retroactive copyright assignment

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Can copyrights be retroactive?

On behalf of EcoTech Law Group, P.C. posted in Copyrights on December 12, 2018.

In some situations, the phrase “Better late than never” is appropriate. Registering a piece of intellectual property is not one of them. While it might seem rational to be make the claim that a photograph, once taken, is a static piece of artistic expression. As such, it would seem logical to argue that any use of it without permission constitutes a violation of the photographer’s work.

That is not necessarily true as one legal case highlights. And the lesson to glean from the matter, according to many legal observers, is that there is value for a photographer, or any creative individual, to establish an enduring relationship early with an intellectual property attorney to obtain legal protections from the outset and to  defend them to the maximum extent  allowed over time.

What you don’t want to happen

The consequences of not acting immediately in this regard is presented in a  recent copyright case  out of the U.S. District Court for the Central District of California. The issue in question was a petition by a defendant online company that allegedly had infringed on the plaintiff’s work in violation of the Digital Millennium Copyright Act.

The case started in February 2018 with the plaintiff’s suit claiming that the defendant firm had copied photos he had produced and published on his own website. The initial suit was dismissed for technical reasons with notice given to the plaintiff that he could amend the suit and refile, which he did. But the defendant moved for and won dismissal in the second instance, as well.

The defense argument

In its second request for dismissal, the defendant argued the plaintiff failed to present sufficient facts to support the alleged infringement, including the date of the alleged violation and the dates when copyright registrations had been issued. The court agreed and dismissed the matter again.

To be clear, the district court said that a review of URL addresses showed there had been multiple infringed uses of photos dating back years before the copyright registrations. And because of the plaintiff’s failure to account for all the necessary dates as prescribed by law or legal precedent, he lost standing to seek damages.

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US Appeals Court invalidates retroactive assignments of copyrights

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Ken Leichter, US Appeals Court invalidates retroactive assignments of copyrights, Journal of Intellectual Property Law & Practice , Volume 3, Issue 5, May 2008, Pages 287–289, https://doi.org/10.1093/jiplp/jpn049

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A unanimous panel of the US Court of Appeals for the Second Circuit held that a ‘retroactive’ assignment of ownership from a co-author of a copyright to an alleged infringer cannot defeat the other co-author's accrued infringement claims. The court also held that a written agreement could not ‘ratify’ an earlier oral agreement to transfer ownership.

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Assignment of Copyrights & Legal Implications

Copyright gives authors a bundle of personal property or economic rights in an original work of authorship. These rights include the rights to reproduce, create derivative works, distribute work to the public, publicly perform a work, publicly display visual works, and digitally transmit sound records. They belong exclusively to a copyright holder.

Usually, the copyright holder is the person who created the work. However, any of these economic rights, or any part of these economic rights, can be transferred. Under the Visual Artists Rights Act (VARA), an artist’s moral rights in a work of fine art can be waived but not assigned.

An original owner who assigns their copyright to someone else will not retain any right to control how the work is used.

The transfer of economic rights may be on an exclusive basis, which requires a written agreement, or a non-exclusive basis, which does not require a written agreement. Most commonly, this transfer is accomplished by assignment or license. Unlike a license in which the copyright owner maintains their ownership, an assignment is similar to a sale. The original copyright owner sells the rights to a third party and cannot control how the rights are used, just as they would not be able to control how personal property that they sold was used once it was transferred.

Generally, a license is preferable if a copyright holder expects to continue exercising interests and control over the work. For example, if you assign your copyright in a song to a music producer, the decision about whether to allow a film studio to use your song in a film will belong to the producer, not to you. If you license your copyright in a song in a limited capacity to a music producer, however, you will continue to be able to license your copyright in the song to a film producer.

Assignments can be used for many different purposes, such as security for debt, as an asset passed to heirs, or as part of the distribution of assets after a bankruptcy proceeding. Once you assign your rights to somebody else, however, you are permanently giving away your right to control the work. That means if you try to exercise any of the rights you have assigned, you are committing copyright infringement even though you created the work. If you assign your copyright to somebody else and regret the loss, you may be able to buy your copyright back from that person, but whether or not to sell it back to you is up to the assignee.

How Is Copyright Assigned?

Under Section 204 , a transfer of ownership is only valid if the instrument, note, or memorandum of transfer is in writing, signed by the copyright owner or their duly authorized agent. Generally, a certificate of acknowledgment is not required for the transfer to be valid, but it can be used as prima facie evidence that a transfer was executed if it is issued by someone authorized to administer oaths in the United States or, if the transfer is executed abroad, if the certificate is issued by a United States diplomatic or consular official, or a person authorized to administer oaths who also provides a certificate.

Formally recording an assignment with the Copyright Office is not required but can be advantageous.

You do not have to record an assignment in order to assign the interest. However, there are advantages to recording the assignment, such as creating a public record of the transfer details, giving constructive notice to members of the public, establishing priority of rights when there are conflicting transfers of ownership, validating the transfer of the copyright against a third party, or in some cases perfecting a security interest.

Last reviewed October 2023

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The Past Can Come Back to Haunt You: The Danger of Backdated Copyright Assignments

Copyright assignments are often back-dated or retroactive. A Federal Court decision – Harmony Consulting Ltd. V. G.A. Foss Transport Ltd. , 2011 FC 340 , aff’d 2012 FCA 226 – demonstrates the dangers of such assignments, and two (2) questions anyone relying on such an assignment should ask.

