IPR
Topic 22 Assignment Licence Relinquishment
Topic 22 — Assignment, Licence and Relinquishment of Copyright
Copyright derives most of its commercial value from being alienable. Authors do not, in practice, exploit their works themselves; they grant rights to publishers, producers, music labels, OTT platforms, broadcasters and aggregators. The Copyright Act 1957 provides three principal mechanisms by which copyright is transferred or made available — assignment (Sections 18 and 19), licence (Sections 30 to 32B), and relinquishment (Section 21). The 2012 amendment substantially strengthened the author's position in each, particularly through the unwaivable royalty rights of underlying authors. This topic walks through every provision, the formal requirements, the special protections for authors, and the leading cases.
1. Three Mechanisms — A Comparative Map
Mechanism | Section | Effect | Key Feature |
|---|---|---|---|
Assignment | 18, 19, 19A | Transfers ownership of one or more rights in the bundle to the assignee. | Permanent (subject to reversion under Section 19(4)). |
Licence | 30, 30A | Grants permission to use the work; ownership stays with the licensor. | Reverts on expiry / termination. |
Relinquishment | 21 | Author surrenders rights; work falls into the public domain. | Irrevocable; cannot be undone. |
2. Assignment of Copyright — Sections 18 and 19
A. The Power to Assign — Section 18
Section 18(1) — Power of Assignment "The owner of the copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copyright either wholly or partially and either generally or subject to limitations and either for the whole term of the copyright or any part thereof." |
Section 18 thus permits four kinds of assignment:
- Whole or partial — the owner may assign all rights in the bundle or only some.
- General or limited — the assignment may apply to the whole world or be limited to specified territories.
- For the whole term or part — the assignment may run for the entire copyright term or only for a fixed period.
- Existing or future work — both completed works and works yet to be created may be the subject of assignment.
B. Mode of Assignment — Section 19
Section 19 imposes formal requirements on every valid assignment:
- Writing — Section 19(1): The assignment must be in writing signed by the assignor or his duly authorised agent.
- Identification of work and rights — Section 19(2): The assignment must identify the work assigned and specify the rights assigned.
- Duration — Section 19(3): The assignment must specify the duration of the assignment. If duration is not specified, it is deemed to be five years from the date of assignment (Section 19(5)).
- Territory — Section 19(4): The assignment must specify the territory of the assignment. If not specified, it is deemed to extend to the whole of India (Section 19(6)).
- Royalty — Section 19(3) read with 19(7): Royalty payable to the author and any other consideration must be specified.
- Reversion on non-use — Section 19(4): Where the assignee does not exercise the rights assigned within one year, the assignment in respect of those rights is deemed to lapse, unless otherwise specified.
- Equitable revision — Section 19A(1): The Appellate Board (now the Commercial Court / High Court) may, on receipt of a complaint from the assignor, revoke the assignment if the assignee has failed to make sufficient exercise of the rights.
✅ The five default rules — when the contract is silent (i) Duration not specified → 5 years (Section 19(5)). (ii) Territory not specified → whole of India (Section 19(6)). (iii) Royalty must be paid even if not specified (Section 19(7)). (iv) Non-exercise for 1 year → lapse of assigned rights (Section 19(4)). (v) Strict construction — rights not expressly assigned remain with the author (Saregama v. Suresh Jindal, 2007). Memorise these five defaults — they are the most-tested points on assignment. |
C. The 2012 Amendments — Strengthening Author Protections
The Copyright (Amendment) Act 2012 inserted three crucial provisions:
- Third Proviso to Section 18 — assignment to make a cinematograph film does not affect the right of the author of the work to claim an equal share of royalties and consideration payable for utilisation of such work in any form other than communication to the public along with the film in a cinema hall.
- Fourth Proviso to Section 18 — assignment to make a sound recording (not part of any cinematograph film) does not affect the right of the author of the work to claim an equal share of royalties for any utilisation of such work in any form.
- Sections 19(9) and 19(10) — codifying the unwaivable royalty rights described in Topic 21.
📖 Saregama India Ltd. v. Suresh Jindal, (2007) 2 SCC (J) 1 The Supreme Court held that a Section 19 assignment of copyright must be construed strictly. Where the assignment was silent on the right of communication to the public, that right remained with the assignor. Significance — Establishes the principle of strict construction of IP assignments. A right not expressly assigned is retained by the assignor. Critical for drafting and litigation. |
3. Licensing of Copyright — Sections 30 to 32B
A. Voluntary Licences — Section 30
Section 30 permits the owner to grant a licence to do any of the acts in the bundle, on such terms and conditions as may be agreed. Like an assignment, a licence must be in writing signed by the owner. Unlike an assignment, the licence does not transfer ownership; it merely grants permission to use the work for the agreed term and within the agreed scope.
B. Licence Categories
Licence Type | Effect | Source |
|---|---|---|
Exclusive licence | Licensee gets sole right to do the licensed acts; even the owner cannot. | Section 2(j); Section 30 (by agreement) |
Sole licence | Licensee gets right + the owner retains the right; no third party can. | Common law; not statutory |
Non-exclusive licence | Multiple licensees may exercise the right. | Section 30 (default) |
Compulsory licence | Granted by the State despite the owner's refusal. | Sections 31, 31A, 31B |
Statutory licence | Granted automatically by statute on payment of royalty. | Sections 31C, 31D |
C. Special Licence — Cover Versions (Section 31C)
Section 31C permits a person to make a sound recording of a literary, dramatic or musical work in respect of which a sound recording has already been made by, or with the consent of, the owner. This must be done after a five-year gap from the original recording, on payment of royalty fixed by the Commercial Court / High Court (post-2021), and subject to conditions to prevent confusion with the original.
