cases related to assignment of copyright

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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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Copyrights Supreme Court Cases

Article I, Section 8 of the Constitution provides that Congress can “promote the progress of…useful art” by granting authors exclusive rights to their “writings.” This clause forms the foundation of U.S. copyright law, although the scope of copyrighted subject matter now extends well beyond “writings.” To be copyrightable, a creative work generally must have at least some originality and must be fixed in a tangible medium of expression. The holder of a copyright possesses a bundle of rights. These include the rights to reproduce, distribute, and publicly perform or display the work, as well as the right to create “derivative works” based on the original copyrighted work.

To sue someone else for infringing their copyright, the author must have registered their work with the U.S. Copyright Office. Perhaps the most common defense to infringement is the fair use defense, which generally requires a court to consider four factors:

• The purpose and character of the use
• The nature of the copyrighted work
• The amount and significance of the copied portion
• The market effect on the copyrighted work

As technology has evolved, copyright infringement of audio and visual works has become rampant despite the risk of harsh penalties. In response, the Supreme Court and other courts have developed theories of secondary copyright infringement, such as contributory infringement. These allow a copyright owner to more effectively enforce their rights.

Below is a selection of Supreme Court cases involving copyrights, arranged from newest to oldest.

Author: Sonia Sotomayor

If an original work and secondary use share the same or highly similar purposes, and the secondary use is commercial, the first fair use factor is likely to weigh against fair use, absent some other justification for copying.

Author: John Roberts

Copyright protection does not extend to the annotations in the official annotated code of a state.

Author: Ruth Bader Ginsburg

A copyright claimant may commence an infringement lawsuit only when the Copyright Office registers a copyright. Upon registration of the copyright, the copyright owner can recover damages for infringement both before and after registration.

Author: Clarence Thomas

A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature can be perceived as a two- or three-dimensional work of art separate from the useful article, and it would qualify as a protectable pictorial, graphic, or sculptural work (on its own or fixed in another tangible medium of expression) if it were imagined separately from the useful article into which it is incorporated.

Author: Stephen Breyer

A streaming service infringed the public performance right by selling its subscribers a technologically complex service that allowed them to watch television programs over the Internet at about the same time as the programs were broadcast over the air.

The first sale doctrine applies to copies of a copyrighted work lawfully made abroad.

Author: David Souter

An entity that distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, going beyond mere distribution with knowledge of third-party action, is liable for the resulting acts of infringement by third parties using the device, regardless of the device's lawful uses.

Author: John Paul Stevens

The first sale doctrine endorsed in Section 109(a) of the Copyright Act is applicable to imported copies. (The first sale doctrine generally provides that the owner of a copy of a work may sell or dispose of the copy without getting permission from the copyright owner.)

The Seventh Amendment provides a right to a jury trial on all issues pertinent to an award of statutory damages in a copyright infringement case, including the amount.

The cognizable harm under the fourth factor of the fair use test is market substitution, rather than harm from criticism. A parody is unlikely to act as a substitute for the original work, since the two works usually serve different market functions.

Author: William Rehnquist

Prevailing plaintiffs and prevailing defendants in copyright infringement cases must be treated similarly regarding attorney fees, which may be awarded to prevailing parties only as a matter of the court's discretion.

Author: Sandra Day O’Connor

The originality requirement necessitates independent creation plus a modicum of creativity. Although a compilation of facts may possess the requisite originality because the author typically chooses which facts to include, in which order to place them, and how to arrange the data so that readers may use them effectively, copyright protection extends only to those components of the work that are original to the author.

Assignees of the right to produce a derivative work or some other portion of the renewal rights hold nothing but an unfulfilled and unenforceable expectancy if the author dies before the renewal period, unless the assignees secure a transfer of the renewal rights from the author's statutory successor.

Author: Thurgood Marshall

A creator was an independent contractor when he engaged in a skilled occupation, supplied his own tools, worked in a separate workplace, was retained for a short period of time, had absolute freedom to decide when and how long to work, and had total discretion in hiring and paying assistants, among other factors. (This case concerned whether a creative work was a work for hire.)

Generally, the author's right to control the first public appearance of their un-disseminated expression will outweigh a claim of fair use.

Congress did not intend to draw a distinction between authorizations to prepare derivative works that are based on a single direct grant and those that are based on successive grants.

The sale of copying equipment, like the sale of other articles of commerce, does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes, or is merely capable of substantial non-infringing uses.

Author: Potter Stewart

The reception of a radio broadcast of a copyrighted musical composition is not copyright infringement when the copyright owner has licensed the broadcaster to perform the composition publicly for profit.

Author: Warren Burger

The Constitution does not expressly or by inference vest all power to grant copyright protection exclusively in the federal government.

Author: Stanley Reed

Artistic articles are protected in form, but not their mechanical or utilitarian aspects.

Author: Mahlon Pitney

One who gathers news at pains and expense, for the purpose of lucrative publication, may be said to have a quasi-property in the results of their enterprise as against a rival in the same business, and the appropriation of those results at the expense and to the damage of one and for the profit of the other is unfair competition, against which equity will afford relief.

Author: Oliver Wendell Holmes, Jr.

The performance of a copyrighted musical composition in a restaurant or hotel without charge for admission to hear it but as an incident of other entertainment for which the public pays infringes the public performance right.

Author: William Rufus Day

The sole right to vend granted by federal copyright law does not secure to the owner of the copyright the right to qualify future sales by their vendee or to limit or restrict such future sales at a specified price.

The least pretentious picture has more originality in it than directories, which may be copyrighted.

Author: Henry Billings Brown

When there is no evidence that the publishers were the assignees or acted as the agents of the author for the purpose of taking out copyright, the copyright entry of a magazine will not validate the copyright entry subsequently made under a different title by the author of a portion of the contents of the magazine.

Author: Samuel Freeman Miller

Congress can confer copyright protection for photographs that are representations of original intellectual conceptions.

Author: Joseph Bradley

A claim to the exclusive property in a peculiar system of bookkeeping cannot be maintained by the author of a treatise in which that system is exhibited and explained.

Author: John McLean

No reporter has or can have any copyright in the written opinions delivered by the Supreme Court, and the Justices cannot confer on any reporter any such right.

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Published By Stanford Copyright and Fair Use Center

Summaries of fair use cases.

The best way to understand the flexible principle of fair use is to review actual cases decided by the courts. Below are summaries of a variety of fair use cases.

Ignore Heading – Content

Cases involving text.

• Fair use. Publisher Larry Flynt made disparaging statements about the Reverend Jerry Falwell on one page of Hustler magazine. Rev. Falwell made several hundred thousand copies of the page and distributed them as part of a fund-raising effort. Important factors: Rev. Falwell’s copying did not diminish the sales of the magazine (since it was already off the market) and would not adversely affect the marketability of back issues. (Hustler Magazine, Inc. v. Moral Majority, Inc., 606 F.Supp. 1526 (C.D. Cal., 1985).)
• Fair use. A biographer of Richard Wright quoted from six unpublished letters and ten unpublished journal entries by Wright. Important factors: No more than 1% of Wright’s unpublished letters were copied and the purpose was informational. (Wright v. Warner Books, Inc., 953 F.2d 731 (2d Cir. 1991).)
• Fair use (mostly). In a case alleging 75 instances of infringement in an educational setting, a district court, proposing a fair use standard based on less than 10% of a book, determined that 70 instances were not infringing. On appeal, the Eleventh Circuit rejected the 10% standard and emphasized the importance of a flexible case-by-case fair use analysis. The case was remanded to the district court which, in 2016, found the majority of instances to be fair use. Important factors: On remand, the second factor (the scholarly nature of the work) and the fourth factor (impact of the use on the market value) weighed in favor of fair use. Cambridge University Press v. Patton, 769 F.3d 1232 (11th Cir. Ga. 2014).
• Fair use. A district court ruled that libraries that provided a search engine company (Google) with books to scan were protected by fair use when the libraries later used the resulting digital scans for three purposes: preservation, a full-text search engine, and electronic access for disabled patrons who could not read the print versions. On appeal, the Second Circuit affirmed fair use as to the full-text database (“a quintessentially transformative use”) and as to use of text in formats accessible to print-disabled people (although not a transformative use, it is still considered a fair use based on the Betamax decision), but remanded the issue of fair use for long-term preservation of books. Important factors: As to the full-text database and disabled-access, the Court of Appeals did not find any evidence of financial harm. The Author’s Guild v. Hathitrust, 755 F.3d 87 (2d Cir. 2014).
• Fair use. A news organization (Bloomberg) tapped into an earnings report phone call made by executives of a foreign corporation (Swatch) to 132 analysts, and posted a recording and transcript of the phone call. Important factors: Bloomberg’s publication of the call was analogous to news reporting (publication of such calls is mandatory for American corporations). Because of that newsworthy purpose, a transformative use was not required. Further, the posting of the entire recording was necessary to fulfill this newsworthy purpose. The Second Circuit stated, “Bloomberg’s overriding purpose here was not to “scoop” Swatch or “supplant the copyright holder’s commercially valuable right of first publication,” but rather simply to deliver newsworthy financial information to American investors and analysts.” Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P. 742 F.3d 17 (2d Cir. 2014).
• Fair use. The black comedy, Hand to God, features the famed Abbott and Costello routine “Who’s on First?” The routine is spoken by a repressed character, whose hand puppet persona mocks him for pretending to be the author of the routine. Important factors: Though the use of the routine in the movie and play both elicit laughs, the play’s usage is transformative because the audience must be aware of the original in order to “get the joke.” TCA Television Corp. v. McCollum, No. 15 Civ. 4325 (S.D. N.Y. Dec. 17, 2105).
• Not a fair use. The Nation magazine published excerpts from ex-President Gerald Ford’s unpublished memoirs. The publication in The Nation was made several weeks prior to the date Mr. Ford’s book was to be serialized in another magazine. Important factors: The Nation’s copying seriously damaged the marketability of Mr. Ford’s serialization rights. ( Harper & Row v. Nation Enters., 471 U.S. 539 (1985).)
• Not a fair use. A biographer paraphrased large portions of unpublished letters written by the famed author J.D. Salinger. Although people could read these letters at a university library, Salinger had never authorized their reproduction. In other words, the first time that the general public would see these letters was in their paraphrased form in the biography. Salinger successfully sued to prevent publication. Important factors: The letters were unpublished and were the “backbone” of the biography—so much so that without the letters the resulting biography was unsuccessful. In other words, the letters may have been taken more as a means of capitalizing on the interest in Salinger than in providing a critical study of the author. ( Salinger v. Random House, 811 F.2d 90 (2d Cir. 1987).)
• Not a fair use. An author copied more than half of an unpublished manuscript to prove that someone was involved in the overthrow of the Iranian government. Important factors: A substantial portion was taken (half of the work) and the work had not been published yet. ( Love v. Kwitny , 772 F.Supp. 1367 (S.D. N.Y., 1989).)
• Not a fair use. A company published a book entitled Welcome to Twin Peaks: A Complete Guide to Who’s Who and What’s What , containing direct quotations and paraphrases from the television show Twin Peaks, as well as detailed descriptions of plots, characters, and setting. Important factors: The amount of the material taken was substantial and the publication adversely affected the potential market for authorized books about the program. ( Twin Peaks v. Publications Int’l, Ltd., 996 F.2d 1366 (2d Cir. 1993).)
• Not a fair use. A company published a book of trivia questions about the events and characters of the Seinfeld television series. The book included questions based upon events and characters in 84 Seinfeld episodes and used actual dialog from the show in 41 of the book’s questions. Important factors: As in the Twin Peaks case, the book affected the owner’s right to make derivative Seinfeld works such as trivia books. ( Castle Rock Entertainment, Inc. v. Carol Publ. Group , 150 F.3d 132 (2d Cir. 1998).)
• Not a fair use. In a case involving the author J.D. Salinger, an author wrote a book in which a character known as Mr. C was allegedly modeled after the character of Holden Caulfield, from Salinger’s The Catcher in the Rye . After Salinger sued, the sequel’s author claimed that his work was a parody, an argument rejected by the district court. The court determined that fair use would not succeed as a defense and granted Salinger’s request for a preliminary injunction. (The Second Circuit Court of Appeals agreed with the fair use analysis but reversed the case regarding the standard used for the preliminary injunction.) Important factors: Aging the character and placing him in the present day does not add something new, particularly since the character’s personality remains intact as derived from the original work. ( Salinger v. Colting , 641 F.Supp.2d 250 (S.D. N.Y. 2009).)
• Not a fair use. Although the creation of a Harry Potter encyclopedia was determined to be “slightly transformative” (because it made the Harry Potter terms and lexicons available in one volume), this transformative quality was not enough to justify a fair use defense. Important factors: An important factor in the court’s decision was the extensive verbatim use of text from the Harry Potter books. ( Warner Bros. Entertainment, Inc. v. RDR Books , 575 F.Supp.2d 513 (S.D. N.Y. 2008).)

