By: Darshi Sanghvi
What is copyright licensing?
In India, copyright is known by and large as an ownership right offered by law to creators, for instance, of artistic work, cinematography, literature and sound recordings. In other words, it is a protection provided to creators of work in the form of an acknowledgement for their intellectual contribution. The primary objective of any copyright is to protect the interest of the creator, besides the dissemination of knowledge that is carried out. An often undiscovered fact is amidst other benefits; economic rights also enable a creator to reap economic benefits from his intellectual creations. As per the Copyright Act of 1957, there are different rights in place, pertaining to the nature of the work undertaken. It is further pertinent to note that it is the exclusive right of the owner to do or authorise doing any of the acts covered thereon.[1]
Learn more about Intellectual Property Laws with Enhelion’s Online Law firm certified Diploma course by Scriboard Advocates and Legal Consultants!
The copyright framework permits not only the communication of work, but also its reproduction, translation and adaption. Thus, the owner of the copyright work is given the opportunity of generating wealth not just by exploiting it himself, but also by sharing it with the public at large for mutual benefits. This is where copyright assignment and licensing come into play. A distinction may be drawn between licensing and assignment, in terms of the fact that through licensing, the licensee is granted rights on the basis of certain conditions, however their ownership is not vested in the licensee. On the other hand, in an assignment, the assignee is regarded as the owner of the interest assigned to him.
Through copyright licensing, the licensor grants a license to the licensee, thereby authorising the use of the said copyright by such a licensee. The licensee is thus provided with the adequate protection and spared from the claim of infringement unauthorised use that may be made by the licensor otherwise.
Furthermore, the term ‘Exclusive License’ is elaborated in the Copyright Act to comprise of licenses that confer, on the licensee or any other person duly authorised by him, any right pertaining to the copyright of the work, excluding all the other persons.[2]
In exchange of a consideration, a copyright owner may choose to transfer some or all of his rights to others for the purpose of seeking monetary benefits. A license may either be said to be exclusive, or non-exclusive.[3]
Learn more about Intellectual Property Laws with Enhelion’s Online Law firm certified Diploma course by Scriboard Advocates and Legal Consultants!
What is a copyright licensing agreement?
In order to initiate licensing, a copyright owner enters into a contract, widely known as the Copyright Licensing Agreement. Through such a contract, the copyright owners permit another individual or organization to use their work in several ways, for instance:
- For reprinting
- For distribution
- For using it over a specified period of time[4]
In a nutshell, it is an agreement that throws light on how, why, when and where a copyrighted work can be capable of being used.
Types of copyright licensing agreements
- Voluntary License – The author, also known as the Copyright owner, is said to have exclusive rights with regard to his creative work and has the sole right to grant license in that respect. The Copyright Act 1957[5] provides that the owner of the copyright may grant the interest in his copyright through a license in writing, which must be signed by him or an agent duly authorised by him to do so. Such a license can be granted with respect to existing as well as future work. A voluntary license may be exclusive, non-exclusive, sole or implied.
- Compulsory License[6]– As a part of the Berne Convention[7], India has taken a step towards the incorporation of a compulsory license under the Copyright Act 1957. The term “compulsory license” is used to mean a statutory license that provides an exclusive right to do an act without the prior permission of the copyright owner/ author. Section 31 covers the compulsory licensing of copyrighted work that is withheld from the public.
Important clauses to be included in Copyright Licensing Agreements
An agreement begins by stating the date and place of its execution and further proceeds towards identifying the contracting parties. This lays the foundation for the following clauses that are particular to the property or rights that are granted.
- Recitals: This clause is considered essential for any form of agreement as it is used to provide a gist about the contracting parties. This clause sets forth the relationship of the parties up to the stage before which the agreement came into being. A well-drafted recital plays its part in clearly expounding the context of the agreement to any reader, thus enabling a person unknown to the agreement to comprehend it better. Nevertheless, it also clarifies the fact that the binding clauses of the agreement are to be included in the coming clauses and not the recital itself.
- Definition: This clause is equivalent to a dictionary for the purpose of the agreement. It elucidates all the terms of immense importance to the agreement, which play an important role in determining the rights and obligations of the parties. Definitions can additionally be used for the purpose of restricting the scope of the agreement. A precise description of the terms like “licensed patents”, “use”, “royalty”, “revenue” etc. can be found within this clause.
- Rights Grant/ Grant of license: This clause plays a significant role in enabling the parties to understand the extent to which the license extends. The Rights Grant clause irons out the significance of the rights granted by the Licensor to the Licensee. The said clause states several points like the “Exclusivity of the license”, “right to use”, “restrictions on use” and “limitations- geographical and political”. Most importantly, it acts as a guide by specifying “who gets what”. The clause clarifies that the Artist retains his right to reproduce his work and that the license remains with the artist and does not affect the ownership of the copyrighted work.