In Harmony Consulting , the plaintiff Harmony claimed ownership of copyright in certain computer software programs, and alleged that Foss Transport, Mr. Gordon Foss and Mr. Cristello infringed Harmony’s copyright in the programs. Mr. Foss was Foss Transport’s president and principal shareholder, while Mr. Cristello was Foss’ Vice-President and a minority shareholder. The programs were created by a Mr. Chari, a computer programmer who was Harmony’s sole shareholder and director. Mr. Chari was not a party to the Harmony Consulting litigation. His authorship of the programs was not in dispute.

In early 2000, Foss Transport considered modernizing the dispatching and invoicing programs of its petroleum transport business. Mr. Foss was introduced to Mr. Chari during this process. Subsequently, Foss Transport engaged Harmony to implement an electronic dispatch and invoicing system. Foss Transport continued to pay Harmony to modify the programs used to operate the system, and also paid Harmony to develop new applications.

While the relationship between Foss Transport and Mr. Chari, and subsequently Harmony, was initially cordial, the relationship subsequently disintegrated and was terminated after Mr. Chari planted two “time bombs” in the programs. The first time bomb in April 2004 prevented Foss Transport from invoicing its customers. The second time bomb in May 2004 prevented Foss Transport from dispatching orders to its customers. Both malfunctions negatively impacted Foss Transport’s ability to operate its business.

Foss Transport remedied the time bombs, and made other medications to the programs after the relationship with Harmony was terminated. Foss continued to use some of the programs created by Mr. Chari until 2007.

Harmony sued Foss Transport for copyright infringement in July, 2005, alleging that Foss Transport infringed Harmony’s copyright in the programs. Harmony also alleged that Mr. Foss and Mr. Cristello copied the programs onto their personal computers, and authorized Foss Transport to infringe Harmony’s copyright.

Did Harmony Own Copyright in the Programs? 

As part of their defence, the defendant’s challenged Harmony’s claim that it owned copyright in the programs. There were five (5) programs at issue in the litigation, one of which was called Petro Dispatch 2000. The retroactive assignment of the Petro Dispatch 2000 software, and the Court’s findings on that assignment, are the focus of this article.

Harmony was incorporated March 16, 2000, after the Petro Dispatch was created. The evidence included a retroactive assignment, in which Mr. Chari assigned copyright in Petro Dispatch 2000 to Harmony upon Harmony’s incorporation on March 16, 2000. The only evidence regarding this assignment came from Mr. Chari, whom the Court found was not a credible witness. Mr. Chari testified that upon Harmony’s incorporation he made a “mental assignment” of the copyright in Petro Dispatch to Harmony. Because Canada’s Copyright Act dictates that copyright assignments are only valid if they are in writing (Copyright Act, section 13(4)), the Court found that the mental assignment, and therefore the subsequent retroactive assignment, were both invalid.

Lessons to be Learned

Harmony Consulting is instructive on scrutinizing with retroactive or back-dated copyright assignments. Those reviewing such assignments – e.g. in the context of copyright litigation or due diligence – should ask whether there was ever a written assignment of copyright, and if so, why the retroactive/backdated assignment was necessary. The answers to those questions could reveal defects in the retroactive/backdated assignment that could be material for e.g. in a copyright dispute or acquisition.

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IP Assignments: Nunc Pro Tunc Assignments in Patent, Trademark, and Copyright Law

March 22, 2023 By John DiGiacomo

Like any valuable business asset, patents, trademarks and copyrights can be sold, assigned and licensed. Indeed, assignment and licensing is common with respect to intellectual property. In legal terms, an “assignment” is a transfer of ownership, either full ownership or partial. In basic terms, a nunc pro tunc is a type of assignment that is backdated. Nunc pro tunc is Latin meaning “now for then.”A nunc pro tunc assignment will be signed on a particular date, but parties will deem the assignment to have been granted on some earlier date.

For a Trademark registered on May 1, 2017, an example of how a nunc pro tunc assignment provision might look like this:

Now, therefore, for good and valuable consideration, ASSIGNOR agrees that ASSIGNOR hereby assigned unto ASSIGNEE nunc pro tunc effective as of October 1, 2020, all right, title and interest in and to the May 1, 2017 trademark described herein … In testimony whereof, ASSIGNOR, has signed this instrument this 1st day of October 2020.”

In this example, the assignment is deemed to have been granted on May 1, 2017, but has an effective date of October 1, 2020.

In business terms, nunc pro tunc assignments are often used where past IP assignments are made verbally or via conduct. In the rush to get IP “to market,” it is not uncommon for assignments to be granted, but not reduced to writing. Nunc pro tunc assignments are also commonly used to bridge gaps in the “chain of title” for IP. This can happen when corporations and/or assets are sold, but proper paperwork is missing. Purchasers believe that they have ownership to certain patents, trademarks, or copyrights, but the missing documents cause “gaps” in the chain of title. These “gaps” can be cured by obtaining a nunc pro tunc assignment from the original owner of the IP. In the same manner, nunc pro tunc assignments are often used as part of settlements for litigation involving claims of patent, trademark and/or copyright infringement or disputes over ownership

For litigation purposes, nunc pro tunc assignments are often used to give a party legal standing to initiate litigation. To have “standing” to initiate litigation, a party must have some ownership interest in the patent, trademark or copyright. However, for courts, “standing” is based on the effective date of the assignment, not the earlier date listed in the nunc pro tunc assignment.