Artwork, Visual Arts, and Audiovisual Cases

• Fair use. In a lawsuit commonly known as the Betamax case, the Supreme Court determined that the home videotaping of a television broadcast was a fair use. This was one of the few occasions when copying a complete work (for example, a complete episode of the Kojak television show) was accepted as a fair use. Evidence indicated that most viewers were “time-shifting” (taping in order to watch later) and not “library building” (collecting the videos in order to build a video library). Important factors: The Supreme Court reasoned that the “delayed” system of viewing did not deprive the copyright owners of revenue. ( Universal City Studios v. Sony Corp., 464 U.S. 417 (1984).)
• Fair use. The makers of a movie biography of Muhammad Ali used 41 seconds from a boxing match film in their biography. Important factors: A small portion of film was taken and the purpose was informational. ( Monster Communications, Inc. v. Turner Broadcasting Sys. Inc. , 935 F.Supp. 490 (S.D. N.Y., 1996).)
• Fair use. A search engine’s practice of creating small reproductions (“thumbnails”) of images and placing them on its own website (known as “inlining”) did not undermine the potential market for the sale or licensing of those images. Important factors: The thumbnails were much smaller and of much poorer quality than the original photos and served to help the public access the images by indexing them. ( Kelly v. Arriba-Soft , 336 F.3d. 811 (9th Cir. 2003).)
• Fair use. It was a fair use, not an infringement, to reproduce Grateful Dead concert posters within a book. Important factors: The Second Circuit focused on the fact that the posters were reduced to thumbnail size and reproduced within the context of a timeline. ( Bill Graham Archives v. Dorling Kindersley Ltd. , 448 F.3d 605 (2d Cir. 2006).)
• Fair use. A Google search engine did not infringe a subscription-only website (featuring nude models) by reproducing thumbnails. Important factors: The court of appeals aligned this case with Kelly v. Arriba-Soft (above), which also permitted thumbnails under fair use principles. ( Perfect 10, Inc. v. Amazon.com, Inc. , 508 F.3d 1146 (9th Cir. 2007).)
• Fair use. A publisher of monster magazines from the 1950s, ’60s, and ’70s sued the creator and publisher of a book, Famous Monster Movie Art of Basil Gogos . (Gogos created covers for the magazines.) The book publisher had obtained licenses from the artist directly, but not from the magazine publisher who claimed copyright under work-made-for-hire principles. The district court determined that the use was transformative. Important factors: The use was for a biography/retrospective of the artist, not simply a series of covers of magazines devoted to movie monsters. In addition, the magazines were no longer in print, and the covers amounted to only one page of the magazine, not the “heart” of the magazine. ( Warren Publishing Co. v. Spurlock d/b/a Vanguard Productions , 645 F.Supp.2d 402, (E.D. Pa., 2009).)
• Fair use. A seven-second clip from the Ed Sullivan TV show was used in a staged musical history (The Jersey Boys) based on the career of the musical group, the Four Seasons. Important factors: The use was transformative. (“Being selected by Ed Sullivan to perform on his show was evidence of the band’s enduring prominence in American music,” the judge wrote in the ruling. “By using it as a biographical anchor, [the defendant] put the clip to its own transformative ends.”) Further, the use caused no financial harm to the copyright owners of the show. SOFA Entertainment, Inc. v. Dodger Productions, Inc. , No. 2:08-cv-02616 (9th Cir. Mar. 11, 2013).
• Fair use. The painter, Richard Prince, created a collage using—in one collage—35 images from a photographer’s book. The artist also used 28 of the photos in 29 additional paintings. In some instances the full photograph was used while in others, only the main subject of the photo was used. Important factors: The Second Circuit Court of Appeals held that to qualify as a transformative use, Prince’s work did not have to comment on the original photographer’s work (or on popular culture). The Court of Appeals concluded that 25 of Prince’s artworks qualified as fair use and remanded the case to determine the status of the remaining five artworks. Cariou v. Prince , U.S. Court of Appeals for the 2nd Circuit, No. 11-1197.
• Fair use. The re-creation of three scenes from the film Deep Throat was a fair use when made for a biographical film about actress Linda Lovelace. Important factors: The re-created scenes were used in a non-pornographic film biography (with no nudity) about an actress who ultimately railed against pornography. This use illustrated a strong transformative purpose and demonstrated that the copyright owner of Deep Throat would be unlikely to lose revenue from this non-pornographic use. Arrow Productions, LTD v. The Weinstein Company LLC , 2014 WL 4211350 (S.D. N.Y. Aug. 25, 2014).
• Fair Use. A modified photo of a Wisconsin mayor was reproduced on a Tshirt and used to raise money for an event opposed by the mayor. Important factors: The Seventh Circuit was primarily persuaded by the level of alteration—the photo was posterized, background removed, text added, and a lime green outline featuring the mayor’s smile remained. The resulting image of the mayor, the court stated, “can’t be copyrighted.” Kienitz v. Sconnie Nation LLC , 766 F.3d 756 (7th Cir. 2014).
• Fair use. A TV clipping database made it possible for users to search news broadcasts using keywords, then view a portion of the curated news clip containing those keywords. The court determined that the storage, indexing, excerpting, and reproduction of the clips was a fair use. Important factors: The district court emphasized the purpose of the database, which was unique and transformative. The court also dismissed the “very small possible impact” of lost revenues. Fox News v. TVEYES, Inc. , 43 F. Supp. 3d 379 (S.D. N.Y. 2014).
• Fair use. A disgruntled former commercial tenant (Chevaldina) used an unflattering photo of her former landlord (Katz) in 25 critical blog posts. Katz purchased the copyright in the photo and sued Chevaldina for infringement. Important factors: The use was considered noncommercial, and transformative because, “in the context of the blog post’s surrounding commentary, Chevaldina used Katz’s purportedly ‘ugly’ and ‘compromising’ appearance to ridicule and satirize his character.” Katz v. Chevaldina , No. 14-14525 (11th Cir. 2015).
• Fair use. In a battle over the use of viral videos, a humor program, Equals Three , reproduced viral videos from another source, Jukin Video, and commented on them, often reproducing the clips in their entirety. Important factors: The court determined that in the case of 18 of the 19 videos, Equals Three used no more than necessary of each video for purposes of its commentary; and that the jokes and commentary added something new to the viral videos. Equals Three, LLC v. Jukin Media, Inc. , 14-09041 (C.D. Cal. Oct. 13, 2015).
• Fair use. An author created a parody of the surfer-thriller Point Break. The court found the work to be sufficiently transformative to justify fair use of the underlying movie materials. At issue in this case was the more novel question of whether the resulting parody could itself be protected under copyright. Important factors: The Second Circuit held that if the author of the unauthorized work provides sufficient original material and is otherwise qualified under fair use rules, the resulting work will be protected under copyright. Keeling v. Hars , No. 13-694 (2d Cir. 2015).
• Not a fair use. A television news program copied one minute and 15 seconds from a 72-minute Charlie Chaplin film and used it in a news report about Chaplin’s death. Important factors: The court felt that the portions taken were substantial and part of the “heart” of the film. ( Roy Export Co. Estab. of Vaduz v. Columbia Broadcasting Sys., Inc. , 672 F.2d 1095, 1100 (2d Cir. 1982).)
• Not a fair use. A television station’s news broadcast used 30 seconds from a four-minute copyrighted videotape of the 1992 Los Angeles beating of Reginald Denny. Important factors: The use was commercial, took the heart of the work, and affected the copyright owner’s ability to market the video. ( Los Angeles News Service v. KCAL-TV Channel 9 , 108 F.3d 1119 (9th Cir. 1997).)
• Not a fair use. A poster of a “church quilt” was used in the background of a television series for 27 seconds. Important factors: The court was influenced by the prominence of the poster, its thematic importance for the set decoration of a church, and the fact that it was a conventional practice to license such works for use in television programs. ( Ringgold v. Black Entertainment Television, Inc. , 126 F.3d 70 (2d Cir. 1997).)
• Not a fair use. The U.S. Postal Service (USPS) licensed the use of a photo­graph of the Korean War veterans’ memorial sculpture for a postage stamp, but failed to obtain permission from the sculptor who held copyright in the underlying three-dimensional work. The U.S. Court of Appeals for the Federal Circuit held that the use of the underlying sculpture depicted in the photograph was not permitted under fair use principles. Important factors: It was not enough to transfer the work from three dimensions to two dimensions (despite the creative use of photography and snow in conjunction with the photos). ( Gaylord v. United States , 595 F.3d 1364 (Fed. Cir. 2010).)

Internet Cases

• Fair use. The Washington Post used three brief quotations from Church of Scientology texts posted on the Internet. Important factors: Only a small portion of the work was excerpted and the purpose was for news commentary. ( Religious Technology Center v. Pagliarina , 908 F.Supp. 1353 (E.D. Va., 1995).)
• Fair use. Displaying a cached website in search engine results is a fair use and not an infringement. A “cache” refers to the temporary storage of an archival copy—often a copy of an image of part or all of a website. With cached technology it is possible to search Web pages that the website owner has permanently removed from display. An attorney/author sued Google when the company’s cached search results provided end users with copies of copyrighted works. The court held that Google did not infringe. Important factors: Google was considered passive in the activity—users chose whether to view the cached link. In addition, Google had an implied license to cache Web pages since owners of websites have the ability to turn on or turn off the caching of their sites using tags and code. In this case, the attorney/author knew of this ability and failed to turn off caching, making his claim against Google appear to be manufactured. ( Field v. Google Inc. , 412 F.Supp.2d 1106 (D. Nev., 2006).)
• Fair use. A real estate blog copied the first eight sentences from a news­paper article. Important factors. The blogger had copied only eight sentences and had not copied the “valuable” section (the commentary included with the article), and the court did not believe that the copying would affect the market for the article (the third and fourth fair use factors). Righthaven LLC v. Realty One Group, Inc. , No. 2:10-cv-LRH-PAL, 2010 WL 4115413 (D. Nev., October 19, 2010).
• Fair use. A nonprofit organization posted a newspaper article about police discrimination on its website. The newspaper assigned its right in the article to a third party, Righthaven, which filed the lawsuit. Important factors. The court’s reasoning was influenced by the fact that Righthaven had acquired the copyright and was not in the newspaper business (it appeared to be in the “litigation business”). For that reason, the court reasoned that the nonprofit’s use was transformative because its purpose was to educate the public about immigration issues, whereas Righthaven had no such purpose for the article (because it was not in the news business). And also, because Righthaven was not in the news business, it could show no harm from the defendant’s dissemination of the article. Righthaven LLC v. JAMA , No. 2:2010-cv-01322, 2011 WL 1541613 (D. Nev., April 22, 2011).
• Fair use. A user of an online political forum posted a five-sentence excerpt from a newspaper article with a link back to the newspaper’s website. Important factors: The use was quantitatively small and did not cause the newspaper financial harm. In addition, the online political forum was permitted to use the safe harbor provisions of the Digital Millennium Copyright Act. Righthaven LLC v. Democratic Underground , No. 2:10-cv-01356-RLH (GWF).
• Fair use. Google made digital copies of millions of books submitted to it by libraries, scanned them and made them available to search through its Google Books service, so that users could—for free—identify relevant words, terms, or snippets from the scanned text. Google also allowed participating libraries to retain the copies they submitted. Important factors: Google’s digitization was deemed a transformative use because it provided limited information about the books without allowing users more complete access to the works. Authors Guild v. Google, Inc. , No. 13-4829 (2d Cir. 2015).