- Indemnification: In the event of any litigation risk or loss arising on one party as a result of the act of another or due to the existence of any defect in the license granted or the ownership of the copyright, it is essential to discuss the specifics of who will be indemnified and who will be the indemnifier if such a risk comes true. In other words, this clause provides the right to the party suffering due to the act of another party to call upon him to indemnify the suffering party for any loss that may have incurred.
- Consideration: Consideration forms an essential part of any contract, unless it is expressly mentioned otherwise. The consideration clause of a license agreement cites the amount of consideration that a licensee is required to pay to the licensor, in the form of royalties. The clause further sets out the method by which such royalties are to be calculated. According to most of the agreements, the royalties paid are based on the profit made by the licensee by exploiting the license. Besides such a royalty, the licensor is also entitled to demand a fixed license fee to be paid, which can be taken separately from the royalty. Both, the fee and the royalty depend on a number of factors, for instance, the use of work, the Artist’s reputation, the scope of the license, so on and so forth. The licensor also possesses the right to formulate a condition obligating the licensee to keep track of the sales made by him and to show the licensor such audit reports that shall be prepared by him.
- Obligations of the Parties: Every party contracting under a license agreement has certain obligations towards each other which differ and are over and above the aforementioned clauses. These obligations involve making disclosures with respect to the information which is required to be known by both the licensor and licensee; in case the grant is of an exclusive license then the licensor agrees not to exploit the exclusivity granted to him thereunder; and may also contain a clause that obligates the licensee to exploit the copyrighted property in a manner that enables him to make the most of the license granted to him, much more so in case of exclusive license which exclusively grants him the license to exploit particular copyrighted work.
Learn more about Intellectual Property Laws with Enhelion’s Online Law firm certified Diploma course by Scriboard Advocates and Legal Consultants!
- Alterations and modifications: Alterations or modifications of any sort that may be made by the licensee must first be granted under the rights grant clause. If, upon granting any such right, modifications are made in the work, then the licensor might demand to be the owner of such property post the requisite improvement and shall then assign such improved property under another license with identical conditions as the previous agreement. Under certain circumstances, the licensee might seek to retain the ownership of the improved property, and then the licensor might obtain a license from the licensee for the purpose of including the modified part in his original work.
- Term and termination: This clause lays down the period for which a license is granted to the licensee, the focus being on the date when it comes into force and the date on which it ceases to exist. Such a license possesses the scope of being renewed from time to time, subject to the conditions as specified under the agreement or at the will of parties. Term of the license is finalised by the concerned parties bearing in mind their respective benefits. Termination of an agreement is by and large based on two factors: at convenience and for cause. More often than not, parties don’t prefer granting the opposite party a right to terminate the contract at convenience as it may lead to a loss to the other party who might have invested a huge amount of money with a view of exploiting the licensee or the granted rights. One party is entitled to immediately terminate the agreement, if the other party does an act that is considered as a breach of any term of the agreement. This clause also puts out the consequences of termination of the license for any reason whatsoever. Nevertheless, in case of termination of the agreement at convenience, the party bringing about the termination of the agreement can, under obligation, be compelled to give a prior notice of certain period before such termination is implemented.
- Dispute Resolution: In case of any dispute arising between the parties with regard to any breach of the agreement or any other reason pertaining to the license. Majority of the agreements elucidate the process to be followed in case of a conflict. The form of dispute resolution that must be opted for, can be decided at the discretion of the parties, which can be chosen from normal litigation, arbitration, mediation, and conciliation. The parties are at their will to decide the manner of dispute resolution and the law governing them.[8]
This is a non-exhaustive list of clauses essential to the agreement entered into between a copyright owner and the person seeking rights to reproduce or perform that copyrighted work. Copyright license agreement should be drafted, bearing in mind the protection of the rights of the Licensor as well as the Licensee. Furthermore, each clause must stipulate the rights, obligations, and limitations expressly, such that any future misunderstandings and misconceptions can be avoided on the part of the parties.
Learn more about Intellectual Property Laws with Enhelion’s Online Law firm certified Diploma course by Scriboard Advocates and Legal Consultants!
[1] Section 14 of Copyright Act 1957
[2] Section 2(j) of Copyright Act 1957
[3] https://ssrana.in/ip-laws/copyright-law-india/copyright-licensing-in-india/
[4] https://vakilsearch.com/advice/copyrights-in-india-how-to-assign-and-license-a-copyright/
[5] Section 30 of Copyright Act 1957
[6] Section 31 of Copyright Act 1957
[7] Article 9(2) of Berne Convention
[8] https://www.gspkendra.com/2018/12/27/most-important-clauses-in-a-copyright-licensing-agreement