Licensing V. Assignment

Indian law provides intellectual property protection in the form of copyright to the creators of original works of authorship such as literary works (including computer programs, compilations and tables including computer databases which may be stated in codes, words, schemes or even in any other form, including a machine-readable medium), musical, dramatic and artistic works, sound recordings and cinematographic films.

The owner of copyright work can generate monetary profits not only by taking advantage of it himself but also by co-sharing it with others for mutual benefits. This can be done by way of licensing or assignment of copyright. For example, a small business interested in using a copyrighted work in its advertising will need to acquire the rights to that works either by buying them completely and getting an assignment or by buying a license to use the works for a particular purpose.

What is an assignment agreement?

As assignment agreement is a contractual agreement that assigns or transfers intellectual property rights from one person or entity to another. It is also a legal record that verifies the transfer of ownership of intellectual property rights. There are two parties in every assignment agreement, one party is the giving party i.e. assignor and the other is the receiving party i.e. the assignee.

It is the right of the owner of the copyrighted work to assign his copyright to any other person. The effect of the assignment is that the assignee becomes entitled to all the rights related to the copyright to the assigned work. Where the assignee of 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 the copyright for unassigned rights. If the assignee dies before the work comes into existence then the legal representatives of the assignee shall be entitled to the benefits of the assignment.

The Bombay High Court in Video Master v. Nishi Production considered the issue whether the assignment of video rights would include the right of satellite broadcast as well. The Court agreed with the contentions of the 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 19)

Section 19 of the Act states that the assignment of copyright is valid only if it is in writing and signed by the assignor or his duly authorized agent. In assigning the copyright of a work, it should identify the work and the duration and specify kind of rights assigned and territorial extent of such assignment. Additionally, it should specify the amount of royalty payable, to the author or his legal heirs, if any, during the continuance of assignment and the assignment will be subject to revision, termination or extension on terms mutually accepted by the parties.

If the period of assignment is not mentioned in the agreement then it will be deemed to be taken as five years from the date of assignment. If the territorial extent of such assignment is also not stipulated in the agreement, it will be taken as applicable in whole of India.

In Saregama India Ltd v. Suresh Jindal, it was held that according to the provisions of this act, 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. If an assignment is made to the assignee then he is treated as the owner of that copyright.

What is a license agreement?

A license agreement is a contractual agreement that authorizes or licenses another person or entity to use the rights of a protected IP. A license is nothing but a contract that certifies the shared use of IP rights. There are two parties in a licensing agreement. The party that gives the license is called the licensor and the party who receives it is the licensee. The copyright owner also has the right to license the work to more than one person at the same time, meaning it can be granted on an exclusive or a non-exclusive basis. As a result of which licenses are more economical ways for small businesses to use copyrighted content. The conditions essential for grant of such a License are as follows:

(a) The work must have been performed or published in public.

(b) The author must have refused to allow the performance of the work in public or must have refused to allow the republication of the work and because of which the work is held back from the public;

(c) The author must have denied communication of a work to the public by broadcast on terms which the complainant considers reasonable.

Types of Copyright Licensing Agreement

  1. Voluntary License
  2. Compulsory licensing


The term ‘assignment’ and ‘license’ cannot be interchanged. A license is different from an agreement. 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 subject to limitations. It may be for the whole term of the copyright or it can be for any particular part. An assignment transfers an interest and deals with copyright. However, the license does not convey the copyright but only grants a right to do something, which in the absence of license would be unlawful. An assignment transfers title in copyright, a license merely permits certain things to be done by the licensee. The assignee being invested with the title in the copyright may reassign.

Author: Parul Malik, student of VI Semester LL.B., Lloyd Law College, Greater Noida, intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at

Leave a Reply

Your email address will not be published.

3 × 2 =


  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • October 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010