Ignore Heading – Sub table content

• Not a fair use. Several individuals without church permission posted entire publications of the Church of Scientology on the Internet. Important factors: Fair use is intended to permit the borrowing of portions of a work, not complete works. ( Religious Technology Center v. Lerma , 40 U.S.P.Q.2d 1569 (E.D. Va., 1996).)

Music Cases

• Fair use. A person running for political office used 15 seconds of his opponent’s campaign song in a political ad. Important factors: A small portion of the song was used and the use was for purposes of political debate. ( Keep Thomson Governor Comm. v. Citizens for Gallen Comm. , 457 F.Supp. 957 (D. N.H., 1978).)
• Fair use. A television film crew, covering an Italian festival in Manhattan, recorded a band playing a portion of a copyrighted song “Dove sta Zaza.” The music was replayed during a news broadcast. Important factors: Only a portion of the song was used, it was incidental to the news event, and it did not result in any actual damage to the composer or to the market for the work. ( Italian Book Corp., v. American Broadcasting Co. , 458 F.Supp. 65 (S.D. N.Y., 1978).)
• Not a fair use. Downloading songs is not a fair use. A woman was sued for copyright infringement for downloading 30 songs using peer-to-peer file sharing software. She argued that her activity was a fair use because she was downloading the songs to determine if she wanted to later buy them. Important factors: Since numerous sites, such as iTunes, permit listeners to sample and examine portions of songs without downloading, the court rejected this “sampling” defense. ( BMG Music v. Gonzalez , 430 F.3d 888 (7th Cir. 2005).)
• Not a fair use. A defendant in a music file sharing case could not claim a fair use defense since he had failed to provide evidence that his copying of music files involved any transformative use (an essential element in proving fair use). Important factors: The court held that the defendant was confusing “‘fairness’ and ‘fair use’—in the end, fair use is not a referendum on fairness in the abstract …” ( Capitol Records Inc. v. Alaujan , 2009 WL 5873136 (D. Mass., 7/27/09).)

Parody Cases

• Fair use. Comedians on the late-night television show Saturday Night Live parodied the song “I Love New York” using the words “I Love Sodom.” Only the words “I Love” and four musical notes were taken from the original work. Important factors: The Saturday Night Live version of the jingle did not compete with or detract from the original song. ( Elsmere Music, Inc. v. National Broadcasting Co. , 482 F.Supp. 741 (S.D. N.Y.), aff’d 632 F.2d 252 (2d Cir. 1980).)
• Fair use. The composers of the song “When Sunny Gets Blue” claimed that their song was infringed by “When Sonny Sniffs Glue,” a 29-second parody that altered the original lyric line and borrowed six bars of the song. A court determined this parody was excused as a fair use. Important factors: Only 29 seconds of music were borrowed (not the complete song). ( Fisher v. Dees , 794 F.2d 432 (9th Cir. 1986).) (Note: As a general rule, parodying more than a few lines of a song lyric is unlikely to be excused as a fair use. Performers such as Weird Al Yankovic, who earn a living by humorously modifying hit songs, seek permission of the songwriters before recording their parodies.)
• Fair use. The rap group 2 Live Crew borrowed the opening musical tag and the words (but not the melody) from the first line of the song “Pretty Woman” (“Oh, pretty woman, walking down the street”). The rest of the lyrics and the music were different. Important factors: The group’s use was transformative and borrowed only a small portion of the original song. The 2 Live Crew version was essentially a different piece of music; the only similarity was a brief musical opening part and the opening line. (Note: The rap group had initially sought to pay for the right to use portions of the song but were rebuffed by the publisher, who did not want “Pretty Woman” used in a rap song.) ( Campbell v. Acuff-Rose Music , 510 U.S. 569 (1994).)
• Fair use. A movie company used a photo of a naked pregnant woman onto which it superimposed the head of actor Leslie Nielsen. The photo was a parody using similar lighting and body positioning of a famous photograph taken by Annie Leibovitz of the actress Demi Moore for the cover of Vanity Fair magazine. Important factors: The movie company’s use was transformative because it imitated the photographer’s style for comic effect or ridicule. ( Leibovitz v. Paramount Pictures Corp. , 137 F.3d 109 (2d Cir. N.Y. 1998).)
• Fair use. A pro-life video organization created two antiabortion videos by borrowing video clips from a pro-choice video and juxtaposing them with actual abortion footage. Important factors: The court characterized the pro-life videos as parodies despite the fact they did not meet the classic definition of a parody—something that humorously mimics or ridicules another’s work. In a unique holding, the court held that a parody need not be humorous, but may merely comment on, or criticize the original. Northland Family Planning Clinic v. Center for Bio-Ethical Reform , No. SACV 11-731 JVS (C.D. Cal., June 15, 2012).
• Not a fair use. An artist created a cover for a New Yorker magazine that presented a humorous view of geography through the eyes of a New York City resident. A movie company later advertised their film Moscow on the Hudson using a similar piece of artwork with similar elements. The artist sued and a court ruled that the movie company’s poster was not a fair use. Important factors: Why is this case different from the previous case involving the Leslie Nielsen/Annie Leibovitz parody? In the Leibovitz case, the use was a true parody, characterized by a juxtaposition of imagery that actually commented on or criticized the original. The Moscow on the Hudson movie poster did not create a parody; it simply borrowed the New Yorker’s parody (the typical New York City resident’s geographical viewpoint that New York City is the center of the world). ( Steinberg v. Columbia Pictures Industries, Inc. , 663 F.Supp. 706 (S.D. N.Y., 1987).)
• Not a fair use. An author mimicked the style of a Dr. Seuss book while retelling the facts of the O.J. Simpson murder trial in The Cat NOT in the Hat! A Parody by Dr. Juice. The Ninth Circuit Court of Appeals determined that the book was a satire, not a parody, because the book did not poke fun at or ridicule Dr. Seuss. Instead, it merely used the Dr. Seuss characters and style to tell the story of the murder. Important factors: The author’s work was nontransformative and commercial. ( Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc. , 109 F.3d 1394 (9th Cir. 1997).)

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Copyright for Students: US Supreme Court Cases

• Copyright: Finding the Balance
• Copyright Basics
• Sample Permission Letters
• Copyright Warnings & Notices
• Copyright Resources
• US Supreme Court Cases
• Codes of Best Practices in Fair Use
• Copyright Term & Public Domain
• DMCA Statement of Compliance
• TMU Intellectual Property Handbook

Georgia State University Copyright Lawsuit

• District Court: Final Order (2020) Cambridge v. Becker more... less... Case 1:08-cv-01425-ODE Document 583 Filed 09/30/20

Supreme Court Copyright Cases

List of United States Supreme Court copyright case law

From Wikipedia, the free encyclopedia: https://en.wikipedia.org/wiki/List_of_United_States_Supreme_Court_copyright_case_law

This is an incomplete list of  Supreme Court of the United States  cases in the area of  copyright law .

Further research:

Raza Panjwani,  "Supreme Court Copyright Index"  (last visited May 26, 2014) - A website of Supreme Court copyright jurisprudence, organized by justice

U.S. Supreme Court Copyright Cases

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• Next: Codes of Best Practices in Fair Use >>
• Last Updated: Jan 16, 2024 4:43 PM
• URL: https://masters.libguides.com/copyright

Marquette University Law School Faculty Blog

The Copyright Act: Standing and “Right to Sue” Assignments

• Post author: Emil Ovbiagele
• Post published: November 1, 2017
• Post category: Intellectual Property Law / Public
• Post comments: 5 Comments

Enforcement Action Rights under the Copyright Act

According to the federal Copyright Act, only “[t]he legal or beneficial owner of an exclusive right under a copyright is entitled , subject to the requirements of section 411, to institute an action for any infringement of that particular right committed while he or she is the owner of it.”  17 U.S.C. § 501(b) (emphasis added).

The Copyright Act lists the following exclusive rights of the owner of a copyright:

(1) to reproduce the copyrighted work in copies or phonorecords; (2) to prepare derivative works based upon the copyrighted work; (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; (4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

17 U.S.C. § 106. But “a person holding a non-exclusive license is not entitled to complain about any alleged infringement of the copyright.”  HyperQuest, Inc. v. N’Site Sols., Inc., 632 F.3d 377, 382 (7th Cir. 2011).  In order words, to have the requisite standing to sue, a plaintiff must exclusively own one of the enumerated rights listed above.  Consequently, enforcement actions are limited to the specific rights exclusively owned.   For example, a plaintiff who owns the exclusive rights to perform a literary work can only sue to enforce that specific rights. Such a plaintiff, cannot go after alleged infringers making unauthorized copies of the literary work.

Bare “Right to Sue” Assignments

Most federal courts have concluded that Congress did not intend for the “right to sue” to be a separate right because it was not included as a divisible right under the Act.  The Copyright Act does not contemplate any transfer other than an ownership interest along with the enumerated six exclusive rights.

In Righthaven v. Democratic Underground , the imprudence of allowing assignments of such bare rights were made clear. 791 F. Supp. 2d 968 (D. Nev. 2011) In 2011, Righthaven LLC sued Democratic Underground for a five-sentence excerpt of a Las Vegas Review Journal news story that a user posted on the forum, with a link back to the Journal’s website. At the same time this lawsuit was going on, Righthaven had developed quite the litigious reputation. They brought over 200 similar suits.

But Righthaven never created, produced, or distributed any content.  Instead, all they did was scour the internet looking for Review-Journal stories posted on blogs and online forums. They brought these suits under a “right to sue” assignment. Righthaven never actually owned an exclusive right to any of the copyrighted materials.  They were copyright trolls.

The court stated “Righthaven and Stephens Media have attempted to create a cottage industry of filing copyright claims, making large claims for damages and then settling claims for pennies on the dollar, with defendants who do not want to incur the costs of defending the lawsuits.” Righthaven, LLC v. Democratic Underground, LLC , No. 2:10-cd-1356-RLH-GWF (D. Nev. Apr. 14, 2011), ECF No. 94.  Judges who are confronted with these bare “right to sue” cases usually award significant attorney fees to the prevailing defendants, even at the motion to dismiss phase.

Parties intending to convey enforceable exclusive rights to a copyright must shore up their agreements to make the intent clear. And merely sprinkling the “exclusive license” lingo within a licensing or assignment agreement doesn’t suffice. See HyperQuest, Inc. v. N’Site Sols., Inc. 632 F.3d 377 (7th Cir. 2011).  Thus, an exclusive right must be exclusive. An assignment is not exclusive if some form of right to limited use and distribution to other third parties is reserved.

In the copyright world, the “substance and effect” of any written assignment must reflect a true, even if temporary, transfer of complete ownership of a copyright interest.  Overly aggressive plaintiffs who ignore this simple but important axiom of copyright law, do so at their own peril.

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The scrabulous lawsuit: heading toward default, an election day primer for wisconsin voters*, last poll before election finds obama and baldwin holding leads, this post has 5 comments.

I have an overly aggressive defendant who has lots of money, is an internet pirate, has no exclusive or beneficial rights and want to be a defendant real bad!

Rita Hutchens

I represent the exclusive owner of the legal rights in a literary work that has been infringed. My client who is resident abroad intends to give me a Power of Attorney to institute legal proceedings against the infringer. Does my client have the right to do this ?

