A series looking at key legal documents. This week: Copyright Assignments
What’s this document all about?
A copyright assignment transfers the copyright in a work from one party to another.
Copyright subsists in any original literary, dramatic, musical or artistic work (such as a book, play, musical composition or photograph), as well as in sound recordings, films or broadcasts.
The original copyright owner is usually the person who created the work. The owner of copyright in a work has the exclusive right to control how the work is used. The owner can grant licences to third parties which permit them, for instance, to copy the work or communicate it to the public (for example, by broadcasting the work on TV or streaming it over the internet, in exchange for a fee or royalties. The owner can also transfer their ownership of the copyright to a third party by assigning it to them.
There are many reasons why a copyright owner may wish to assign the copyright in their work to a third party. For example, an author may be prepared to assign the copyright in their book to a publisher to obtain the advantage of the publisher’s resources to distribute and market the book to a wide audience.
Alternatively, a third party may require an assignment of the copyright in the work as part of a services transaction. For example, if you commission a designer to design your company logo, the copyright in the logo (as an artistic work) will automatically vest in the designer. To ensure that your company will have the right to freely use and modify the logo without paying any ongoing royalties to the designer, it will need an assignment of the copyright in the logo from the designer.
In what practice areas would you expect to find this document?
You can expect to see copyright assignments in any practice with an IP or media focus, particularly in the music, film, television, technology, publishing and advertising industries. However, copyright assignments can also crop up in other transactional practice areas, such as corporate (as part of an asset purchase) or finance (as security for a loan agreement).
What are the key sections?
The assignment clause is the key section. This is what transfers ownership of the copyright in the work. It is important that the rights are being assigned from the correct entity that owns the rights to the correct entity that will use the rights. This may sound obvious, but in some cases it is not always apparent.
Other key sections will depend on the purpose of the assignment. For example, if acting for a film production company acquiring the rights in a screenplay to produce a film, you would want to ensure the assignment document contains a waiver of the author’s ‘moral rights’ (unassignable rights an author has to be identified as the author of the work and to object to derogatory treatment of the work), a prohibition on injunctive relief (to ensure production or distribution of the film is not stalled by an injunction) and an acknowledgement from the assignor that the consideration constitutes equitable remuneration for the rights assigned.
An assignee would also usually require a warranty from the assignor that it owns the work protected by copyright and is entitled to assign the rights in question.
What are the main subtleties?
The main subtleties will depend on the nature of the assignment and the needs of the client. Generally, the subtleties in the document will relate to the scope of rights and ensuring the client obtains (or divests, as the case may be) the relevant rights it needs. When drafting an assignment provision, care must be taken to ensure it is absolutely clear which rights, in which copyright protected works, are being assigned.
Where the parties are entering into an agreement that concerns a work to be created in the future, such as a commissioning agreement for a screenplay, it is advisable to vest the legal title in the assignee at this stage, rather than having to create a separate assignment once the work has been created. Although under general law a work must be in existence before it can be assigned, the Copyright Designs and Patents Act 1988 permits an assignor to make a present assignment of future copyright to an assignee. If the assignment document is intended to cover future works, it is essential this language is included.
What involvement could a trainee expect on this document?
Trainees will almost certainly come across documents which contain assignment wording throughout a transactional seat, so it is an important concept to understand.
Trainees in our team will be asked to draft simple copyright assignments, as well as assist in chain of title reviews. Such reviews involve analysing how copyright in a work has passed from person to person to the entity now seeking to exploit the copyright work. For example, on a film transaction copyright subsists in the screenplay. The copyright in this screenplay may have been assigned by the writer to a film producer to develop the film, but it will now need to be assigned to the film production company. You must also ensure that the relevant rights of the director and any other contributors are also appropriately assigned to the film production company.
How fiendishly complex is it?
Again, the complexity of an assignment document will often depend on the grant of rights. An assignee will typically wish to obtain an assignment of the broadest set of rights in the work; typically an assignment of all rights in any and all media, throughout the world, with full title guarantee and for the full period of copyright. The assignor may want the opposite and seek to reserve or limit certain rights for their own exploitation. A simple assignment may only be one page, whereas a more complex assignment may reach tens of pages.
This all means that copyright assignments can be fiendishly complex at times. However, once you’ve read a few documents containing copyright assignment language, the wording will start to become more familiar and easier to grasp.
Lucy Bleach is an associate in the entertainment and media group at Reed Smith.
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