Transfer and Assignment: Everything You Need to Know
A copyright transfer and assignment refers a copyright owner temporarily or permanently transfers part, or all, of his rights to another party.3 min read
2. Copyright Transfer
3. Copyright Assignment
4. The Recordation Process
A copyright transfer and assignment refers to the different ways in which a copyright owner temporarily or permanently transfers part, or all, of his rights to another party.
The U.S. Constitution provides the basis for copyright protection. A copyright refers to the legal rights conferred on a person in recognition of his/her creative work. Copyrights protect original works of IP (intellectual property) whether it has been published or not. Ideas can't be copyrighted — what can be copyrighted is the way an individual chooses to express the creative idea.
The owner of a copyright:
- Retains the right to lease or sell copies of his/her work to others or permit them to perform, record or display it in public.
- Decides whether others can revise portions, or all, of the work and whether they can make copies.
Copyright differs from patents and trademarks since patents provide protection to inventions while trademarks protect phrases/names used to identify specific products or services.
A copyright transfer could be non-exclusive. Licensing agreements are one of the most common forms of a non-exclusive transfer of copyrights.
For example, most computer software sold on the open market are actually transfers of the owner's rights to other individuals for use of the software for a period of time.
However, the owner still retains ownership of the copyright. Licenses are usually non-transferable — meaning that the individual who purchased the software has no right to give, lend or sell the licensed item to third parties without the express consent of the copyright owner.
Unlike a non-exclusive copyright transfer such as a licensing agreement, a copyright assignment is a form of exclusive copyright transfer. Copyright assignments could be made on part or on the entirety of an intellectual work. The copyright can be temporary — meaning that the copyright will return to its original owners after a specified duration.
It could also be permanent — meaning that the person receiving the copyright has the rights to use or distribute the copyrighted material as he or she sees fit. An instance of a permanent copyright assignment is a work-for-hire agreement stating that the copyright of the work belongs to the entity that is purchasing the work for hire and not the entity that created it.
The Recordation Process
The requirements for recordation include all applicable fees, a legible and complete copy of the property to be transferred, and the signature or certified true copy of the individual's signature assigning the copyright. Publishing or registration with the copyright office of the property to be transferred is not a requirement. The United States Copyright Office provides a cover sheet which can be used to submit the work for recordation. Although the use of this sheet is not mandatory, it is encouraged.
Although every assignment is a transfer of interest, not every transfer of interest can be called an assignment. It really depends on the intention of the copyright owner (i.e. the assignor). This means that a copyright assignment is dissimilar to other kinds of transfers such as a subrogation, a novation, or a sublease.
Subrogation refers to a substitution of one party for another. It is the equitable remedy where an individual steps into the position of another to take over all rights to a claim for monetary damages.
A sublease refers to a type of transfer where the tenant retains a partial right of reentry into the leased premises. However, if said tenant executes a transfer of the leasehold estate while retaining no reversionary interest nor right of reentry, such a transfer is called an assignment. Under a sublease agreement, the original tenant isn't released from the stipulations of the original lease. However, in a transfer, both the original tenant and the assignee are bound by the conditions stated in the original lease.
Although a copyright assignment and a novation have negligible differences, the distinction is an essential one. A novation refers to the mechanism whereby a contracting party transfers the entirety of its benefits and obligations to a third party. Under novation, the third party completely takes over the position of the original party under the contract. However, in an assignment, the position of the original contracting parties do not change and the privity of the contract is still in existence between them.
If you need help with transfer and assignment, you can post your legal need on the UpCounsel marketplace. UpCounsel accepts only the top 5% of attorneys/lawyers on its site. Attorneys on UpCounsel come from prestigious law schools like Yale Law and Harvard Law and usually have 14 years of legal experience, including work on behalf of or with companies like Airbnb, Menlo Ventures, and Google.