe someone has infringed your copyright, or if you are not sure whether you may be operating outside of the terms of your agreement, it is best to speak to a copyright lawyer to work out what you should do next.

Key Takeaways

If you are planning to give permission to another to use your copyright, you will need to enter into a licence agreement. If you would prefer to transfer complete ownership of your copyright work now that you have built up its value, you can enter into an assignment agreement instead. You should write and draft these agreements carefully to give you as much control as you would like. If you have any questions or need assistance drafting an assignment or license agreement, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

Copyright is an automatically created intellectual property right. It exists in your creative works as soon as you create them.

When you licence your copyrighted work, you allow someone else to use it under certain conditions. When you assign your copyrighted work, you are effectively transferring ownership.

Yes, you can. For example, you can include restrictions on how, where or for how long the other party may use your work.

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Difference Between Licensing and Assignment Agreements

Introduction

An agreement can be defined as a meeting of the mind with the understanding and recognition of shared legal rights and responsibilities as to the precise acts or obligations which the parties agree to exchange; a mutual consent to do or refrain from doing anything; a deal. The arrangement is not necessarily compatible with the contract, since it can neglect the basic aspect of the contract, such as concern. Under Section 2(e) of the Indian Contract Act, 1872, the word “Agreement” is specified as every promise and every set of promises to be considered for each other is an agreement.” And an agreement enforceable by statute is a contract. The term “lease” is defined in accordance with Section 52 of the Indian Easement Act, 1882 as “Where a person grants to another person, or to a certain number of other persons, the right to do or to continue to do, in or on the immovable property of the grantor, anything which in the absence of that right, would be unlawful and that right does not amount to servitude or interest in the property, right i. Thus a Licensing Arrangement is a formal document between two parties, the Licensor and the Licensee, where one party (the Licensor) grants permission or authorization to use its property/intellectual property/brand name or trademark/patent technology to another party (the Licensee) under a specified set of terms and conditions.

Licensing Agreements

A licence arrangement is a written agreement between two parties in which the owner of the land allows another party to use the property in compliance with a particular set of conditions. Licensing arrangements or licensing agreements normally include the licensor and the licensee. Licensing agreements set out the conditions by which one party can use land owned by another party. Although the assets in question which include a variety of products, including land interests and personal belongings, licence arrangements are most commonly used for intellectual property purposes, such as patents and trademarks, as well as copyrights for printed materials and graphic arts. For eg, Nestle and Starbucks entered into a $7.15 billion coffee licencing agreement in May 2018. Nestle (the licensee) agreed to pay $7.15 billion in cash to Starbucks (the licensor) for exclusive rights to market Starbucks products (single-serve coffee, teas, bagged beans, etc.) around the world through Nestle’s worldwide distribution network. In addition, Starbucks can earn revenue from bottled coffees and teas offered by Nestle. The licence arrangement provided Starbucks with the opportunity to push brand awareness beyond its North American operations via Nestle’s distribution networks. For Nestle, the company acquired access to Starbucks products and a good brand reputation.

Types of Licensing Agreements

1. Exclusive Licensing Agreement – This form of arrangement establishes a special partnership between the licensor and the licensor. In such arrangements, no one except the designated licensee is entitled to exploit or use the licensed property within the duration of the agreement. The special characteristic of this form of arrangement is that even the licensor is exempt from the use or misuse of the approved property within the duration of the agreement. Copyright, patents and patent licences are the best examples of an exclusive licensing arrangement.

2. Non- Exclusive Licensing Agreement – In this form of arrangement, the licensor may issue a licence for the licensed property to any number of licensees and may also use the licensed property within the duration of the agreement.

3. Co- Exclusive Licensing Agreement – This form of arrangement requires more than one licensee to use and manage the licensed property, except this time the number of licensees is limited and their number is set at the time of entering into the agreement.

4. Sole Licensing Agreement – This form of the arrangement is somewhat similar to an exclusive licensing agreement, but the only exception is that the licensor retains the right to use the licensed property for the duration of the agreement.