I had a registered copyright to the software I created for 15 years, but a federal judge found (and the Ninth Circuit affirmed) that my company (no longer under my control) owned my copyrights even though there was no written agreement transferring ownership. See Johnson v. Storix (2017). Storix recorded the judgment with the Copyright Office, but not the actual ownership transfer because it has no written assignment. A federal court has no authority to invalidate a copyright registration or order a copyright transfer except involving common law (and I’m not bankrupt, divorced or dead.)

How can Storix enforce any rights under the Copyright Act if the copyright is still registered to me? Does the Ninth Circuit ruling establish Storix as the copyright owner in other circuits, or would they defer to the 2018 Supreme Court decision in Fourth Estate v. Wallstreet.com requiring a valid registration before instituting an infringement action?

Serious issues, what really is copyright? And why would anybody want to copy other people’s way of thinking. I’ve never had to copyright nobody’s work. A person fails to be a leader but yet a follower. I’m not a business person and then again I lead my own actions. Thank you

Communication key word: The world fails to understand this. Take control of been yourself, trust yourself to do right with whoever you encounter. Thank you

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Understanding an assignment of copyright agreement

Did you know you can assign, or transfer, your copyright to someone? Find out what information to include in your agreement and how you can make sure your interests are protected.

Find out more about business management

by   Ronna L. DeLoe, Esq.

Ronna L. DeLoe is a freelance writer and a published author who has written hundreds of legal articles. She does...

Read more...

Updated on: November 24, 2023 · 3min read

Assignment of copyright

Copyright assignment contract, protecting the creator of the intellectual property, works for hire and copyright.

When you create intellectual property such as a book, poem, song, photograph, or painting, copyright laws give you the right to claim ownership of your creative work. Registering your copyright with the U.S. Copyright Office allows others to find out who owns the rights to your creation. As a copyright owner, you can also transfer, or assign, your copyright, as long as you follow the correct procedure.

Copyright assignment permits a third party, known as the assignee, to take ownership of the copyright from the owner, or assignor. The assignment must be done in writing to be valid. Although notarization isn't required, it's a good idea to have someone witness the assignor and assignee signing and dating the agreement. Transfer of ownership usually involves monetary exchange, although that's not a requirement.

Registering a copyright with the U.S. Copyright Office isn't a requirement for valid ownership, even in cases of copyright assignment. However, registering provides a way for third parties to discern who owns the copyright. Because you don't have to file the transfer, a short-form assignment contract is sufficient for filing. This document usually contains only limited details of the work you're assigning, including the copyright number (if applicable), the signatures of both parties, the signature of a witness if desired, and the date of the assignment.

Just like in any other contract, a copyright assignment should contain certain information , such as the amount of consideration, or money, being exchanged. When assigning your copyright, the other party should provide some amount of consideration. Contracts usually include the language “for other good and valuable consideration," and courts have held that even one dollar is acceptable. As long as each party to the contract is getting something in return and the contract is not made under duress or pressure, the contract is valid.

Likewise, as the owner of the copyright, you have the right to assign all or part of it. If you assign your entire copyright to the other party, you are giving up all of your rights to your own copyright. In the case of a book, for example, assigning only part of your copyright could mean:

• Assigning it to one party for use as a movie and to another for use as a television show
• Assigning one party the original version and another party a translated version
• Assigning rights to different types of books, such as an audiobook, a traditional print book, and an e-book
• A partial assignment for a limited duration, if you specify such in your agreement

Copyright laws protect you in case your work of intellectual property becomes famous or is worth money later on. While you can't get your copyright back for many years after your assignment unless the new owner consents otherwise, current copyright law allows you to terminate your copyright assignment after 35 years.

For example, songwriters who assigned their copyright to what are now legendary songs from the 1960s or 1970s can now recover the copyright to their songs, many of which have increased in value due to their use in commercials and television shows. The writer of "YMCA," a member of the Village People, successfully recovered his copyright by invoking his termination rights after the 35-year period.

If you're a freelancer who creates a work such as a poetry collection, you own the copyright of the poetry book and can assign the copyright, if you wish. If, however, you're employed by someone to write poems, either as an employee or as an independent contractor under their direction, your creation is sometimes called a work for hire .

Creation of intellectual property under a work-for-hire contract means that you don't own the copyright. Instead, whoever hired you owns it, and unless that person gives you permission to purchase or own the copyright, you cannot transfer it to anyone else.

The more control a client has over how and when you're creating the intellectual property, the more likely you're regarded as an employee rather than an independent contractor. An employer-employee relationship generally assures that the employer owns the copyright. If, on the other hand, you're an independent contractor and have more creative control over your project than an employee would have, then you're the copyright owner.

Because intellectual property is an extremely specialized area of the law, it's recommended that you use a copyright attorney or similar intellectual property specialist to assist in any assignments. You can start protecting your creative interests by registering your copyright .

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Library Guides

Copyright for researchers: case studies.

• Introduction
• Permissions and reuse
• Your Research
• Creative Commons
• Social Media
• Case Studies
• Further Help

Good practice case studies

This section includes a series of case studies based on real examples the University has dealt with, in order to explore some of the copyright and related issues that arise in relation to research. In many cases you will see that copyright is closely associated with obtaining ethical approval for your study and consent or release from the individual or organisation involved, so they understand what you wish to do with their content.

Case study: Using interview data and oral histories

This case study deals with the copyright issues associated with collecting data from participants through interviews. Interviews are often used in qualitative research in the social sciences, for example to collect attitudinal data. Interviews can also be used in historical research, for example as part of oral histories. Copyright is often not explicitly considered during interviews, however obtaining ethical approval and ensuring interview participants give consent, for example to be recorded, is vital. It is also important to be clear to the participants about confidentiality and how the participant will be either be attributed or anonymised. 

Arguably a recording (either video or audio) of an interview could qualify as a performance and the participant will own copyright in their words. It is usually enough to obtain consent for the recording to be made, and stored as part of the research process. Your consent form should also indicate if direct quotes will be used in any research outputs. It is usually not necessary to ask interviewees to assign copyright of a recording, provided the participant information sheet is clear about how the data will be managed, shared and published. 

However, in this case study, the researcher has decided to make further use of the recordings (which are oral histories), and they intend to use clips from the recordings in both an exhibition and public performance of the work. Therefore they have specifically addressed the issue of copyright in their consent form. This is to ensure it is clear who will own the resulting outputs of the research, (in this case the University of Westminster) and to ensure that they can be made available by the University in the future. In this instance the researcher has asked the participant for an assignment of copyright to allow them to publish and perform the resulting recording. Sample release or assignment forms can be obtained for researchers who wish to create recordings for exhibition or publication purposes from XXX . This is in addition to ensuring that consent is obtained from your participants as part of the ethical clearance process. 

Case study : Using images from archives or private individuals for publication or exhibition

Researchers in a wide variety of disciplines often collect data in the form of documents and unpublished material from archives or from private collections as part of their research. For example, historians may visit an archive to get access to diaries or letters from an individual they are researching. Alternatively, researchers in business or management studies may collect documents such as annual reports or internal memos from a company as part of undertaking research.  This case study explores the copyright issues associated with collecting images or documents from organisations or people in the course of research for a book publication. 

Similar to data obtained through interviews, you should be mindful that documents or images which you can often consult and / or copy as part of your non-commercial research, may need permission to reproduce for other purposes. For example, you will need permission if you subsequently decide to publish a book and wish to include any facsimile copies of a manuscript or photographs provided by an archive, or if you put together an exhibition based on your research. It will save time to enquire about copyright at the point of visiting the archives or obtaining the documents, particularly if you suspect you will want to publish or exhibit your work. Be aware that the reproduction of unpublished works of this nature may incur a fee from the rightsholder or from the archive. You should also check with the organisation or individual about how they wish to be credited for the use of their work. The inclusion of this type of content in PhD theses does not typically require permission, however again it is important to be clear when you are using archives or material collected from individuals, what you intend to do with any material you obtain for research purposes. You should also ensure you keep written records of any permissions obtained for publication purposes. In this case study the archive was happy to grant permission and for a small fee provided high resolution images of the archival material for inclusion in the book. They also indicated how they wished to be credited in the publication and this information was passed to the publisher. 

Case study: Artists on film video

Researchers in art, art history and media often may wish to copy or perform their own or third party content in interesting and novel ways that leads to some interesting copyright challenges. This case study deals with the creation of a documentary film that in addition to interviewing artists and other performers, also reproduces some of their work in the film, including paintings and sculptures. 

If you are making a film then copyright issues needed to be considered if you include significant amounts of content created by other people or organisations. This could be clips from other recordings, but also stills of artistic works. Works of architecture, sculptures and paintings on public display in the UK are subject to what is called ‘freedom of panorama’ which means while they are protected by copyright, you can take photos or record them without needing to obtain permission. However, you may be given access to works which are in private collections (i.e. not on public display) and here it is important to ensure consent is obtained for inclusion of the work. Some galleries and museums will have restrictions in place on filming on their premises, so you should check with the management of any organisation before filming, even if the space is open to the public.  If you are filming outside of the UK then be aware that the laws on freedom of panorama around the world do vary including some European countries (notably Italy and Sweden). You can find out more about Freedom of Panorama . 

This case includes a film being made of several artists, who are not only talking about their work but their art work appears in the film. The work includes paintings and sculptures that are held in a private collection. In the same way you might obtain permission to include an image in an exhibition or a publication, you may need to request permission to include artistic works in this documentary film, even though the artist is also appearing in the film and you might assume they are happy. Standard release forms can be be adapted for your specific purpose. In this case permission is needed to include the work in the film and to ensure that the artist is credited properly for their work. They may request you pay a fee to reproduce the work, but given they are being featured in the film this is unlikely. However, the release form should clarify matters and ensure you have all the required permissions needed from all parties before the film is made. 

• Standard Release form Image release form

Credits and disclaimer

Disclaimer : The guide in no way substitutes for formal legal advice. If you are in any doubt or require further information we recommend you consult the sources of further advice at the end of this guide. 

• << Previous: Open Data
• Next: Further Help >>
• Last Updated: Oct 16, 2023 10:53 AM
• URL: https://libguides.westminster.ac.uk/copyrightresearchers

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[law notes] indian copyrights act, 1957 with case laws| ipr by anubha mathur.

  INTRODUCTION 

Copyright is a bundle of exclusive rights given by the law to the creators of original works. It is a form of intellectual property protection granted by law. The rights provided under Copyright law include the rights of reproduction of the work, communication of the work to the public, adaptation of the work and translation of the work.

Copyright laws serve to create property rights for certain kinds of intellectual property, generally called works of authorship. Copyright laws protect the legal rights of the creator of an ‘original work’ by preventing others from reproducing the work in any other way.

The main goals of copyright are: -

• To encourage the development of culture, science and innovation
• To provide a financial benefit to copyright holders for their works
• To facilitate access to knowledge and entertainment for the public.

Copyright provides a framework for relationships between the different players in the content industries, as well as for relationships between rights holders and the consumers of content. Copyright is a form of Intellectual Property, along with trademarks and patents in all countries, and other creations (such as trade secrets, database rights, rights of publicity and the like) that may vary from country to country.

BRIEF INTRODUCTION TO RELATED INTERNATIONAL TREATIES AND CONVENTIONS

Indian copyright law is at parity with the international standards as contained in TRIPS. The (Indian) Copyright Act, 1957, pursuant to the amendments in 1999, 2002, and 2012, fully reflects the Berne Convention for Protection of Literary and Artistic Works, 1886, and the Universal Copyrights Convention, to which India is a party. India is also a party to the Geneva Convention for the Protection of Rights of Producers of Phonograms and is an active member of the World Intellectual Property Organization (WIPO) and the United Nations Educational, Scientific and Cultural Organization (UNESCO).

International copyright treaties

Several international treaties encourage reasonably coherent protection of copyright from country to country. They set minimum standards of protection which each signatory country then implements within the bounds of its own copyright law.