However, for other purposes, the earlier assignment date listed in the nunc pro tunc assignment is the credited date. For example, an assignment of a registered trademark must be recorded with the US Patent & Trademark Office (“USPTO”). This is done electronically. The assignment must be uploaded along with the proper recordation form and applicable fee. For the USPTO, the trademark assignment is based on the date designated for the assignment rather than the date of execution of the nunc pro tunc assignment.

So, when should you use a nunc pro tunc assignment for a trademark? The most common situations include:

• When a trademark was previously assigned but not recorded – Sometimes, an assignment of trademark ownership may occur but the paperwork is not properly filed or recorded with the United States Patent and Trademark Office (USPTO). In this case, a nunc pro tunc assignment can be used to correct the oversight and retroactively assign the trademark to the new owner.
• When the original assignment was not effective – A nunc pro tunc assignment can also be used to correct a defective assignment. For example, if the original assignment was not properly executed or lacked essential terms, the nunc pro tunc assignment can be used to correct those issues and make the assignment retroactively effective.
• When there is a change in business structure – A nunc pro tunc assignment may be necessary when there is a change in the business structure of the trademark owner, such as a merger or acquisition. In this case, the new owner may need to retroactively assign the trademark to themselves to ensure that they have proper ownership and control over the trademark.
• When there is a dispute over ownership – If there is a dispute over the ownership of a trademark, a nunc pro tunc assignment may be used to resolve the issue. This can occur when multiple parties claim ownership of a trademark, or when there is confusion over who actually owns the trademark.
• When the trademark was abandoned – In some cases, a trademark may have been abandoned by the previous owner. If this occurs, a nunc pro tunc assignment may be used to assign ownership to the new owner retroactively. However, it is important to note that there are strict time limits for filing a nunc pro tunc assignment in these cases.

It is important to note that a nunc pro tunc assignment should only be used when there is a genuine need to correct an error or oversight in the assignment of a trademark ownership. It is not a tool to be used to cover up illegal or unethical behavior.

In addition, a nunc pro tunc assignment can be a complex legal process that requires the assistance of an experienced trademark attorney. The attorney can help ensure that the assignment is executed properly and in compliance with all legal requirements.

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For more information, contact the IP and  business lawyers at Revision Legal at 231-714-0100.

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Ownership transfer of intellectual property rights in general, what are assignments of intellectual property rights.

An assignment is the act of transferring ownership of the Intellectual Property Right from the assignor to the assignee. Often, the assignment document is simply referred to as the “assignment”. The two parties can be individuals or legal entities. Intellectual Property Rights typically need to be assigned on a country by country basis complying with the various national assignment requirements. However, international or regional Intellectual Property Right applications often can be assigned centrally before the respective international or regional authorities such as the respective international or regional patent or trademark offices. Examples for such authorities are the International Bureau handling International Patent Applications under the Patent Cooperation Treaty (PCT), the European Patent Office (EPO) handling European Patents and the European Union Intellectual Property Office (EUIPO, formerly named OHIM) handling European Union Trademarks (EUTM) and Registered Community Designs (RCD).

What IP rights can be assigned?

Most Intellectual Property Rights can be freely assigned in part or in its entirety between any assignor and assignee. Certain partial rights may be assignable separately and independently from the underlying IP right, for instance the priority right determining the time rank of an IP right.

What is required for valid assignments of Intellectual Property Rights?

National laws, rules and formalities apply for recordation of country by country assignments by a variety of national, regional or international recording authorities. When looking at a bigger Intellectual Property Rights family, a one fits all assignment fulfilling this wide variety of requirements is virtually impossible. Typically, national representatives should be retained for complying with this variety of requirements. If possible, some international or regional Intellectual Property Rights should be assigned centrally while still pending for avoiding the hassle of dealing with such wide variety of national requirements that may be required after the issue date of the international or regional Intellectual Property Right.

What are typical form requirements for assignments?

Assignments typically need to be made in writing and typically require the signatures of both the assignor and the assignee. In case of a legal entity, the signatory needs to be entitled to sign on behalf of that legal entity, typically an officer of the legal entity, or needs to have received the signatory authorization from such officer. Although in some countries the signature of the assignor only may suffice, more commonly, the signatures of both parties are required. It is good practice to assume that both signatures are required everywhere. The signatures are typically required in ink. As an alternative to filing the original with the signatures in ink, an increasing number of authorities have waived the requirement to file the original but accept copies, or when filed electronically, scans of the assignment document signed in ink. If not filed, the original should be kept in a safe place. Some countries may require notarization and maybe even require some form of legalization, e.g. “Apostille”, for effectively recording an assignment.

What assignment document content is typically required for assignments?

In most countries, the assignment document just identifies the right that is assigned and the parties, but some countries require a specific text using specific language. From a practical standpoint, a good way of looking at assignments from a formal point of view is to treat these like a contract, although the assignment may have comparatively little content in comparison to other types of contracts. A few authorities may require the use of a specific form.

Why are assignments important?

If the assignee likes to exercise certain rights, the assignment must be recorded. A proper assignment and recordation thereof may for instance be required for the assignee = applicant to act in the proceedings before the various authorities. The failure to properly assign and record may also result in enforceability delays of the assigned IP right by the assignee until recordation has been finalized. In some countries, this may cause significant enforceability delays. Also, a proper assignment is required for claiming priority rights. Further, it is helpful for the assignee to become an assignor for yet another assignment after the first assignment is recorded.