Assignment Agreements

Contract assignment means that the contract and the property rights or responsibilities within the contract can be delegated to another party. As a general concept, a contract assignment may be included in a business contract. This form of provision is typical in negotiations with manufacturers or suppliers and in deals on intellectual property. Contract assignment is also used in contracts that give either side the option to pass its share of the contract to someone else in the future. Many assignment clauses enable all sides to commit to the assignment. An assignment can be made to anyone but is normally made to a subsidiary or a successor. A division is a company that is purchased by another business, while a descendant is a business that accompanies a transaction, takeover or merger.

Specifications in IP Assignment Agreement

1. Identification of the Parties -identifies the contract as an arrangement for the assignment of intellectual property and identifies the Assignor and the Assignor. The party transferring (‘assigning’) ownership interest shall be referred to as the Assignor, while the party obtaining it shall be referred to as the Delegated.

2. Obligations of the Parties -It is necessary to explicitly specify the obligations of the Parties in order to prevent any subsequent dispute as to the nature of those obligations; the precise meaning and extent of the obligations of the Parties depends on the form of intellectual property transferred; however, the principal duty of the Assignor is to transfer the rights of intellectual property.

3. Liability and warranty provisions -refers to the right of the assignor and the authority to enter into such an agreement; for example, to promise that he is the sole owner of all rights, title and equity in the IP and that the IP is legitimate and valid; that the transferred IP does not infringe the rights of third parties.

4. Compensation -A summary of the potential duties of each party if intellectual property is found to infringe the interests of a third party.

5. Applicable law and jurisdiction -The national law may prevail in the case of a conflict; it is also necessary to specify the appropriate court or the arbitration/mediation process to which the issue can be referred.

Licensing and Assignment Agreements

1. Interest Vested : One can licence the IP to another person or business to use as the owner of the IP. One and the other party negotiate on the terms of this usage. This is known as a licensing arrangement, and in this case, one is the licensor and the other party is the licensor. The terms of usage outlined in this Document should be agreed between oneself and the other party in order to protect the best interests. These terms govern the arrangement which includes: the limitation of the licensee’s usage to a single geographical location; and the payment of rights in the form of royalty.

In relation to a licence, an assignment agreement is a permanent transition of the IP. This transition is irrevocable and usually takes place as a sale or transfer from the owner (assignor) to the purchaser (assignee). If one is trying to pass control of the IP, he can ensure that this transfer is made in writing by means of an act or other formal agreement. These documents can pass current or potential IP rights in exchange for a lump-sum payment.

2. Method of Assignment : There is no requirement to do so in writing in licencing IP. Involved licences can often be invoked by the application of the rule. Example commissioned to produce patent content, and no formal arrangement is in effect. In this case, it is generally presumed that a tacit licence has been issued to the person who commissioned the material to be produced. There is a tacit licence on the payment that the commissioned party has an implicit licence for the copyrighted piece. It would then be implied that they will use it for the purposes of an unwritten arrangement.

The designation to an IP shall be permanent and irrevocable in the assignment agreement. Therefore in order to do this correctly, the task must be in writing.

3 . Notification: There is no notification mechanism for one IP licence. It is actually a private arrangement between the licensor and the licensee.

When the IP owner transfers an IP to the assignee, the assignee would have to file an application for transfer of ownership. If the Registrar collects the form with the assignment information, the assignee is legally the owner of the IP. Once this phase has been finished. The Registrar is then obligated to inform any other person involved.

4. Cost: Although the assignment gives the assignee sole ownership of the piece of land, the purchase of the assignment would normally cost more than the acquisition of the licence.

5. Enforceability – Another significant difference between the two of them is in the requirement to make them enforceable. It is a signatory that the assignment agreement is required to be recorded and filed in The United States Patent and trademark office assignment recordation branch. It is observed that the license is less stringent and thus it can be granted orally. The best-suited method is to have a negotiated and signed licensed, unlike assignment a record of the agreement is not mandatory.

