Sections 18 and 19 of Copy Right Act 1957 is important for discussion.

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Let’s see provision of two relevant Sections.

18. Assignment of copyright.— (1) The owner of the copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copyright either wholly or partially and either generally or subject to limitations and either for the whole of the copyright or any part thereof: Provided that in the case of the assignment of copyright in any future work, the assignment shall take effect only when the work comes into existence.

(2) Where the assignee of a copyright becomes entitled to any right comprised in the copyright, the assignee as respects the rights so assigned, and the assignor as respects the rights not assigned, shall be treated for the purposes of this Act as the owner of copyright and the provisions of this Act shall have effect accordingly.

(3) In this section, the expression “assignee” as respects the assignment of the copyright in any future work includes the legal representatives of the assignee, if the assignee dies before the work comes into existence.

19. Mode of assignment.—[ (1) ] No assignment of the copyright in any work shall be valid unless it is in writing signed by the assignor or by his duly authorised agent

 [(2) The assignment of copyright in any work shall identify such work, and shall specify the rights assigned and the duration and territorial extent of such assignment.

(3) The assignment of copyright in any work shall also specify the amount of royalty payable, if any, to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties.

(4) Where the assignee does not exercise the right assigned to him under any of the other sub-sections of this section within period of one year from the date of assignment, the assignment in respect of such rights shall be deemed to have lapsed after the expiry of the said period unless otherwise specified in the assignment.

(5) If the period of assignment is not stated, it shall be deemed to be five years from the date of assignment.

(6) If the territorial extent of assignment of the rights is not specified, it shall be presumed to extend within India.

(7) Nothing in sub-section (2) or sub-section (3) or sub-section (4) or sub-section (5) or sub-section (6) shall be applicable to assignments made before the coming into force of the Copyright (Amendment) Act, 1994.]]

There is landmark judgment on this issue passed by Karnataka High Court.

Judicial Views:

In K.A. Venugopala Setty vs Dr. Suryakantha U. Kamath, Karnataka High Court  it framed question on oral agreement for Assignment and held that, “from the aforesaid provisions contained in S. 19 of the Act, it is clear that assignment of the copyright must be in writing and signed by the assignor or his duly authorised agent. In addition to this, the assignment must in clear terms state the rights proposed to be assigned and the size of the work. No other mode of assignment is valid inasmuch as when the statute specifically provides that assignment of the copyright must be in writing and signed by the assignor, no other mode of assignment such as oral assignment (sic) is neither permissible nor it is valid. In fact sub-section (1) of Section 19 of the Act in categorical terms states that no assignment of the copy right in any work shall be valid unless it is in writing and signed by the assignor or his duly authorised agent.

Supreme Court in Indian Performing Right Society Ltd Vs. Eastern India Motion Pictures Association It was held that, the composer  can claim a copyright in his work only if  there  is  an express agreement between him and the owner of the cinematograph film reserving his copyright. Though section  18 of  the Act confers power to make a contract of  assignment. the power can be exercised only when there is an existing or future right to be assigned and that in the circumstances of the  present case, assignment, if any, of the  copyright  in any future work is of no effect.

Delhi High Court in 2008 (37) PTC 587 (Del) Phonographic Performance Ltd., v. Hotel Gold Regency & Others in which it is observed on the provisions of Copy Right Act, 1957 that the parties can only agree to do what the law permits they to do and if they agree on something which is not permissible under law, such an agreement to that extent would not be enforceable. In view of the provisions under Sections 18 and 19 of the Copy Right Act 1957 the assignment of copy right can only made by writing and if it is made other than writing, it is not at all enforceable in law. When the statutory requirement is not fulfilled, the agreement whether orally by any other means is not sustainable. See also Mr.S.Vijayaraghavan vs Mrs. Sellappappa Keeran

Conclusion:

The copyright in a subsisting work created by the statute is the core object of the Act, and the primary concern of the Act is to provide protection to the owner of the copyright from infringement thereof. As to what constitutes an infringement of copyright has been spelt out in sufficient detail under Chapter XI of the Act. Chapter XII provides for civil remedies to the owner of the copyright against a person who commits infringement of that right. There cannot be oral assignment of Copy Right under Copy Right Act,1957.

Shruti Desai

3rd December,2020