What is a “nunc pro tunc” assignment?

A nunc pro tunc assignment is an assignment executed at a later date but taking effect at an earlier date specified in the nunc pro tunc assignment. In some countries, such nunc pro tunc assignments are recorded, in others no such retroactive effect assignments are recorded.

What are the most common assignment deficiencies?

Although the assignment document has only limited content a variety of deficiencies may occur. Just to mention a few: The assignor may not be the owner of the assigned IP right at the date of assignment; the incorrect IP right is assigned; at least one of the signatories lacks signatory authorization; a required language or form is not used; certain assignment document form requirements are missed, formalities such as signatures in ink, notarization or legalization are missed; some recordation form requirements such as request and recordation fee payment are missed; the signature by one party such as the assignee is missed; the parties are not properly defined to be clearly identifiable, for instance due to incorrect name and/or address; or the date of the assignment is too late for taking certain legal effects.

What are the legal consequences of a deficient assignment?

Although it may be possible to overcome some consequences by correcting deficiencies without losing the initial assignment date, or time permitting simply by executing and recording a new assignment, in some cases these remedial measures may come too late. For example, for validly claiming priority rights, the priority right needs to be actually owned by the applicant of the later application within the priority time period. Unless recognizing nunc pro tunc assignments, an assignment after the priority period may come too late. The risk with assignments is that some deficiencies may not be noticed until it is too late to fix the problem. For this reason, assignment formalities should be observed scrupulously.

About author Alexander Schlee

Alexander Schlee is a registered German, European and US patent attorney and holds the German equivalent to a master’s degree in Mechanical Engineering. He is the founder of Schlee IP International P.C. in 2007 succeeding a Los Angeles branch office he founded as a former equity partner of Viering, Jentschura & Partners in the year 2000. Among other volunteer activities he served on the State Bar of California International Law Section Executive Committee and is a former president of the Los Angeles Intellectual Property Law Association LAIPLA. Alexander Schlee assists particularly clients having strong international Intellectual Property interests, among these especially clients doing business between the United States and Germany.

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Guest Post: Mr. Jagdish Sagar-Copyright Amendment Act, 2012- prospective or retroactive application?

I am pleased to bring to you our next guest post by Mr. Jagdish Sagar.

Mr. Jagdish Sagar is a practicing IPR attorney in the Delhi High Court since 2006; initially in Anand and Anand, first as Consultant, then as Partner. Since December 2011, Mr. Sagar has been practicing independently in intellectual property, writ jurisdiction, appellate criminal matters and general legal practice. Mr. Sagar was originally a senior civil servant (member of the Indian Administrative Service) from July 1966 to February 2004, acquiring varied legal and managerial experience including criminal and writ litigation, and extensive exposure to copyright law as Joint Secretary in the Government of India in the late 1980’s and early 1990’s. He was the sole copyright law representative from India at the TRIPS negotiations and was closely involved in the amendments that became the Copyright (Amendment) Act 1994. Mr. Sagar had earlier done a guest interview for us which can be viewed here .

One of the most widely debated topics on the Copyright Amendment Act, 2012 has been with respect to its application i.e. whether the Amendment applies prospectively only with respect to the works assigned post the Amendment Act coming into effect (such as works of films like Padmaavat, Bajrangi Bhaijaan, etc) or retroactively i.e. with respect to works assigned even prior to the Amendment but utilized post Amendment (such as works of films like Zanjeer, Sholay, Zindagi Na Milegi Dobara, etc). While the popular theory is that the Amendment has retroactive application owing to the legislative intent [1] behind bringing the Amendment, Mr. Sagar argues that the Amendment is strictly prospective, and no other interpretation is possible. In this post Mr. Sagar has objectively analysed the key legal provisions while deriving on the conclusion that the Amendment has prospective application i.e. it applies to works assigned only post June 21, 2012.

Copyright Amendment Act, 2012- prospective or retroactive application?

-Jagdish Sagar

A question that must have been put to every copyright lawyer at one time and another is whether the 2012 amendments to the Copyright Act apply prospectively, retroactively or retrospectively. The question is raised most often in connection with the royalty right created by insertion of the third and fourth provisos to section 18(1) of the Act, together sections 19(9) and 19(10), which is what I shall discuss.  ( I have also heard the question raised in connection with Section 52, but we shall leave that for another time .)

The relevant provisions of sections 18 and 19 are extracted below:

Before we go further, we need to consider how the above provisions of sections 18 and 19 work together; we are bound to reconcile them if at all possible. Except in regard to the quantification of royalty (“share on equal basis” and “equal share”) the provisions, though not well-drafted, can be reconciled. Section 18 governs “assignment of copyright” and section 19 governs the “mode of assignment”.  The principal provision of section 18(1) confers on a copyright owner the right to assign copyright in whole or in part. The third and fourth provisos have to be read as creating (obliquely, by necessary implication) a personal right to royalty de hors copyright which comes into existence after copyright in the work has been assigned; then, having created this right, these provisions put a fetter on the author’s right to assign it. ( I shall say more on the relationship between copyright and this personal royalty right later .)