1. Ashley Duggar, study: Contract Agreement, study.com, available at https://study.com/academy/lesson/assignment-of-rights-definition-and-involved-parties.html

2. Richard Sim, study: What is the assignment of Contracts, Nolo, available at https://www.nolo.com/legal-encyclopedia/assignment-of-contract-basics-32643.html

3. Gene Pierson, study: the difference between assignment and a license, Pierson Intellectual Property, available at http://piersonpatentlaw.com/what-is-the-difference-between-assignment-and-a-license/

4. Study: Assignment Agreement, Thrive IP, (31 st October 2017), available at https://thrive-ip.com/assignment-agreement-vs-license-agreement-ip-tool-box-series/

5. Gordon Haris, study: Basics of Patent Law, Lexology, (19 th April 2017), available at https://www.lexology.com/library/detail.aspx?g=c4f8c628-3d98-4bb9-966c-c9cf96679957

6. David Szostek, study: Difference between Assignments and licenses, Edward Allen Attorney of law, (8 th April , 2015), available at https://www.edwardallenlaw.com/difference-between-copyright-assignments-and-licenses/

7. Andrew Bloomenthal, study: Licensing Agreements, Investopedia,(3 rd September 2019), available at https://www.investopedia.com/terms/l/licensing-agreement.asp

Hegelian approach to intellectual property, what is arbitration: a beginner’s guide, types of awards in an arbitration, what is the salary of a partner: legal landscapes in the usa, uk, uae, and singapore, crafting an effective employee non-compete agreement: key clauses to keep in mind.