Berne Convention, 1886

Berne convention was the first and oldest multilateral convention on copyright that was for the protection of literary and artistic work which was adopted in 1886.

Initially, 10 nations were part of this convention and today 152 nations out of 190 are part of it. This convention made a union for the protection of the rights of the authors in their literary and artistic work.

The Berne Convention provides that, at a minimum, copyright protection in all signatory countries should extend to “literary and artistic works”, including “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression.”

The Berne Convention contributed some major concerns to the copyright laws: -

The work originating in one signatory nation of the Berne Convention to be protected in the same manner in other nations too.

The automatic protection was granted to the author’s work and was not subjected to any registration deposition fees or any formal notice in connection with the publication. This means that the copyright exists as soon as the work is “FIXED” i.e. recorded in any form.

If any dispute arises in the nation of origin, then the dispute can be filed in either of both nations.

It described the types of works protected, duration of protection, scope of exceptions and Limitations of copyright.

Principles such as  “national treatment”  (works originating in one signatory country are given the same protection in the other signatory countries as each grants to works of its own nationals)

Principles such as “ automatic protection ” (copyright inheres automatically in a qualifying work upon its fixation in a tangible medium and without any required prior formality).

WIPO Copyright Treaty

The WIPO Copyright Treaty (WCT) is a special agreement under the Berne Convention that deals with the protection of works and the rights of their authors in the digital environment. In addition to the rights recognized by the Berne Convention, they are granted certain economic rights.  The Treaty also deals with two subject matters to be protected by copyright: 

Computer programs, whatever the mode or form of their expression; and

Compilations of data or other material ("databases"). 

The treaty was signed in 1996 and also recognizes that the transmission of works over the Internet and similar networks is an exclusive right within the scope of copyright, originally held by the creator.

It categorizes as copyright infringement both: -

• The circumvention of technological protection measures attached to works
• The removal from a work of embedded rights management information.

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

The Agreement on Trade Related Intellectual Property Rights (TRIPs) is comprehensive in giving cover to all areas of technology, property, patents, trademarks, copyrights and so on.

The TRIPs encourages upon the member country’s sovereign right to frame its own legislation on intellectual property matters. This clause has been included on account of persistent demand from developed and industrialized countries.

The TRIPs Agreement covers seven categories of intellectual property rights:

• Geographical Indications
• Industrial Designs
• Integrated Circuits
• Trade Secrets

It was signed in 1996 and administered by the world trade organization. This agreement includes a number of provisions related to the enforcement of Intellectual Property rights. It says that  national laws have to make the effective enforcement of Intellectual Property rights possible , and describes in detail how enforcement should be addressed.

INDIAN COPYRIGHTS ACT, 1957

Copyright law protects expressions of ideas rather than the ideas themselves. It protects original works of ownership. It gives an exclusive right to do or authorize others to do certain acts in relation to literary, dramatic, musical, and artistic works, cinematography, and sound recordings. Computer programs are also included in literary works. Authors of Computer programs, and broadcasting organizations are to be given the right to authorize or prohibit the commercial rental of their works to the public. These similar exclusive rights also apply to the films.  

The Copyright Act, 1957, along with the Copyright Rules, 1958 , is the governing law for copyright protection in India. After independence, the Indian Copyright Act was the first law which was enacted from the provisions of the Berne Convention.

Objectives:

The Indian Copyright Act, 1957 is enacted with the following two main objectives:

Encouragement to the Original Work:

The main objective of the Copyright Act is to encourage authors, composers, artists, and designers to create original works by rewarding them with the exclusive right for a limited period (usually for the life of the originator plus 50 years) to exploit the work for monetary gain.

The economic exploitation is done by licensing such exclusive rights to the entrepreneurs like publishers, film producers and record manufacturers for monetary consideration. In reality, people who economically exploit the copyright are the greater beneficiaries of the copyright law than the creators of works of copyright. The publishers and authors of books are such examples.

Protection to the Originator:

The objective of copyright law is also, in essence, to protect the author or the creator of the original work from the unauthorized reproduction or exploitation of his/her materials. The right also extends to prevent others from exercising without authority any other form of right attached to copyright, for example, in the case of literary work, the right of translation, adaptation or abridgment.

In recent times, with the rapid advance of technology, copyright infringement in the form of ‘piracy’ has become a serious problem of an international character. This is because technological progress has made the reproduction of copyrighted material easy and cheap.

Accordingly, Indian copyright owners can protect their copyright in almost any country in the world. The appropriate actions taken under the Copyright Act 1957 can stop the infringement of copyright. Infringement of copyright is also an offense punishable with imprisonment and fine.

DEVELOPMENT OF COPYRIGHT LAWS IN INDIA

 The Indian Copyright law was developed in 3 phases:

Early Phase: - In 1911, the earliest statutory law on copyright was made under the administration of British rule. The provisions of the Berne convention were followed. During that phase, the term of copyright was for the lifetime of the author plus 7 years after his death and the government could grant a compulsory license to publish a book. The registration was also made necessary in 1914.

Modern Phase: - Copyright Act of 1911 was again amended in 1914 and it was also called modern copyright legislation. For the very first time criminal sanction was introduced in act for infringement of copyright. The term of the copyright was fixed for 10 years from the date of its first publication. This act remained applicable until replaced by Copyright Act, 1957.

1957 Phase: - The Act was enacted after the independence of the nation from British rule. It was the first enactment of intellectual property laws. It came into force on 21 st January 1958. Major provisions of act were adopted by the Berne convention of protection of literary and artistic work, 1886.

This act is amended 6 times till now to align with rapid changes in society and provisions of international treaties i.e. Berne Convention, UCC, TRIPs Agreement.

SUBJECT MATTER OF COPYRIGHT, ECONOMICS AND MORAL RIGHTS 

Modern copyright laws serve to protect a variety of intellectual property ranging from songs and jingles to computer software and proprietary databases. All subject matters protected by copyright are called ‘works’. Thus according to  Section 13  of The Copyright Act 1957, it may be subjected to the following works: 

Clause (a) of this Section 13 provides the definition of original work whereas clause (b) and (c) provides secondary works. 

Primary Works

Original Literary Work, 

Original Dramatic work, 

Original Musical work, 

Original Artistic Work, 

Secondary Works

Cinematography films, and 

Sound recordings.

Section 2(o) of the Copyright Act, 1957 provides an inclusive definition of word literary works according to which the literary work includes computer programming, tablets, and compilations including computer database. These cover published works including books, articles, journals, and periodicals, as well as manuscripts. Even adaptations, translations, and abridgements are taken as original works and are protected under copyright law. Section 13(a) classify literary works in the primary work.

Case: Zee Telefilms v. Sundial Communications

Facts: A had prepared concept notes for the purpose of television film which consists of characters, plots, notes and sketches etc.

Issues: Whether A is entitled to the copyright of those concept notes?

Held: Yes, since A invests labour and skill in preparing the concept paper. Such a person is entitled to copyright.

Case: Macmillan & Co. v. K.J Cooper

Facts: Plaintiff’s book consisted of selected passages from Plutarch’s life of Alexander the Great, joined together by a few words to give a different appearance. The book also contained an introduction and notes useful for education. A similar book was published by the defendants with notes. The original work contained 40,000 words while the defendants had copied 20,000 words and 7000 words in notes.

Issue: Whether the defendants work infringed the copyright in the plaintiff’s works?

Held: Defendants work infringed the copyright

Original Dramatic Works:

According to section 2(h) of the Copyright Act, 1957, the dramatic work includes any piece for recitation, choreographic work or entertainment in dumb shows, the scenic arrangement or acting form which is fixed in writing or otherwise but does not include a cinematographic film. Since the definition is an inclusive one, the other things fall within the general meaning of dramatic work, and may also be covered by the definition.

Case: Academy of General Education Manipal v. Malini Mallya

The court shows a clear difference between literary and dramatic work. The difference between the two rests on the fact that literary work allows itself to be read while a dramatic work “forms the text upon which the performance of the plays rests.” A dance performance will not be covered under copyright work but under dramatic work.

Case: Creation Records v. New Group Newspaper

Held: It was held that a photograph that involves no movement or action cannot be treated as dramatic work. Copyright of Dramatic work can in form of:

Adaption of Dramatic work:- Adaptation work means the modification of that work in some other form.

Original Musical Works:

According to section 2(p) of the Copyright Act, 1957, musical work means any work consisting of music and includes any graphical notion of such work, but does not include any words or any action intended to be sung, spoken or performed with the music. The words in a song and the music have separate rights and the rights cannot be merged. In order to qualify for copyright protection, a musical work must be original. 

Example:- Famous song “Yaaram” which is written by Gulzar and composed by Vishal Bharadwaj. The copyright of the lyrics will belong to Gulzar and the musical composition will be of the composer Vishal Bharadwaj.

Original Artistic Works:

According to the section 2(c) of the Copyright Act, 1957, the artistic work includes any painting, sculpture, drawing, engraving photograph of any work possessing artistic qualities. However, it also includes the architecture and artistic craftsmanship of such works. 

Case: Associated publishers vs Bashyam

Facts: A portrait of Mahatma Gandhi was made based on two photographs.

Held: A portrait based on photographs will be entitled to copyright if it produced a result from the photograph and the portrait itself is original.

Example: A photographer took a photograph of a painting of MF Hussain, then paints the same himself and sells such copies painted by him.

Held: A copyright in a painting is infringed when a person copies from the original painting or a picture of painting.

Cinematographic Films 

Section 2(f) of the Copyright Act, 1957 defines cinematographic films which include any work of visual recording and a sound recording accompanying such visual recording and the expression cinematograph shall be construed as including any work produced by any process analogous to cinematographic including video films. It is classified into secondary works as suggested in clause (b) of section 13 of the act.

Case: R.G. Anand vs Delux Films

Facts: Plaintiff was a producer and play writer of play ‘Hum Hindustani’. The plaintiff tried to consider the possibility of filming and narrated the play to the defendant. The defendant, without informing the plaintiff, made the picture ‘New Delhi’ which was alleged to be based on the said play.

Issue: Whether the film ‘New Delhi’ was an infringement of the plaintiff’s copyright in play ‘Hum Hindustani’?

Held: No, because the stories were different, only the theme “love story” was same.

Case: Balwinder Singh vs Delhi Administration

Held: The concept of cinematograph is not only limited to movies being played in theater it also covers videos and television, they both fall under the preview of cinematograph film.

Level of Originality:

A television report or documentary may be based upon a live incident or a newspaper report, thus the act does not prescribe any specified level of originality in the cinematographic film.

Sound Recordings:

According to section 2(xx) of The Copyright Act, 1957 , sound recording suggests that a recording of sounds from which that sound may be produced regardless of the medium on which such recording is made or the method by which the sounds are produced. Clause (c) of section 13 of the act state sound recordings as a by-product works. 

Case: Gramophone Co. India v. Super Cassette Industries

Facts: ‘G.co’, Plaintiff, produced audio records titled ‘Hum Aapke Hain Kaun’ by Rajashree production ltd, who were the owners of cinematographic work. They had already sold 55 lakhs audio cassettes and 40,000 compact discs titled ‘Hum Aapke Hain Kaun’. The defendants too launched an audio cassette by adopting the same title with its design, color scheme, get up and layout deceptively similar. Permanent Injunction was sought.

Held: Injunction varied by stipulating not to use the same title, design colour scheme etc with bold letters the record is a version of different artists.

RIGHTS OF THE COPYRIGHT HOLDER 

In the Copyright Act, 1957, the owner possesses the rights which are to prevent others from using his works in certain ways and to claim compensation for the usurpation of that right. In this Act, there are two types of rights given to the owner:

• Economical rights; 
• Moral rights.

Economic rights

This right is also known as the Exclusive Rights of the copyright holder provided under  Section 14 of the Act. In this Act different types of work come with different types of rights. Such as:

In the case of original literary, musical, and dramatic work:

• Right to reproduce;
• Right to issue copies;
• Right to perform at public;
• Right to make cinematography and  sound recording;
• Right to make any translation;
• Right to adaptation; and
• Right to do any other activities related to the translation or adaptation.