Section 19 is not concerned with the right to assign, which section 18 deals with, but with the methodology and scope, or sometimes the default scope, of an assignment—that is clear from the earlier sub-sections.  Hence sub-sections (9) and (10) are concerned with the scope of an assignment of copyright: they lay down that even a complete assignment of copyright does not affect the author’s personal royalty right created under the third and fourth provisos to section 18(1).  Sub-sections (9) and (10) of section 19 are, as it were, the flipside of the third and fourth provisos to section 18(1).  The former seem to have been inserted out of a misguided intention to make section 19 look more complete, balanced against the third and fourth provisos to section 18(1); but unlike the earlier sub-sections of section 19 they really add nothing to section 18 for our present purpose and may be ignored.  Henceforth, for convenience we shall refer only to section 18.

Now, returning to the question of prospective/retrospective/retroactive, we need first to get section 79 of the Act out of the way, since I have heard it cited too often in this debate.  This section, which has never been amended since 1957, provided for the consequences of repeal of the 1914 Act and enactment of the 1957 Act. It has nothing to do with later amendments which neither refer to it nor amend it. It is well settled that the legislature cannot bind itself and its successors: in 1957 the legislature could not have provided for the survival or extinction of rights that might possibly be created in future and/or be affected by unforeseeable future legislation.  After each amending Act, the amended principal Act must contain its own provisions on repeal and saving (by insertion of a new provision or by amendment of an earlier repeal and savings provision, as in the case of section 36A) failing which section 6 of the General Clauses Act applies.

Anyway, it would make no sense to try to apply the substantive provisions of section 79 to the 1983, 1984, 1992, 1994, 1999 and 2012 amendments; the repeal and savings enacted in 1957 were too obviously situation-specific.  Sub-section (1) repeals only the copyright legislation earlier in force (before the original 1957 Act) and the rest of section 79 deals with the consequences thereof retrospectively, i.e. it makes special provision for the legal consequences of past events but operates prospectively.  Since the 1957 Act extended copyright to certain acts in which copyright did not subsist under the repealed 1914 Act, sub-section (2) created, in effect, a compulsory licence to partly save the interests of persons who had incurred expenditure or liabilities on subject-matter in which copyright had not subsisted earlier. Sub-section (3) prevented new rights from being exercised in pre-existing works; sub-section (4) extended existing ownership of copyright in a work to the new rights; sub-section (5) protected the term of copyright in pre-existing works.  (Incidentally there is a background to sub-section (5): the Copyright Bill, 1956 had sought to reduce the term of copyright from 50 to 25 years. Better sense prevailed by the time the legislation was enacted, but this sub-section stayed as proposed in the Bill.)  Sub-sections (6) and (7) are actually redundant, merely applying the general law as laid down in section 6 of the General Clauses Act.

It is trite that an amendment is prospective unless, either in terms or by necessary implication, the amending legislation makes it retroactive or retrospective; or unless the amendment is clarificatory.  I have never heard it argued that the third and fourth provisos to section 18(1) are clarificatory. Again, it is hard to see how they could be retrospective. What is argued by some is that they are retroactive, i.e. that assignments of copyright for literary or musical works included in sound recordings or films made before 21.12.2012 are to be treated as if the new royalty rights applied to them.

It looks very obvious to me that this new right to royalty, which is not in derogation of the exclusive rights of the copyright owner under section 14, is strictly prospective and no other interpretation is possible.  Arguments to the contrary, so far as I have heard them, are based either on legislative intent or section 79.  I have dealt with the latter; so far as legislative intent is concerned, we have only the word of a few proponents of this view. If the meaning of a section is uncertain (though it isn’t in this case) we must first look for assistance by interpreting the statute as a whole. We may also if necessary go to the Statement of Objects and Reasons and Notes on Clauses, which are part of the Bill.   Debates in the legislature may be referred to as a last resort; but it is dicey to try to infer the intention of Parliament from one or more speeches of individual MPs, including the Minister. All this is trite, and anyway none of these external aids to interpretation is necessary in the present case; there is no occasion to go beyond the words of the statute.

Repeal and amendments affecting existing vested rights stand on the same footing. The general rule on the consequences of repeal is laid down in section 6 of the General Clauses Act.  Section 6(c) and (e) save vested rights:

“6.       Effect of repeal. – Where this Act, or any Central Act or Regulation made after the commencement of this Act, repeals any enactment hitherto made or hereafter to be made, then, unless a different intention appears, the repeal shall not–

(c) Affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed; or

(e) Affect any investigation, legal proceeding or remedy in respect of any such right, privilege, obligation, liability, penalty, forfeiture or punishment as aforesaid;”

There is a catena of Supreme Court decisions underlining the continuity of vested rights absent any provision to the contrary in the repealing/amending legislation.

• “… The line of enquiry would be, not whether the new Act expressly keeps alive old rights and liabilities but whether it manifests an intention to destroy them … “ State of Punjab v Mohar Singh [1955]1 SCR 893.
• “’…vested right” is a right independent of any contingency. Such a right can arise from a contract, statute or by operation of law. A vested right can be taken away only if the law specifically or by necessary implication provides … “ S. Yadav v State of U.P. and Anr (2011) 6 SCC 570
• “Learned counsel has argued that … the amending Act being a beneficial legislation, retrospectivity is implied in it … but there is no such rule of construction that a beneficial legislation is always retrospective in operation…” Shyam Sunder & Anr. v Ram Kumar and Anr AIR 2001 SC2 472.
• Other decisions which could be cited include L . Srinivasa Jute Twine Mills P. Ltd v Union of India (UOI) and Anr. (2006) 2 SCC; Bansidhar and Ors. v State of Rajasthan and Ors . AIR 1989 SC 1614; and several more.

