practical law copyright assignment

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Today’s Assignment: How to Assign a Copyright

This practice note covers the fundamentals of copyright assignments and rules for works made for hire, assignments from independent contractors or freelancers, partial copyright assignments, and recordation of copyright assignments. It includes links to the Nimmer on Copyright sections on transfer formalities, recordation of transfers, and construing the scope of assignments and other transfers for additional guidance and to help you continue your research and deepen your understanding of key tasks and areas of law.

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Related Content

• Copyright Assignment Checklist Brush up on the provisions that must be included in a copyright assignment for the assignment to be valid and enforceable.
• Copyright Assignment Use this template to assign rights in and to a work of authorship to another person, organization, or corporate entity.
• Nimmer on Copyright § 10.03 Deepen your understanding of transfer formalities with expert analysis from the leading authority on copyright law.
• Nimmer on Copyright § 10.07 Broaden your understanding of recordation of transfers with expert analysis from the leading authority on copyright law.
• Nimmer on Copyright § 10.10 Expand your understanding of construing the scope of assignments and other transfers with expert analysis from the leading authority on copyright law.

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• Intellectual Property & Technology

Practical Law

Construction blog, copyright in construction: some common queries.

• by Ash von Schwan
• Senior associate (Australian solicitor)
• by Emily Dickson
• Senior associate

Questions about intellectual property rights routinely arise during construction contract negotiations and serve as a refreshing reminder that COVID-19 issues are not the sole focus of negotiations at the moment.

Copyright is one type of intellectual property right and is the area where we tend to encounter the most queries. This blog, the first in a series, takes a look at a few of the more common queries we regularly encounter on this topic.

What do we mean by “copyright works”?

The Copyright, Designs and Patents Act 1988 (Copyright Act) defines copyright as a property right that subsists in certain types of original works, notably including literary and artistic works.

Such “original works” fall under key definitions in construction contracts in a variety of ways for example, such works may exist in “Contractor’s Design Documents” or “Proprietary Materials”. However, whatever term may be used, the material it tends to cover is normally roughly the same and includes drawings, design details, specifications of materials, plans and reports prepared by or on behalf of the contractor/consultant in relation to the construction project.

A common drafting catch-all, regularly included in construction contracts, is a reference to “any other work”. Often provision is also made to clarify that the definition not only includes hard copy material but material in its “electronic form”. Another frequent clarification used is that the material is not limited to only that which is prepared at the project outset, but also includes material created during the life of the project or as a result of performing the project.

The key is to make sure when drafting the contract, that the definition used to describe the copyright works adequately captures all the material that the contractor/consultant may produce (in whatever form that may take) in which the client wishes to have a copyright licence .

Who owns the “copyright works”? 

The short answer is: (normally) the person who creates it.

Ownership of a copyright work usually vests upon creation in the person who creates it,  unless it is subject to a statutory exception under the Copyright Act and ownership is also subject to the contractual terms of the appointment. The work must be original and cannot be a copy of existing work.

The copyright owner has the exclusive right to copy, communicate, distribute, issue, publish and adapt the work as it sees fit. Others may only do so with the copyright owner’s permission or consent and without this, they are at risk of infringing the copyright owner’s copyright.

Why are copyright works critical to a construction project?

Construction projects rely on the preparation and use of the kinds of copyright material described above, by multiple parties at various stages of the project life-cycle.

However, there is an inherent tension as to who owns the copyright material, between the copyright owner (contractor/consultant) and the party for whom the work is being carried out, the client.

The copyright owner is normally keen to retain ownership in copyright works but the client (who of course is paying the copyright owner to produce the works) and others with an interest in the project (such as funders, tenants, purchasers) will want to ensure they have sufficient rights in such copyright material to ensure the successful delivery of the project and its subsequent management, operation and maintenance. In some cases, the material may need to be used in connection with the further development, improvement or extension of the project at a later date.

The standard way that this is resolved in UK construction projects is for contractual provision to be made whereby the copyright owner grants the client an irrevocable, royalty free and non-exclusive right to use and reproduce the copyright materials (as defined in the contract) for any purpose connected with the project. Express provision is also normally included to clarify that the copyright licence includes the right to grant sub-licences and for it to be transferable to third parties and subsist notwithstanding the expiry or termination of the copyright owner’s engagement under the contract.

Care should be taken when drafting the copyright provisions to ensure they adequately reflect all the ways in which the client plans to use and reproduce the copyright works. In particular, consideration should be given to whether any additional uses may be required at the end of the project (for example using an architect’s drawings for a future extension to a building).

But is that enough? Would it be better to “own” the copyright works?

In short, in the UK, for most clients and projects, a licence should be enough.