In the case, of computer program work:

• Right to do any act aforesaid mentioned; and
• Right to sell, rent, offer for sale of the copyrighted work.

In the case of artistic work:

• Right to communicate;
• Right to make any cinematography and sound recording;
• Right to make an adaptation; and
• Right to do any other activities related to the translation or adaptation. 

In case of a cinematograph film work:

• Right to sell, rent, offer for sale of the copyrighted work; and
• Right to communicate.

In the case of  a sound recording work:

• Right to issue copies; and

Moral rights

In addition to the protection of economic rights, the Copyright Act, 1957 conjointly protects ethical rights, that is due to the actual fact that a literary or inventive work reflects the temperament of the creator, just as much as the economic rights reflect the author’s need to keep the body and the soul of his work out from commercial exploitation and infringement. These rights are supported by  Article 6  of the  Berne Convention  of 1886, formally referred to as a world convention for the protection of literary and inventive works, whose core provision relies on the principle of national treatment, i.e. treats the opposite good as one’s own.

Section 57  of The Copyright Act, of 1957 recognizes two types of moral rights which are:

• Right to paternity – which incorporates the right to assert the authorship of the work, and the right to forestall others from claiming authorship of his work; and
• Right to integrity-  which incorporates the right to restrain, or claim damages in respect of any distortion, modification, mutilation, or any other act relating to the said work if such distortion, multiplication, or alternative act would be prejudiced to claimant honor or name.

AUTHORSHIP AND OWNERSHIP IN COPYRIGHT 

Section 17  of this Act recognizes the author as the first owner, which states that subject to the provision of this Act, the author of a work shall be the first owner of the copyright therein:

• In the case of literary or dramatic composition, the author,
• In the case of musical work, the musician,
• In the case of creative work apart from photography, the artist,
• In the case of photographic work, the artist,
• In the case of cinematographic or recording work, the producer,
• In case of any work generated by any computer virus, the one who created it.

However, this provision provided to bound exception:

• In case of creation is made by the author underemployment of the proprietor of any newspaper, magazine or any periodic, the said proprietor,
• In the case where a photograph is taken, painting or portrait is drawn, a cinematograph is made for the valuable consideration of any person, such person,
• In case of work done in the course of the author’s employment under the contract of service, such employer,
• In case of  address or speech delivered on behalf of another person in public, such person,
• In the case of government works, the government,
• In the case of work done under the direction and control of public undertaking such public undertaking, such and
• In the case of work done in which the provision of Section 41 apply, concerned international organizations. 

ASSIGNMENT OF COPYRIGHT

The owner of the copyright can generate wealth not only by exploiting it but also by sharing it with others for mutual benefit. This can be done by the way of assignment and licensing of copyright.

Only the owner of the copyright has the right to assign his existing or future copyrighted work either wholly or partly and as a result of such assignment the assignee becomes entitled to all the rights related to copyright to the assigned work, and he shall be treated as the owner of the copyright in respect of those rights.

Mode of the assignment agreement 

As per  Section 19 , these conditions are necessary for a valid assignment: 

• It should be in writing and signed;
• It should specify the kinds of rights assigned and the duration or territorial extent; and 
• It should specify the amount of royalty payable if required in any case.

It is also provided that, if the period is not mentioned in the agreement it will be considered as five years and if the territorial extent is not stipulated in the agreement, it will be considered as applicable to the whole of India. 

Disputes related to the assignment of copyright 

According to the Copyright Act, 1957, the appellant board where the receipt of the complaint by the assignor and after holding necessary inquiry finds that the assignee has failed to make the exercise of the rights assigned to him, and such failure is attributed to any act or omission of the assignor, may by suitable order, revoke such assignment. However, if the dispute arises with respect to the assignment of any copyright then that appellate board may also order the recovery of any royalty payable.

Operation of law in assignment

According to The Copyright Act, 1957, where under a bequest a person is entitled to the manuscript of any literary, dramatic or any other kind of work and such work has not been published before the death of the testator, unless the contrary is proved such person shall be treated as the owner for such work.

INFRINGEMENT AND REMEDIES

Where a person intentionally or unintentionally infringes the rights of the copyright holder, the holder may be subject to the following remedies available under this Act.

Civil remedies

These remedies are given under  Section 55  of the Copyright Act, 1957 which are:

Interlocutory injunction

This is the most important remedy against the copyright infringement, it means a judicial process by which one who is threatening to invade or has invaded the legal or equitable rights of another is restrained from commencing or continuing such act, or is commanded to restore matters to the position in which they stood previous to the relation. Thus for granting the interlocutory injunction, the following three factors are considered as necessary:

• Prima facie case , an assumption of the court that the plaintiff can succeed in the case and become eligible for relief.
• Balance of convenience , in it the court will determine which parties suffer the greater harm, this determination can vary with the facts of each case.
• Irreparable injury,  it is difficult to decide and determine on a case by case basis. Some examples of it include- loss of goodwill or irrevocable damages to reputation, loss of market share.

Mareva injunction

This is a particular form of the interlocutory injunction which restrains the defendant from disposing of assets that may be required to satisfy the plaintiff’s claim or for removing them from the jurisdiction of the Court.

Anton Piller order 

This order is passed to take into possession the infringed documents, copies and other relevant material of the defendant, by the solicitor of the plaintiff. This order is named after the famous case of  Anton Piller KG v/s Manufacturing Process Ltd, 1976 . In this case, the plaintiff Antone Piller, the German manufacturer is successful in passing ex-parte awards of restraining the use of his copyrighted products against the defendant.

John Deo’s order

In this order, the Court has the power to injunct rather than those impeded in the suit, who may be found violating the rights in the field of copyright. Thus this order is issued against the unknown person, who has allegedly committed some wrong, but whose identities cannot entertain the plaintiff.

Pecuniary remedies

There are three types of pecuniary remedies provided:

An account of profit, which lets the owner seek the sum of money made, equal to the profit made through unlawful conduct.

Compensatory damages, which let the copyright owner seek the damages he suffered.

Conversational damages, which are assessed to the value of the article.

Criminal remedies

For infringement of copyright, the criminal remedies provided under  Section 63 :

Imprisonment, not less than 6 months which may extend up to 3 years;

Fine may not be less than 50,000 which may extend up to 2,00,000;

Search and seizure of copyrighted goods; and

Delivery of copyrighted goods to the copyrighted owner. 

In the case of repeat offenders, the minimum punishment terms of 1 year and a fine of 1 lakh however, the highest punishment will be the same as the first-time offender.

This act shall not constitute copyright infringement in cases of:

Fair Dealing

Fair dealing is the statutory limitation on the exclusive right of the copyright owner which permits the reproduction or use of copyrighted work in a manner that otherwise would have constituted infringement. This law is given under  Section 52  of the Copyright Act, 1957 according to which the free uses can be made for any work except computer programs for the purposes:

• For private and personal use including research,
• For criticism and review,
• For reporting of current events or issues including lectures in public,
• For broadcasting in cinematographic films or by posting photographs,
• For reproduction and reporting of any judicial proceeding,
• For reproduction, or publication of any kind of work prepared by the secretariat of a legislature,
• For reproduction of any kind of work in a certified copy made or supplied accordance with any law,
• For reading and recitation of any literary or dramatic work in the public domain,
• For publication of any non-copyright matter bona fide intended for the use of educational institutes, and
• For recording any sound by the owner of the right in the work.

INTERNATIONAL COPYRIGHT ORDERS

Chapter IX of the Indian Copyright Act, 1957 describes the provisions of international copyright. Section 40 states the powers to extend copyright to foreign works and section 42 governs the provisions as to works of certain international organizations.

The power to extend copyright to foreign works is as follows -

The Central Government may, by order published in the Official Gazette, direct that all or any provisions of this Act, shall apply.

(a) To publish work first within the territory of India and then outside 

(b) To unpublished works, the authors whereof were at the time of the making of the work, subjects or citizens of a foreign country to which the order relates, in like manner as if the authors were citizens of India.

(c) In respect of domicile in any territory outside India to which the order relates in like manner as if such domicile were in India

(d) To any work of which the author was at the date of the first publication thereof, or, in the case where the author was dead at the date, was at the time of his death, a subject or citizens of a foreign country to which the order relates in like manner as if the author was a citizen of India at that date or time.

According to section 42 of the act, it provides power to restrict rights in works of foreign authors first published in India – If it appears to the Central Government that a foreign country does not give or has not undertaken to give adequate protection to the works of Indian authors, the Central Government may, by order published in the Official Gazette, direct that such of the provisions of this Act as confer copyright on works first published after the date specified in the order, the authors whereof are subjects or citizens of a such foreign country and are not domiciled in India, and thereupon those provisions shall not apply to such works.

ISSUES IN DIGITAL COPYRIGHTS

Digital Right Management includes techniques which have been developed to control duplication, modification and distribution of original works. The authors or the creators of the original works contend that DRM techniques are necessary in order to protect their interest by preventing free and unauthorized copying and distribution of their work.

However there are few who support the view that DRM techniques pose unnecessary hurdles for the public and impede the way of innovation and creativity by not letting others from being motivated by the original work of others.

PROVISIONS UNDER INDIAN COPYRIGHT LAW

Many techniques have been developed to protect the original work like digital watermarking, access and copy controls etc. However, despite the fact that these techniques have been incorporated in the legislation, regulation and protection of original works in the digital environment remains a goal that is yet to be achieved. It is very important that ideas should be available to the general public so that the flow of creativity must not be blocked. However, creators and authors must always be incentivized for their efforts. Hence the interest of both must be kept in mind while enacting and implementing DRM techniques.

Strengthening of Border Measures

Section 53, dealing with the importation of infringing copies, has been substituted with a new section providing detailed border measures to strengthen the enforcement of rights by making provisions to control the import of infringing copies by the Customs Department, disposal of infringing copies and presumption of authorship under civil remedies.

Protection of Technological Measures

The new section 65A, introduced for protection of technological protection measures (TPM) used by a copyright owner to protect his rights on the work, makes circumvention of it a criminal offense punishable with imprisonment.

As a result, any person who circumvents an effective technological measure applied for the protection of any of the rights, with the intention of infringing such rights, shall be punishable with imprisonment, which may extend to two years, and shall also be liable to fine. The rationale is to prevent the possibility of high-rate infringement (digital piracy) in digital media.

This amendment also clarifies the problem of circumvention impacting the public interest on access to work facilitated by copyright laws. Sub-section (2) permits circumvention for specified uses.

Digital Rights Management Information

Section 65B has been introduced to provide protection of rights management information, which has been defined under clause (xa) of section 2.

This amendment is intended to prevent the removal of the rights management information without authority and distributing any work, fixed performance or phonogram, after removal of rights management information. As a result, any unauthorized and intentional removal or alteration of any rights management information is a criminal offence punishable with imprisonment, which may extend to two years and fine. The rationale of the protection emanates from the practice in the digital world of managing the rights through online contracts governing the terms and conditions of use.

The protection of technological measures and rights management information were introduced in WCT and WPPT as effective measures to prevent the infringement of copyright in digital environments. The introduction of Sections 65A and 65B is expected to help the film, music and publishing industry in fighting piracy.

About the Author: This Law Notes is prepared by Ms. Anubha Mathur, law student at Amity University, Noida and was an intern at MyLawman. She can be reached at [email protected]. 

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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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The IPThink-Tank

Where ideas meet success....

• Jun 27, 2021

Assignment, Transmission, And Relinquishment Of Copyright : An Overview

Signifying the objective of copyright as being the step towards safeguarding the interest of a creator alongside the dispersal of knowledge, the protection that was rendered initially with recognizing and identifying the rights of authors in their books, is with time and evolution in technology, witnessing a major change in the nature of work and its mode of exploitation. Therefore, the association of monetary benefits and copyright work introduces the aspect of economic rights. The Copyright Act, 1957 as amended in 2012, sets quite the bandwidth for creators and authors for acquiring pecuniary benefits alongside success, in the process of encouraging continuous creativity and innovation from creators in the future.