( Here, since I have heard it mentioned, I shall parenthetically refer to section 36A as amended in 2012 .) This special provision, which earlier applied to the 1994 amendments, has been made with reference to Chapter VII, which relates not to the subsistence of rights in works, but to the management of copyright societies.  The provision takes as a given that rights in back repertoire are unchanged and it merely clarifies the consequences for the administration of copyright societies.

Now what do the third and fourth provisos to section 18(1) do?  They do not affect or derogate from copyright as defined in section 14; in fact, they come into play only after the author has assigned such copyright. The assignee enjoys the exclusive rights enumerated in section 14 by virtue of the assignment; none of these rights is tied to any specified royalty or particular form of compensation. What these new provisos confer on the author is an additional, personal and virtually inalienable royalty right limited to certain forms of exploitation (i.e. exploitation of a musical or literary work included in a film or sound recording, only if copyright in the work has been assigned; and this special additional royalty excludes theatrical exhibition.)

It is pertinent to note that the author’s exercise of this new personal royalty right has necessarily to be tagged to a particular assignment: it cannot be enjoyed de hors the particular assignment of a particular work. Clearly, absent provision to the contrary, this completely new right granted by the statute in regard to assignments, cannot qualify the vested rights of assignees obtained by earlier assignment agreements.  It actually baffles me how anyone could say that it did.

In sum, then, it seems very clear to me that neither the third or fourth provisos to section 18 nor sub-sections (9) and (10) of section 19 of the Copyright Act can be applied retroactively. Assignments made before 21.12.2012 when the last amending Act came into force are unaffected.  In fact, I would go further: assignments of future works that were executed before 21.12.2012 gave the assignee a vested right in the copyright of the work whenever the work came into existence.  The right created by the assignment of rights in a future work, under section 18(1) read with the first proviso thereto is no less an enforceable and vested right than the right created by the assignment of an existed work.   All this is just as well, if we consider the horrifying, unmanageable consequences of giving all author/assignors who have been conferred with the new personal royalty rights a right to claim vaguely defined royalties going backwards in time: who would benefit in the end but lawyers?

[Disclaimer: The views contained in this post are solely the views of the author and do not necessarily reflect the views of this platform.]

[1] Reference may be made to the Parliamentary debates where Mr. Javed Akhtar has advocated retroactive application of the 2012 Amendment.

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Nirvana Files New Lawsuit Over Copyright Ownership in Smiley Face

• by Aaron Moss
• November 12, 2020

A new complaint against former Geffen Records employee Robert Fisher seeks a declaration that Nirvana is the rightful copyright owner of the band’s iconic smiley face logo design.

The long-running legal battle over the Nirvana “smiley face” design and “happy face” t-shirt has been anything but smiley and happy, and it’s just taken another turn. In a new federal court filing on November 11 in Los Angeles, Nirvana LLC sued Robert Fisher, a former employee of Geffen Records, for declaratory relief in a feud over ownership of the band’s iconic logo.

Fisher first surfaced last year in the middle of ongoing litigation between Nirvana and Marc Jacobs International . He sought to intervene in the case in September, claiming that he was the one who created the design that Nirvana accuses the fashion designer of infringing in a high end t-shirt line. Nirvana contends the smiley face was actually designed by its former lead singer, Kurt Cobain , who died tragically in 1994.

The Happy Face T-Shirt and the Smiley Face Design

The smiley face design was first featured on a happy face t-shirt created in July 1991 to promote Nirvana’s groundbreaking “Nevermind” album . Believing that Kurt Cobain had designed the shirt (and that he did so on behalf of his employer, Nirvana), the band obtained copyright registration for the t-shirt design in 1993.

According to Nirvana’s new complaint, defendant Robert Fisher was employed in the early 1990s as an art director by Nirvana’s record label Geffen, and was assigned to work on Nirvana-related projects.

Fisher has been aware of Nirvana’s ubiquitous exploitation of the happy face t-shirt and underlying smiley face design for nearly three decades, without objection. But In November 2019, Fisher claimed for the first time, that he, and not Cobain, had created the design.

In August 2020, Fisher registered a copyright in the design. He has since taken the position that Nirvana’s exploitation of the smiley face was pursuant to an “implied license” that he plans to terminate effective January 1, 2021—at which point any further exploitation by Nirvana would infringe his copyright.

Meanwhile, the Marc Jacobs litigation has been the subject of dueling summary judgment motions, with the fashion designer claiming last week that it isn’t liable to Nirvana for infringement . In support of its motion, Marc Jacobs argues that Fisher owns the copyright in the design.

Geffen, for its part, has credited Cobain with creating the happy face t-shirt and smiley face design. In January, UMG Recordings, Geffen’s successor-in-interest, executed an “acknowledgement” of Nirvana’s ownership. That document also purported to retroactively assign to Nirvana any copyright interests Geffen may have otherwise retained.

Who Created the Nirvana Smiley Face?

The underlying question of who created the smiley face design—Cobain or Fisher—may, unfortunately, never be answered definitively, because the person who could best advocate for Nirvana’s position is no longer alive. Cobain’s former bandmates Dave Grohl and Krist Novaselic were both deposed in the Marc Jacobs lawsuit last year, and neither could definitively say that Cobain was the designer.