D. Statutory Licence for Broadcasting — Section 31D
Section 31D, inserted by the 2012 amendment, permits any broadcasting organisation to communicate published literary or musical works and sound recordings by way of broadcast on payment of royalty fixed by the Commercial Court / High Court. The right is automatic — the broadcaster need not negotiate with the copyright owner. Section 31D is structured around the procedure of giving prior notice, paying royalty, and accounting for use.
📖 Tips Industries Ltd. v. Wynk Music Ltd., 2019 SCC OnLine Bom 13087 (SJ); affirmed by Bombay HC Division Bench, 2023 SCC OnLine Bom 1850 Facts — Wynk, an OTT music streaming platform, claimed entitlement to a Section 31D statutory licence on Tips's sound-recording catalogue after contractual negotiations failed. Tips sued for infringement. Holding — The Bombay High Court (Single Judge in 2019; Division Bench in 2023) held that internet broadcasting / on-demand streaming services are NOT "broadcasting organisations" within Section 31D. Statutory licensing is restricted to traditional radio and television broadcasting. The 2016 DPIIT Office Memorandum extending Section 31D to internet broadcasting was held to lack statutory backing. Subsequent developments — In June 2024, the parties settled with Wynk paying ₹12 crore. In August 2024, the DPIIT formally rescinded its 2016 Office Memorandum. Significance — The leading authority on the scope of Section 31D in the streaming era. Internet streaming services must license content directly from copyright owners. |
✅ Section 31D — what is settled and what remains open Settled (post-2024): Section 31D applies only to traditional radio and television broadcasting. OTT and on-demand streaming services are outside its scope and must license content directly. The 2016 DPIIT memorandum is formally rescinded. Open: Whether legislative amendment (recommended in the 161st Report of the Rajya Sabha Standing Committee, 2021) will eventually extend Section 31D to internet broadcasting. The Draft Copyright (Amendment) Rules, 2019 had proposed inclusion but the final 2021 Rules omitted it — likely awaiting parliamentary action. |
4. Compulsory Licensing — Section 31
Section 31(1) — Compulsory Licence in Works Withheld from Public "If at any time during the term of copyright in any work which has been published or performed in public, a complaint is made to the Commercial Court that the owner of copyright has — (a) refused to re-publish or allow the re-publication of the work or has refused to allow the performance in public of the work, and by reason of such refusal the work is withheld from the public; or (b) refused to allow communication to the public by broadcast, of such work or in the case of a sound recording the work recorded in such sound recording, on terms which the complainant considers reasonable, the Commercial Court, after giving to the owner of the copyright a reasonable opportunity of being heard ... may direct the Registrar of Copyrights to grant to the complainant a licence to re-publish the work, perform the work in public or communicate the work to the public by broadcast ... subject to payment to the owner of the copyright of such compensation ..." |
Section 31 reflects the social-bargain rationale of copyright: the owner cannot use the monopoly to deny the public access to a work that has been published. The leading Indian authority interpreting the section is Entertainment Network (India) v. Super Cassettes Industries (2008), where the Supreme Court emphasised that the power to grant a compulsory licence must be exercised judicially, balancing the proprietary right under Article 300A against the public interest in access.
Other Compulsory Licensing Provisions
- Section 31A — Compulsory licence in works of unknown authors (orphan works).
- Section 31B — Compulsory licence for the benefit of disabled persons (Marrakesh Treaty implementation).
5. Relinquishment of Copyright — Section 21
Section 21(1) — Relinquishment "The author of a work may relinquish all or any of the rights comprised in the copyright in the work by giving notice in the prescribed form to the Registrar of Copyrights or by way of public notice, and thereupon such rights shall, subject to the provisions of sub-section (3), cease to exist from the date of the notice." |
Relinquishment is the voluntary surrender of copyright. The work then enters the public domain prematurely. The procedure was simplified by the 2012 amendment, which added the option of public notice as an alternative to filing with the Registrar. Once relinquished, the rights cannot be revived. Section 21(3) protects pre-existing rights of third parties (e.g., a licensee whose licence is still running) from being affected by the relinquishment.
✅ Why authors relinquish copyright Most modern relinquishments are made for normative reasons: free-software developers releasing code under GPL or similar licences; academic authors making works open-access; activists and educators making materials freely available. The Creative Commons movement uses relinquishment-style instruments (CC0) and partial-licensing instruments (CC-BY, CC-BY-NC) to provide structured options between full copyright and full public domain. |
6. Drafting Implications
✅ Twelve drafting points for IP transactions Specify whether the instrument is an assignment or a licence — the legal effect is fundamentally different. Identify the work precisely — title, version, date of creation. Identify each right being transferred or licensed (avoid omnibus phrases). Specify duration — otherwise default of 5 years applies (Section 19(5)). Specify territory — otherwise default of whole of India applies (Section 19(6)). Specify royalty / consideration — payment is required even if not specified (Section 19(7)). Address the Section 19(4) one-year non-exercise lapse rule — exclude or extend by contract. Acknowledge unwaivable royalty rights of underlying authors (Sections 19(9)–(10)) for film and sound-recording deals. Address moral rights (Section 57) — they cannot be assigned but ackowledgement and waiver of specific applications may be permitted. For licences, specify exclusivity, sub-licensing rights, and termination triggers. For assignments, address reversion (Section 19A) and equitable revision triggers. For films and sound recordings, address the post-2012 royalty regime through copyright society licensing (e.g., IPRS). |
🎯 EXAM POINTERS — TOPIC 22
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