IVAN HOFFMAN, B.A., J.D.
What May Be Assigned
Copyright is not a monolithic concept. A copyright bestows on the owner a “bundle of rights,” to use the oft-used metaphor, and that bundle includes the rights to make copies, make derivative works, display, perform and many other rights. An assignment can be as to some or indeed all of the rights in copyright including not merely the above rights, but the above and many other rights within certain territories, for certain times and other such forms of grants and licenses. And while an assignment of non-exclusive rights can be made without a writing, a procedure which should *never* be followed, in order to transfer exclusive rights the assignment must be in writing and signed by the owner of those rights or that owner’s duly authorized agent. Copyrights can also be transferred by operation of law (such as a judgment after a civil action) or they can be bequeathed via will or intestate succession. However I wish to focus, in this article, on voluntary transfers within a commercial context since that is the most frequent experience many will have.
In the instance where there are joint or co-owners of a work, each of those joint or co-owners has the non-exclusive right to transfer right in the entirety of the work but any such transfer is subject to the same rights of the other co-owner to do so. The foregoing is in the absence of a written and fully signed collaboration agreement that sets forth a different structure for the relationship. Indeed, in that agreement it is highly recommended that one of the parties be granted the sole and exclusive right to handle and administer the rights in the joint work, subject of course to a full accounting to the other. This makes it much more efficient and less cloudy when a rights transfer of some sort is involved. Furthermore, it is essential when taking an assignment from a co-owner that the document be in writing and signed by both co-owners otherwise the Assignee may find that there are competing assignments made since without that written assignment, any assignment can only be non-exclusive.
Documents that can and should be in writing and recorded are any contracts, licenses, mortgages, interests in copyrights such as for security purposes (these also may be subject to state laws governing the filing of appropriate notices under the state’s laws such as the Uniform Commercial Code or other statutes) and other documents regarding rights or interests in copyrights, whether or not those copyrights relate to published or unpublished works. As an alternative to filing the entirety of a document, the Assignee can file a short form summation of the underlying document.
Advantages of Recordation
As I indicated above, it is to the distinct advantage of the Assignee to have the assignment recorded. While the document will be binding as between the owner-transferor subject to its terms, the advantages of recording the document give the Assignee potential rights as against third parties who are not parties to the transfer and these rights can be very important. These are some instances:
1. In the event the owner-transferor (or a collaborator, as discussed above) has made multiple transfers of the same rights (including both further exclusive as well as non-exclusive transfers), the document first recorded may create a priority among the various assignees (not to mention of course any rights as against the owner-transferor in the transfer document about restrictions on assignments, warranties etc.). There are time limits to when the recording must take place and if it is not so recorded, the subsequent transfer may in fact take priority if it is first recorded and otherwise satisfies the conditions of the copyright and other laws.
2. Under appropriate circumstances, the filing and recording of the transfer document establishes what the law refers to as “constructive notice” to the public about the existence and content of the recorded document. In this sense, it is similar to the impact recording a document of title to real estate has. What this means is that, under proper circumstances, the recorded document prevents third parties from successfully claiming they did not know of the existence of the transfer or of the Assignee’s rights in the copyright and this may have an impact on remedies such as damages. An innocent infringer is subject to less damages than one who acts with knowledge. In this regard, it is similar to putting a copyright notice on the work. One important qualification here is that the recorded document will only provide such constructive knowledge if the underlying copyright has also been registered. This means that both the underlying work and the assignment should both be recorded.
The rules and statutes surrounding the recording of transfers in copyrights are a bit complex but under any circumstances, it is very important that the Assignee obtain a valid, written and signed document of transfer and that the same be recorded very promptly in order that that Assignee’s rights be most protected.
© 2001 Ivan Hoffman