The whole smiley face affair has certainly become messy from a factual perspective. However, as a matter of copyright law, it may not make a difference whether the design was created by Cobain or Fisher.

Let’s assume, for the sake of argument, that Fisher did draw the original design. He was working for Geffen at the time, in the label’s art department, specifically assigned to Nirvana-related projects. If the work he claims to have done in connection with the happy face t-shirt or smiley face design was within the scope of his employment, the copyright would have been owned by Geffen in the first instance as a “work made for hire.”

Works for Hire by Employees

I talked a bit about employee-created works made for hire in a recent post about a copyright lawsuit Yoko Ono filed against John Lennon’s former assistant. Courts consider several factors in determining whether an employee’s work is “within the scope” of employment. In the Ninth Circuit, where Nirvana’s case will be decided, the court will examine whether the work is of the kind the employee was employed to perform, whether it occurred within the employee’s authorized hours and space limits, and whether performance of the work was done, at least in part, to serve the employer.

Here, Nirvana has a pretty good work for hire argument on the facts. Based on deposition testimony Fisher gave in the Marc Jacobs case, he worked for Geffen as an art director, a position which required him to create graphic art to promote Geffen artists. Fisher testified that when he was asked to make the Nirvana happy face t-shirt, he understood it was to be used for promotional and retail purposes.

While Fisher testified that he doesn’t remember where he was physically when he allegedly created the smiley face drawing, he said he “probably” created the happy face t-shirt design at his Geffen office, and that he remembers using Geffen’s equipment to complete the design. As soon as the t-shirt design was created, it was used in various ways to promote Nirvana’s 1991 “Nevermind” album.

Geffen’s Acknowledgment and “Retroactive” Assignment

If Fisher did create the smiley face design and happy face t-shirt as a work made for hire, Geffen would have owned the copyright in the first instance, not Nirvana. That’s the reason Nirvana is seeking to rely on Geffen’s so-called “retroactive assignment” as a backup argument in the event Cobain didn’t actually create the design.

An interesting issue raised by the Geffen assignment is whether Nirvana can rely on it to maintain its copyright infringement claim against Marc Jacobs. The allegedly-infringing Marc Jacobs designs predated Geffen’s execution of the acknowledgement document, although the agreement purports to be retroactive.

Section 204 of the Copyright Act requires that copyright transfers be made via signed writings as opposed to orally.  Here, there wasn’t a written assignment for the first 25+ years of the smiley face design’s existence.

That said, both the Ninth and Second Circuits have recognized and upheld what Nirvana has attempted to do in this case, which is to use a signed writing to retroactively confirm a prior agreement that wasn’t reduced to writing at the time. If both the assignor (here, Geffen) and assignee (Nirvana) don’t dispute the existence or validity of a previous oral agreement, a third party (Marc Jacobs) generally won’t be permitted to argue that the subsequent written transfer was invalid in order to excuse its own infringement. If you’re interested, a couple of notable cases on the subject are Magnuson v. Video Yesteryear from the Ninth Circuit and Eden Toys v. Florelee Undergarment Co. out of the Second Circuit.

There’s another Second Circuit case, Davis v. Blige , that some people have read broadly to suggest that retroactive copyright assignments are invalid, but that overstates the law a bit. More properly interpreted, Davis prevents one joint owner of a copyright from transfering its share of the copyright to an alleged infringer in order to prevent the other co-owner from suing for an infringement claim that’s already accrued.

It’s also important to note that if there’s a dispute about the existence or terms of a purported oral assignment between an assignor and assignee that one party argues was later reduced to writing, a court is likely to reject an after-the-fact transfer as opposed to a contemporaneous one. But again, that’s not the case here vis-à-vis Geffen and Nirvana.

The bottom line is that learning who, as between Kurt Cobain and Robert Fisher, created the Nirvana smiley face design is certainly important for posterity purposes. But for legal purposes, it may prove unnecessary.

You can read a copy of Nirvana’s new complaint against Robert Fisher below. This is also a good time to remind you to subscribe to the Copyright Lately weekly newsletter if you haven’t yet. Every Sunday I send out exclusive content that’s not on the site.

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Fieldfisher

Joshua is a solicitor in the Intellectual Property and Technology Protection and Enforcement team. He practices in all areas of intellectual property litigation including copyright, design, trademark and patent, primarily in proceedings issued in the Intellectual Property Enterprise Court. In addition, and as part of reputation management, he also specialises in proceedings for libel, slander and malicious falsehood. Joshua works with a variety of high end to high street fashion designers and retailers, including household names, assisting in the protection of their intellectual property rights in the market. He also works with an array of commercial entities in various sectors assisting in the protection and enforcement of their key brands, trademarks and product technologies. Finally, he advises both individuals and businesses in the protection of their reputations in the media and online.

Related legal acts:

• Patents Act 1977 (1977 c 37)

Key definition:

Assignment definition, what does assignment mean.

An assignment is 'an immediate transfer of an existing proprietary right, vested or contingent from one party to another'. Assignments can occur by consent or by operation of law.

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Monday’s Transactions

• Copy Link copied

Major League Baseball

American League

CHICAGO WHITE SOX — Placed RHP Dominic Leone on the 15-day IL retroactive to May 5. Recalled RHP Mike Clevinger from Charlotte (IL).