When talking of assigning copyright, it certainly bears a purpose. That is, in this process, the assignee gets the right to exploit the innovation for a stipulated time within a particular region. The assignor, on the other hand, receives a royalty. The owner of the copyright of a work is vested with the authority to assign his copyright to another person. Thereafter, the assignee of the copyright becomes entitled to any right falling within the ambit of the copyright and shall be treated as the owner of the copyright in respect of those rights. When the owner of a copyright dies, if he dies intestate then his copyright passes on to his representatives. Section 18 thereafter, also goes on to throw light upon the aspect of an owner of copyright assigning the right in an existing work as well. As per Section 18, a prospective owner, the person who is not the first owner in the future work, can assign the copyright. But, again, as laid down by the proviso of this section, the assignment can only take place after that particular work comes into existence, not before that.

But assignment directly doesn't indicate an absolute assignment. The intention of the parties associated with the nature and extent of the assignment has to be worked out from the agreement. It was seen in the case of Saregama India Ltd. vs. Suresh Jindal (2007) , that if an assignment has been made for a limited period in line with the agreement, then, one cannot contend on the basis of the assignment of copyright rendering absolute ownership for an unlimited period.

The conditions for assigning a copyright have been laid under Section 19 of the Copyright Act, 1957. It is quite significant to be aware of the fact that the assignment has to be rendered in writing and signed by the assignor or an authorized agent, otherwise, it shall not be valid. A careful reading of the agreement and straining out the intentions of the parties are quite crucial since the copyright grants are often misused by the owners.

Relinquishment of the copyright requires the author to give notice as per the set form to the Registrar of Copyrights or via public notice. The Registrar then publishes the notice in the Official Gazette or in a different way. Within 14 days from the publication of the notice in the Official Gazette shall post the notice on the official website so that it remains in the public domain for not less than 3 years. As per Section 21 (1) and (2), the relinquishment of copyright shall not affect any pre-existing rights in favour of any person on the date of the notice. Section 21 goes on to provide the owner of a work the right to relinquish all or any of the rights in a work. Relinquishment indicates the handing over of the rights in the copyrighted work, also meaning the author would no more have the rights surrendered and cannot claim ownership over it. The author can determine the rights that they want to relinquish.

https://selvams.com/india/copyrights/relinquishment-of-copyright-in-india/

https://blog.ipleaders.in/concept-assignment-copyright/

https://taxguru.in/corporate-law/assignment-copyrights.html

https://www.mondaq.com/india/copyright/854828/assignment-and-licensing-of-copyright

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Important indian copyright cases – 2021.

In this post, we bring to you Important Copyright Cases decided by Indian Courts in the year 2021

Krishna Kishore Singh vs. Sarla A. Saraogi & Ors.

In this case, the Delhi High Court refused to grant an interim injunction against publication and release of films purportedly related to Sushant Singh Rajput (SSR) as the plaintiff, SSR’s father failed to make out a prima facie case, and because irreparable harm and balance of convenience were in favour of the defendants. The plaintiff in the case argued that films and series such as ‘NYAY The Justice,’ ‘Suicide or Murder,’ and ‘Shashank,’ must be injuncted and restrained from being released, published and communicated to the public. The plaintiff filed the case on several grounds including violation of publicity rights and privacy rights, right to fair trial, defamation, and violation of Article 21 of the Constitution.

After reviewing the facts and relevant cases, the Court came to the conclusion that the plaintiff failed to make out a valid case for violation of celebrity or publicity rights of SSR or his family members because the plaintiff was not aware of the content of the films, the defendants were not using SSR’s image, likeness or name, and because the films had appropriate disclaimers. It also pointed out that celebrity rights may not subsist after the death of the celebrity, and that facts that form part of the public record may be used by the defendants without liability. About defamation, the Court stated that a case of defamation is merely speculative without access to the defamatory content.

The Court also pointed out that no violation of the right to fair trial may be contemplated because of publication in news or by way of films. It went on to note that freedom of expression prevails over Article 21 for information that forms part of the public record. While denying the injunction, it asked the defendants to render accounts as any damage may be compensated by way of damages.

Citation: Krishna Kishore Singh vs. Sarla A. Saraogi & Ors., High Court of Delhi, CS(COMM) 187/2021 – 10.06.2021 – https://indiankanoon.org/doc/152020280/

Dassault System Solidworks Corporation & Anr. vs. Spartan Engineering Industries Pvt. Ltd. Anr.

In this case, the Delhi High Court has dealt with the issue of copyright infringement of software. Plaintiff no.1 is a French company which has developed a software called ‘Solidworks’. This software facilitates modelling and development of products in a three-dimensional environment. Plaintiff no.2 is a sister concern established by Plaintiff no.1 to manage all its affairs with respect to ‘Solidworks’ in India.

Plaintiff no.1 and Plaintiff no.2 (“Plaintiffs”), state that the software was developed by their employees as work for hire, and hence the copyright therein belongs to the Plaintiffs. The Plaintiffs claim that the software program and its instruction manuals are literary work under the Copyright Act, 1957 (Act) and is entitled to copyright protection. The software was first published in the United States of America (US) and is entitled to protection in India under Section 40 of the Copyright Act as India and the US are members of the Berne Convention, Universal Copyright Convention and the World Trade Organisation’s TRIPS Agreement.

The Plaintiffs allege that in May 2018, the Plaintiffs received information regarding the commercial use of pirated and unauthorised versions of the ‘Solidworks’ software program by the Defendants, without paying the required  license fee. The Plaintiffs further asserted that such unauthorized use of the software had increased since August, 2020 and all efforts to reach an amicable resolution were futile, as the Defendants were denying infringement.

Following this, the Plaintiffs approached the Court seeking an injunction, as use of any pirated or unauthorised copy of the Plaintiffs’ software program would amount to copyright infringement under Section 51 of the Copyright Act. The Plaintiffs also relied on Section 63B of the Act, which makes it a criminal offence to knowingly use a pirated computer program. Further, the Plaintiffs asserted that, there has also been a contractual infringement and intellectual property infringement, due to the violation of the End User License Agreement by the Defendants.

While issuing the order, the court remarked that, “Software infringement is a serious issue, and deserves to be nipped in the bud”. The Court granted the Plaintiffs an ad interim ex-parte injunction, restraining the Defendants from using, reproducing and distributing any pirated or unlicensed or unauthorized software programs owned by the Plaintiffs and also from formatting their computer systems and/or erasing any data, pertaining to assisting others to infringe the Plaintiffs’ copyright.

Citation: Dassault System Solidworks Corporation & Anr. vs. Spartan Engineering Industries Pvt. Ltd. Anr., High Court of Delhi, CS(COMM) 34/2021 – 28.01.2021 https://www.bananaip.com/wp-content/uploads/2021/02/Dassault-Systemes-Solidworks.pdf  

Mr. John Hart Jr. & Anr. vs. Mr. Mukul Deora & Ors.

In this case, Plaintiff No. 1 claims to be vested with the exclusive copyright to make a movie adaptation of the book “The White Tiger” authored by Mr. Aravind Adiga by virtue of a Literary Option/Purchase Agreement dated 4th March, 2009. Plaintiff no.1 and Plaintiff no.2 (“Plaintiffs”), have approached the Court at the eleventh hour to seek an injunction restricting the release of the film “The White Tiger” (‘Film’) produced by Defendant No. 1 to be released on the streaming platform, Netflix. The Plaintiffs assert that when it came to their knowledge that Netflix was in the process of making and releasing the film, a cease-and-desist notice dated 4th October, 2019, was sent by Plaintiff No. 2 to Defendant No. 1. Further, the Plaintiffs stated that allowing the release of the film would result in irreparable injury, as the Plaintiffs planned to release the film in Hollywood. The Plaintiffs also attempted to justify the delay in approaching the Court by stating that the delay was unavoidable as the Plaintiffs were unaware of the fact that Defendants were shooting the film during the Covid-19 pandemic.

The court opined that no case exists for grant of any interlocutory injunction and the case constitutes a misuse of the judicial process. The court held that, “The Plaintiffs were aware of the possibility of the film being released on the Netflix platform at least from 4th October, 2019. There is not a scintilla of material produced on record to justify the Plaintiffs approaching this court less than 24 hours prior to the release of the subject film, seeking stay thereof.” The court relies on several precedents to elucidate that a Plaintiff who approaches the court at the eleventh hour, seeking an interlocutory injunction against the release of a cinematographic film, is dis entitled to any such relief. A delay in approaching the Court for an equitable relief is always fatal.

The Delhi High Court held that the balance of convenience favours the Defendants and by granting an injunction at the eleventh hour, greater irreparable loss and injury would be caused. The Plaintiffs stand dis entitled from seeking any interlocutory injunction against the release of the film on the ground of unconscionable delay in approaching the court. The court nevertheless directed the defendants to keep detailed accounts of the earnings made from the film so that, if the Plaintiffs were to succeed in the future, the account details would facilitate in awarding damages or monetary compensation.

Citation: Mr. John Hart Jr. & Anr. vs. Mr. Mukul Deora & Ors, High Court of Delhi, CS (Comm) 38/2021 – 21.01.2021 – https://www.bananaip.com/wp-content/uploads/2021/02/John-Hart-Jr.pdf

Muthoot Finance Limited vs. Shalini Kalra & Ors.

In this case, the Plaintiff, Muthoot Finance Limited, a non-banking financial institution, provided business and personal loans against the deposit of gold jewellery. As a part of this business the Plaintiff had to maintain proprietary and confidential information related to its vast customer base in the form of a database which in turn constituted a ‘literary work’ as under Section 2(o) of the Copyright Act, 1957 and it also amounted to trade secrets of Plaintiff which ought not be disclosed to any third party. The Defendants no. 1 to 4 herein were the former employees of the Plaintiff. At the time of joining the employment, each of them had duly signed the non-disclosure undertaking as provided in the appointment letter along with a Declaration of fidelity. The main allegation in the plaint was that the Defendant No. 1 & 4, during the course of their employment, had unauthorizedly and illegally downloaded, extracted, copied and later on transmitted the confidential information of the Plaintiff’s customers to Defendant No 2 & 3 along with employees of Defendant No.5, a company engaged in similar services as that of the Plaintiff. Thus, the Plaintiff’s customer base started drifting towards the Defendant No.5. Eventually Defendant 1 & 3 on being terminated by the Plaintiff, in turn joined the employment under Defendant 5. Aggrieved by this, the Plaintiff filed a criminal complaint against Defendant No. 1 to 5 with the Joint Commissioner of Police, Crime Branch, New Delhi. However, there were similar instances of disclosure of confidential information at various other branches of the Plaintiff which in turn resulted in a loss of around 9 crore rupees to the Plaintiff. Thus, the Plaintiff again lodged an FIR at PS Special Offences and Cyber Crime under the relevant sections of IPC and IT Act. The plaint herein also averred that Defendant No.5 was poaching the Plaintiff’s employees and customers with the aid of the information illegally obtained by the Defendants.

Hence the Plaintiff moved this court seeking a decree of permanent injunction thereby restraining the Defendants and any other person acting on behalf of/through them from using/disclosing any confidential information pertaining to the Plaintiff, using/infringing any copyright or other IP rights belonging to the Plaintiff, from directly or indirectly luring/canvassing any of the Plaintiff’s customers, inducing any of the Plaintiff’s employees to quit employment or provoke them to join the Defendant No.5 or any of its businesses, and to give up all the said confidential information/trade secrets in hand. The Plaintiff also sought damages of Rs.2,00,01,000/- payable to the Plaintiff jointly and severally by Defendants 1 to 5 together with an interest of 18% p.a. till the date of payment. The Court herein issued summons to the Defendants and gave them an opportunity to file a written statement (if any). And pertaining to the IA filed by the Plaintiff, the court ordered an interim injunction restraining the Defendants from disclosing or using any confidential information, trade secrets or any other information, pertaining to the business and operations of the Plaintiff Company, and from using proprietary content of any nature, including copyright and other intellectual property rights of the Plaintiff Company or doing any acts or deeds that will infringe/dilute the Plaintiff Company’s intellectual property rights.

