Copyright: Assignments

This article may be read in conjunction with 3 previous articles:

• Copyright Authorship Basics
• Joint Ownership
• Works for Hire

In these articles, I have discussed how someone comes to "own" a copyright in a work. 

The default scenario is one in which the author of the work is the sole creator of the work.  In that case, that person owns the copyright.

If an author works in conjunction with others, they all contribute copyrightable material and they all intend to create a joint work - those people may be "joint owners."

If an author creates a work for his or her boss and doing so is within the scope of employment OR if an author is commissioned to create a work, there is a signed agreement and the work falls within 1 of 9 categories - the work may be a "work made for hire" and the commissioning party owns the copyright.

This brings me to the final instance in which the owner of a copyright may be someone other than the person who created the work – copyright assignment.

Who Can Assign Copyrights?

An original author of a copyrighted work can assign their copyright to a third party.

If an employer owns a work because their employee created it within the scope of employment – the employer can assign their copyright to a third party.

If a commissioning party owns a work because the work falls into 1 of the 9 categories and there was a signed, written agreement that the work would be a “work for hire,” the commissioning party can assign their copyright to a third party.

Finally, if all joint authors of a jointly created work agree – they can assign their copyright to a third party.

In short, any author (or all joint authors) can assign their copyrights.

Remember though – once you assign your copyrights, you can no longer freely exploit the work. You will need permission from the person you assigned the rights to.

What Can You Assign?

It is also important to remember that you do not have to assign all copyrights – you can assign individual aspects of the copyrights according to §201(d) of the Copyright Act.

For example, you can assign:

• individual copy rights (distribution, reproduction, display, adaptation, performance),
• geographic rights (“only in California”) or
• temporal rights (“for 20 years”).

Assignments are not valid, however, unless they are in writing and signed by the owner of the rights being conveyed or the owner’s agent. (§204(a))

Recording Assignments

If you are the assignee (recipient) of an assigned copyright – it is probably wise to record it with the Copyright Office to put others on notice.

If you do this within 1 month after the assignment, you will be protected from subsequent assignments by the original owner.

Another reason for recording your assignment is that you can even prevail over an earlier assignment that was not recorded. This can only happen, though, if your later assignment meets 2 requirements:

1. You received your assignment in good faith without any notice of the earlier assignment.
2. You paid money or something of value for the assignment, or you promised to pay royalties for the assignment.

Terminating Assignments

An author who assigns his or her copyrights to another also has the right to terminate the assignment.

For assignments made after January 1, 1978, Section 203 of the Copyright Act states that authors have the right to terminate the assignment within a 5 Year Window starting 35 years from the date of the assignment.

(There are special rules for terminating assignments made before January 1, 1978.  See Section 304 of the Copyright Act for more information.)

Thus - assignments made in 1978 cannot be terminated until 2013.

Terminating copyright assignments is a complex aspect of copyright law. 

Check back with MELON for a full article on terminating copyright assignments.

edited by Howie Cockrill, Esq.