CLEVELAND GUARDIANS — Activated LHP Sam Hentges from the 15-day IL. Placed OF Steven Kwan on the 10-day IL retroactive to May 5. Optioned RHP Peter Strzelecki to Columbus (IL). Selected the contract of 1B Kyle Manzardo from Columbus (IL).

OAKLAND ATHLETICS — Placed RHP Joe Boyle on the 15-day IL. Recalled LHP Hogan Harris from Las Vegas (PCL).

TAMPA BAY RAYS — Activated 3B Josh Lowe from the 10-day IL. Optioned 2B Curtis Mead and LHP Jacob Lopez to Durham (IL). Selected the contract of RHP Edwin Uceta from Durham (IL). Designated 1B Niko Goodrum for assignment.

TEXAS RANGERS — Placed OF Wyatt Langford on the 10-day IL retroactive to May 5. Recalled SS Jonathan Ornelas from Round Rock (PCL).

National League

CHICAGO CUBS — Activated LHP Justin Steele from the 15-day IL. Optioned RHP Keegan Thompson to Iowa (IL).

CINCINNATI REDS — Optioned LHP Sam Moll to Louisville (IL).

COLORADO ROCKIES — Activated RHP Justin Lawrence from the paternity list. Optioned RHP Angel Chivilli to Hartford (EL).

LOS ANGELES DODGERS — Activated RHP Walker Buehler from the IL. Placed RHP Joe Keyyl on the IL.

MIAMI MARLINS — Sent LHPs A.J. Puk and Brandon Garrett on a rehab assignment to FCL Marlins. Activated INF Jake Burger from the 10-day IL. Optioned INF Jonah Bride to Jacksonville (IL).

MILWAUKEE BREWERS — Transferred RHP Jakob Junis from the 15-day IL to the 60-day IL. Optioned RHP Janson Junk to Nashville (IL). Selected the contract of RHP Kevin Herget from Nashville (IL).

NEW YORK METS — Signed free agent RHP Jake Stevenson to a minor league contract. Designated RHP Max Kranick for assignment. Claimed RHP Yohan Ramírez off waivers from the Baltimore Orioles.

SAN FRANCISCO GIANTS — Designated RHP Daulton Jefferies for assignment. Selected the contract of RHP Mason Black from Sacramento (PCL).

ST. LOUIS CARDINALS — Transferred SS Tommy Edman from the 10-day IL to the 60-day IL. Placed RHP Giovanny Gallegos on the 15-day IL. Selected the contract of RHP Chris Roycroft from Memphis (IL).

Minor League Baseball

Frontier League

NEW YORK BOULDERS - Signed OF Casey Dana, RHP Colton Easterwood, IF Cole Parker, RHP Dylan Smith, RHP Blaine Traxel, and RHP Kerry Wright.

SUSSEX COUNTY MINERS - Signed LHP Bobby Curry.

National Basketball Association

DALLAS MAVERICKS — Signed Head Coach Jason Kidd to a multi-year contract extension.

Women’s National Basketball Association

LOS ANGELES SPARKS — Waived G Taylor Mikesell.

LAS VEGAS ACES — Waived G Bria Hartley and G Kamria McDaniel. Awarded F Emma Cannon on waivers.

National Football League

BALTIMORE RAVENS — Signed UDFAs QB Emory Jones and DL C.J. Ravenell. Waived WR Jelani Baker and DT Tre’Darious Colbert.

CLEVELAND BROWNS — Signed C Brian Allen to a contract.

GREEN BAY PACKERS — Signed OL Lecitus Smith and WRs Julian Hicks and Dimitri Stanley. Released CB Anthony Johnson and DL Deandre Johnson. Waived/injured WR Thyrick Pitts.

LAS VEGAS RAIDERS — Signed WR Jalen Guyton and OL Andrus Peat.

LOS ANGELES CHARGERS — Signed WR DJ Chark.

NEW ENGLAND PATRIOTS — Released QB Nathan Rourke.

NEW YORK JETS — Signed CB Brandon Codrington and QB Colby Suits to contracts.

PHILADELPHIA EAGLES — Signed rookie OL Trevor Keegan.

SEATTLE SEAHAWKS — Signed CB Michael Jackson to a new contract.

TENNESSEE TITANS — Signed DL Marlon Davidson.

WASHINGTON COMMANDERS — Signed LB Bo Bauer.

National Hockey League

DETROIT RED WINGS — Signed D Sandin Pellikka to a three-year, entry-level contract.

EDMONTON OILERS — Recalled F Xavier Bourgault from Bakersfield (AHL).

NEW JERSEY DEVILS — Signed G Jakub Malek to a two-year, entry-level contract. Signed D Seamus Casey to a three-year, entry-level contract.

Minor League Hockey

American Hockey League

CHARLOTTE CHECKERS — Recalled F Patrick Giles from loan by Florida (NHL).

ONTARIO REIGN — Reassigned G Jacob Ingham by Los Angeles (NHL) from Greenville (ECHL).

PROVIDENCE BRUINS — Recalled C Patrick Brown from loan by Boston (NHL).

Major League Soccer

ATLANTA UNITED — signed F Ashton Gordon and D Matt Edwards to short-term agreements.

NEW ENGLAND REVOLUTION — Hired David Kammarman as Head of Player Recruitment.