Citation: Muthoot Finance Limited vs Shalini Kalra & Ors, Decided by Delhi High Court – Orders on 13th September, 2021, available at: https://indiankanoon.org/doc/22108976/

Cristina Maiorescu vs. M/S Nishangi Enterprises Pvt. Ltd. and Ors.

The Plaintiff, a professional photographer filed a suit against the Defendants seeking direction from the Bangalore District Court for payment of a sum of Rs.1,56,025/- towards an invoice for services provided by her, with interest at the rate of 12% per annum. The Plaintiff entered an agreement with the Defendants for providing photography services with respect to products to be sold by the Defendant No.1, a company operating a chain of eateries/beverage stations under the name and style ‘Frootality’ in Hyderabad and Bangalore. As per the agreement, a sum of Rs.2,23,000/- was to be paid by the Defendants to the Plaintiff, who had to provide 62 photographs in two phases. Further, in pursuance of the agreement, the Defendant No.1 paid a sum of Rs.1,00,000/- to the Plaintiff as advance.

It was alleged by the Plaintiff that after completion of her assignment, she raised an invoice and Defendants neither raised any objections regarding the completion of the assignment nor made the payment. It was also the case of the Plaintiff that the Defendants No.1 and 2 utilized various services of the Plaintiff outside the scope of photography assignment and she also permitted the Defendant No.3 to reside with her. The Plaintiff alleged that she incurred an expense to the tune of Rs. 3,85,000/- in fulfilling these and that the Defendants blatantly violated her intellectual property rights.

The Court held that owing to the facts and circumstances of the case, the burden was on the Plaintiff to prove that she provided photography services to the Defendant and that the Defendants were liable to pay damages and compensation for the additional services rendered by the Plaintiff and for unlawful use of photographs clicked by her. The Plaintiff placed on record evidence which included a copy of email communications between Plaintiff and Defendants, a copy of the invoice, a C.D. containing photographs, screenshots of websites of defendants, and a copy of the notice. The Court, after examining the evidence, concluded that the Plaintiff successfully established that she provided the services to the defendant, who agreed to pay the amount that was claimed by her and the interest amount was also held to be appropriate. However, with regards to the additional services and unlawful use of photographs, except the issuance of notice no other evidence was available. The Court held that in absence of any cogent material, Plaintiff was not entitled for damages and compensation as claimed in the plaint.

Citation: Cristina Maiorescu vs M/S Nishangi Enterprises Pvt. Ltd, on 24 September, 2021, available at: https://indiankanoon.org/doc/139516246/  

Saregama India Limited vs. Next Radio Limited & Ors.

The Apex Court, in the instant case, set aside an interim order passed by the Madras High Court, which held that copyrighted material cannot be broadcasted without prior notice as per Rule 29(4) of the Copyright Rules, 2013. The High Court had modified specific provisions of the Rule and applied it to the broadcasters, by opining that the Rule lacked flexibility and created difficulties for the broadcasters. The mandate to furnish the particulars in the notice was revised to fifteen days as against 24 hours. Moreover, the High Court rendered the second proviso under the Rule regarding prior notice as a mere routine procedure instead of an exception loosening the grips on broadcasters. The Petitioner pointed out that this modification would be applicable pan-India and create disparity regarding the Rule. Various landmark cases were relied on by the Petitioner in establishing the settled principle of law, which prohibited the judiciary from modifying or rewriting the words in a Statute while interpreting the law. While setting aside the interim order, the Supreme Court opined that the Courts were not empowered to revise or rewrite the provisions of a Statute by way of judicial review. Emphasis was laid on the fact that the powers to make and rewrite laws vested with the Legislature. Furthermore, the Court did not deliberate on the merits of the respondent’s submission concerning the validity of Rule 29(4).

Citation: Saregama India Limited v. Next Radio Limited & Ors., decided by the Supreme Court on 27th September, 2021, available at: https://indiankanoon.org/doc/11609677/  

Narendra Hirawat And Co. vs. Aftab Music Industries & Anr.

Plaintiff Narendra Hirawat and Co. filed a suit against the Defendants for violating consent terms and breaching film rights accorded to the Plaintiffs. The Plaintiffs claimed that despite the existence of an agreement which granted the Plaintiffs perpetual rights over certain movies produced by the Defendants, the latter uploaded it on their YouTube Channel. The Plaintiffs argued that the Defendants accepted the Plaintiffs’ right over the film in perpetuity by relying on the Consent Terms mentioned in a suit filed in 2012. The Defendants countered this by alleging that they had only granted ‘Internet Rights’ and not ‘YouTube Rights’ to the Plaintiffs. However, the High Court of Bombay rendered the Defendants’ arguments ‘non-sensical’ by holding that ‘YouTube Rights’ fall within the ambit of ‘Internet Rights’ and the two cannot be dealt with separately. The Court added that YouTube could not function without the existence of the Internet hence denying the standalone ‘YouTube Rights’ claimed by the Defendants.

The Court ordered the Defendants to stop infringing the rights accorded to the Plaintiffs, and to cease storing or making copies of the films on any platform. The Court explicitly forbade the Defendants from representing their non-existent right over the films to any third party. Although the Court opined that exemplary and punitive costs are to be imposed along with issuing a contempt notice to the Defendants for having intentionally breached the agreement, no such imposition or issuance of notice were ordered. The Court denied the Defendants their right to reply by stating that the Defendants were dishonest and failed to adhere to the commitments made to the Court.

Citation: Narendra Hirawat and Co. vs Aftab Music Industries & Anr. on 28th September, 2021, available at: https://www.livelaw.in/pdf_upload/narendra-hirawat-co-v-aftab-music-industries-anr-401683.pdf

Mrs. Sellappapa Keeran vs. S. Vijayaraghavan & Anr.

The Plaintiff, Mrs. Sellappapa Keeran, wife of late Pulavar Keeran, a famous religious Hindu preacher and historian, sought a declaration from the Madras High Court that she was the rightful owner of the copyright of her husband’s works. She also filed for an injunction against the Defendants, asking them to surrender all master tapes containing original recordings of the speeches, lectures and discourses and in any other form like cassettes or CDs.  Pulavar Keeran had met Defendant No. 1., S. Vijayaraghavan, who was the proprietor of Vani Recording Co., a small audio cassette shop in 1987, and decided to record his concerts in the form of 38 cassettes between 1987 and 1990 and sell them so they could be listened to at people’s convenience. He allowed Defendant No. 1 to promote the cassettes in exchange for incurring the expenses involved in making the recordings. Defendant No. 1 also sold certain cassettes through a dealer, along with a temporary mutually beneficial agreement based on the market and the number of copies sold.

The Plaintiff claimed that her husband did permit any further reproduction after a formal agreement laying down the profit-sharing ratio was in place. He did not part with the copyright, and was not paid by Defendant No. 1 for his recordings. He suffered a brain hemorrhage in 1990, so he only completed recording 12 of his works. The Plaintiff entrusted the master tapes with Defendant No. 1 based on his assurance that he would keep it safe and maintain them well in his shop, but intended to retain the copyright of her husband’s works. S. Vijayaraghavan commercially exploited the recorded works, against the Plaintiff’s wishes, while she was abroad. The Plaintiff’s counsel stated that as per Section 2(d) and Section 17 of the Copyright Act, 1957, the Plaintiff would be the rightful copyright owner as she was a legal heir, and Defendant No. 1 did not assist in the capacity of a producer.

The counsel for the Defendants claimed that the sound recordings were the work of a producer, which in this case was Defendant No. 1. They also claimed that the present suit was filed back in 2004, and was thus barred by limitation as it was 13 years after the preacher’s death in 1990. The Court stated that this argument did not hold water, because the copyright was valid till 1/1/1991, i.e. 60 years from beginning of the next calendar year after the death of Pulavar Keeran. The Court analysed Section 2(d), 13, 17 of the Copyright Act, 1957 and Section 2 of the Berne Convention. The Court held that the copyright holder would be the Plaintiff, and granted a permanent injunction against the Defendants, restraining them from using, selling, distributing, broadcasting as a whole or exploiting the literary works in isolation (transcript of speeches) through any media.

Citation: Mrs. Sellappapa Keeran vs S. Vijayaraghavan & Anr., Decided by The Madras High Court on 1st September, 2021, available: at  https://indiankanoon.org/doc/1932971/ 

Smt. Shumita Deb v. Saregama India Ltd. and Anr.

Smt. Shumita Deb, the Plaintiff, daughter of late singer, Probodh Chandra Dey, popularly known as Manna Dey filed a suit against Saregama India Ltd. (Defendant No. 1) and Sony DADC Manufacturing Pvt. Ltd. (Defendant No. 2) seeking perpetual and mandatory injunction, and damages for infringement of copyright of 14 songs sung by her father. The Plaintiff claimed that Manna Dey held copyright over the 14 songs in the music album, which the Defendant No. 1 infringed by wrongfully reproducing, manufacturing, marketing and distributing as the CD album with the infringing songs. The Defendant No. 1 proved before the Court that Manna Dey only sang the 14 songs, out of which he composed 2 songs. Manna Dey assigned the rights to those 2 songs to the Defendant No. 1 by an agreement to that effect and received the royalties. Out of 14, 4 songs were part of a cinematographic film, making the producer the copyright owner. The Defendant No. 2 manufactured and distributed the CD albums through an exclusive licensing agreement between the Defendants, for songs/musical works that were owned by Defendant No. 1. The Court concluded that Manna Dey was not the author of the songs, being the singer, by virtue of S.2(d)(ii) of the Copyright Act. The rights to these songs lay with the Defendants, as they owned the original plate from which the record was made. The Court denied the claim of distortion of songs u/S. 57, as well as rejected any claims to damages and dismissed the suit. Citation: Smt. Shumita Deb v. Saregama India Ltd., decided on 20th December 2021, in the Court of City Civil Judge, Bengaluru City, available here , last visited on 4 January, 2022.

This post is brought to you by BananaIP’s Consulting & Strategy Department.

About BananaIP’s Consulting & Strategy Department

BananaIP’s Consulting & Strategy Department has the experience of helping companies use IP for business and competitive advantage. Companies regularly seek their assistance, advise and opinions on identifying/mining inventions and creations, conducting IP audits, protecting IP assets appropriately, launching risk free products, managing litigation for business benefit, resolving disputes out of Court, making money out of IP, enforcing IP, and licensing transactions. If you have any questions, or need any clarifications, please write to [email protected] .

Please note that these case updates have been put together from different sources, primary and secondary, and BananaIP’s reporters may not have verified all the decisions published in the bulletin. You may write to [email protected]   for corrections and take down.

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• HCM Data Loading Business Objects

Guidelines for Loading Absence Cases

You use absence cases to group related absences, typically those having the same cause. For example, a worker may take two periods of sickness absence after sustaining an injury at work.

In this case, you can associate the two absences with the same absence case for ease of management. This topic describes how to load Absence Case objects for a worker using HCM Data Loader. Use the AbsenceCase.dat file

Absence Categories

If you associate an absence case with an absence category, then all absences in the case must have the same category. If you specify no category for the absence case, then you can associate any type of absence with the absence case. You define absence categories using the Manage Absence Categories task in the Absence Administration work area.

Loading Absence Cases

These records must exist in Oracle HCM Cloud before you can create an absence case that refers to them:

Absence category, if you're using categories

Worker and work relationship

Worker assignment, if absences are specific to the assignment

Absence records

Deleting Absence Cases

You can delete Absence Case objects using HCM Data Loader. To identify the record to be deleted, supply the AbsenceCaseCode attribute.