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The Difference Between Copyright Assignments and Licenses
A license is often preferred over an assignment when the copyright holder wishes to maintain and exercise some ownership control over the rights and how the licensee uses the copyright holder's rights. For example, a typical software license agreement is a copyright license agreement. The software copyright owner grants the user/licensee the ...
Copyright Licenses and Assignments (BitLaw)
A license (or more properly "an express license") is an agreement where the copyright owner maintains its ownership of the rights involved, but allows a third party to exercise some or all of those rights without fear of a copyright infringement suit. A license will be preferred over an assignment of rights where the copyright holder wishes to ...
Copyright Licensing Under the Law
A transfer of rights in a copyrighted work can be accomplished through a copyright license or an assignment. Generally, the difference between the two is that licenses allow a copyright owner to retain the rights while giving someone else a right to exercise some of them, whereas an assignment results in a copyright owner losing control over ...
Difference between License and Assignment of Copyright
The term license means the consent of the owner of the copyright to do any act which is exclusive to him as the owner. It is the authorization of an act, which without such authorization would result to an infringement. License may be non-exclusive or exclusive and may be limited in the territory, time and scope.
The Difference Between Assignment and License of Copyright
A license is a temporary or limited transfer of certain copyright rights. It can be made on an exclusive or non-exclusive basis, meaning the copyright owner can license the work to more than one ...
Assignments and Licensing of Intellectual Property
The key difference between a license and an assignment is that an assignment transfers rights away from the original copyright or patent holder. Whereas the licensor retains ownership of the intellectual property rights, the assignor gives up the rights entirely. In simplest terms, licensing is akin to rental, whereas an assignment operates as ...
Assignment of Copyrights & Legal Implications
The transfer of economic rights may be on an exclusive basis, which requires a written agreement, or a non-exclusive basis, which does not require a written agreement. Most commonly, this transfer is accomplished by assignment or license. Unlike a license in which the copyright owner maintains their ownership, an assignment is similar to a sale ...
What's the difference between Copyright and Licensing?
They're some of the exclusive rights of the copyright owner: the rights which the copyright owner gets as a result of ownership of the copyright. Licenses. A licence is a grant of a permission. They can be: granted verbally; granted in writing; implied by law; and/or; supported by contractual consideration or not; exclusive, non-exclusively or sole
Assignment And Licensing Of Copyright // Bytescare
Section 19 of the Indian Act delves into the intricacies of copyright assignment, outlining crucial guidelines to ensure its validity. According to this section, an assignment of copyright must fulfill certain requirements to be considered legally binding. Firstly, it must be in writing and bear the signature of the assignor or their authorised ...
Assignment of Copyright vs Exclusive License: Key Differences
The main difference between an assignment and an exclusive license is that an assignment transfers ownership of the copyright to the assignee, whereas an exclusive license grants a limited ...
Copyright License Agreements: A Comprehensive Guide
The copyright license's terms are outlined in the "Representations and Warranties" clause, which offers it "as is." The Licensee is guaranteed by the Licensor that they are the rightful owners of the copyrights related to particular goods and services, and that these copyrights are enforceable.
Assignment and Licensing of Copyrights under Copyrights Act
An assignment transfers an interest in and deals with copyright itself as provided under section 14 of the Act, but license does not convey the copyright but only grants a right to do something, which in absence of license would be unlawful. An assignment transfers title in copyright, a license merely permits certain things to be done by ...
Understanding the Difference Between a Transfer and a License
A transfer of copyright is a conveyance of ownership, much like the sale of personal property. When you transfer your entire interest in a copyrighted work, or one or more of your exclusive rights under copyright, you give up all claim to the right (s) you convey (except as explained in the Termination of a Transfer or a License section).
Assignment And Licensing Of Copyright
An assignment transfers an interest in and deals with copyright itself as provided under section 14 of the Act, but license does not convey the copyright but only grants a right to do something, which in absence of license would be unlawful. An assignment transfers title in copyright, a license merely permits certain things to be done by ...
Assignment And Licensing Of Copyrights
The owner of a work's copyright has the ability to assign his copyright to anyone else. As a result of the assignment, the assignee acquires all rights relating to the copyright of the assigned work. If the assignment period is not specified, it will be assumed to be five years from the date of assignment. In the event of a dispute over the ...
Exclusive vs Non-Exclusive Licenses
Writing Requirement. Exclusive licenses must be in writing, but nonexclusive licenses do not have to be in writing. Stay up-to-date with the latest copyright laws by joining the alliance —it's free. Understanding the difference between exclusive and nonexclusive licenses is critical when transferring a copyright. Read more these differences.
Licensing v. Assignment
India: Licensing v. Assignment. Indian law provides intellectual property protection in the form of copyright to the creators of original works of authorship such as literary works (including computer programs, compilations and tables including computer databases which may be stated in codes, words, schemes or even in any other form, including ...
Copyright Assignment vs Exclusive License
The main difference between an assignment and a license is who owns the copyright. In an assignment you give up ownership and in a license you retain it. When you have a copyright assignment, you give someone else your copyright (usually in exchange for money). Once you assign your copyright, you no longer own it.
Assigning and Licensing
Whether you are granting or getting a licence (clearance), it is always a good idea to record the details of the licence in writing. It is also a good idea to date the written record of the licence, and have it signed by both the licensor and licensee. Licence Terms. The document recording a licence would usually include the following:
Can I Assign or License Copyright in Australia?
In Australia, copyright ordinarily grants you, as the copyright owner, an exclusive right to the creative expression of your work. If you want to allow others to use or reproduce your copyrighted work, you may decide to license or assign your copyright for a specific purpose. This article sets out the differences between a copyright licence and ...
PDF Assignment and Licesing Under the Indian Copyright Act
Difference between Assignment and Licensing The terms assignment and licensing are not interchangeable. An assignment is different from license.11 The difference between two are important for various 7 Taraporevala V.J., L AW OF I NTELLECTUAL P ROPERTY, (Thomson Reuter's, 2nd Edition, 2013)
Difference between licensing and assignment in IP
The only difference between this type of agreement and an exclusive licensing agreement is that here the licensor retains the right to use the licensed property for the duration of the agreement. Assignment Agreement. An IP assignment, unlike a license, is a permanent deal of IP where the asset in question is permanently transferred to the ...
Difference Between Licensing and Assignment Agreements
4. Cost: Although the assignment gives the assignee sole ownership of the piece of land, the purchase of the assignment would normally cost more than the acquisition of the licence. 5. Enforceability - Another significant difference between the two of them is in the requirement to make them enforceable.

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