Normally, a well-drafted copyright licence along the lines of the one described should provide each party with the flexibility and protection they need in respect of copyright work. However, whether a licence or ownership is appropriate will ultimately depend on the specific project and what the parties agree. The key is for the parties to agree an approach at the outset of the project.

Key considerations as to whether a licence will suffice or whether ownership is appropriate include:

• To what extent has the client’s contractors or consultants relied on supply-chain input in preparing the copyright works?

Usually contractors/consultants will use and include as part of their services third-party copyright works provided by their own supply chain. These will be subject to specific licence rights and restrictions on use.

In these circumstances, the contractor/consultant is not the copyright owner of the relevant works. So, unless the contract with the relevant third party provides otherwise, the contractor/consultant will not have the rights required to assign the copyright in the relevant elements of the work to the client. Therefore, the licences granted to those contractors/consultants in respect of such third party rights will need to permit them to grant sub-licences to the client (and preferably with a right to grant further sub-sub-licences).

• Are the copyright works commercially sensitive or particularly valuable in maintaining market differentiation or market advantage?

If any of the copyright works have a particular unique value to the project which the client wishes to reserve for that project alone, it should seek to either obtain an assignment of the copyright or an exclusive licence in order to prevent any contractors or consultants from re-using the same elements on other projects, on a non-exclusive basis.

If the parties do agree to assign ownership, remember, section 90 of the Copyright Act requires that such assignment must be in writing and must be signed at minimum by the assignor (the copyright owner).

What happens if there is a change of contractor/consultant during the project?

Here, it is critical that the client holds the necessary rights in the copyright works to allow it to hand over the materials to the new contractor/consultant for them to use and ensure a smooth transition and project continuity.

Contractual provision should be made at the outset to ensure the licence granted to the client includes the right for the client to grant sub-licences to third parties without the copyright owner’s consent being required and to make clear that this right will continue notwithstanding the expiry or termination (for any reason) of the contractor/consultant’s engagement under the contract.

Consider also restricting the copyright owner’s right to use the copyright work for other projects. This is a particularly pertinent issue for a variety of projects, for example landmark buildings or projects utilising modular construction.

Final thoughts

This article explores just a few issues and hopefully answers some common copyright queries that typically arise on construction projects.

Other topics that we are often asked about include:

• What are moral rights and why are they important?
• Is it important to retain commissioning contracts for sculptures, other large works of art or art installations? What are the potential issues that can arise?
• Should a copyright licence be subject to the payment of fees?
• What do I need to think about if the project involves Building Information Modelling (BIM) ?

We look forward to exploring these topics in future blogs. Until then, keep copyright in mind!

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Contracts: assignment

Practical law uk practice note 7-381-7509  (approx. 44 pages), get full access to this document with practical law.

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• Increase efficiency
• Enhance productivity
• Improve response time
• General Contract and Boilerplate
• Substantive Law
• 1 Scope of this note
• 2 What is an assignment?
• 3 Effect of assignment
• 4 When is assignment used?
• 5 Types of assignment
• 6 Assignment formalities
• Personal contracts
• Assignments prohibited by public policy
• Construing non-assignment provisions
• Requirements for consent
• Circumventing restrictions on assignment
• Legal restrictions on non-assignment provisions
• "Conditional benefit" exception discredited for assigning contractual obligations
• Creating a legal assignment
• When are legal assignments used?
• Who must consent?
• Must a legal assignment be in writing?
• Who must sign the assignment?
• Is consideration required?
• Notice of assignment
• Notice must be in writing
• Must the notice take any particular form?
• Does the notice need to state the date of the assignment?
• When should notice be given?
• Who can give notice?
• To whom can notice be given?
• Can notice be given in advance of assignment?
• Can the other contracting party demand sight of the assignment agreement?
• Which methods of giving notice are valid?
• Effect of non-assignment provision on a notice of assignment
• What happens if notice of assignment is not given to the other contracting party?
• Creating an equitable assignment
• When are equitable assignments used?
• Must an equitable assignment be in writing?
• Is notice of assignment required?
• Subject to equities
• Recovery of loss by assignee
• 14 Assignment of a third party right
• Conditional fee agreements
• Construction agreements
• Consumer contracts
• Security arrangements
• General reading
• Assignment of other choses in action
• 17 Drafting assignment provisions
• 18 Section 136 of the Law of Property Act 1925

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Intellectual Property Assignment Agreement (Short Form) | Practical Law

Intellectual Property Assignment Agreement (Short Form)

Practical law standard document 1-385-2746  (approx. 18 pages).

Copyright Demands

Are you getting accused of infringing a copyright hold off before you pay up..

Recently, we have received numerous concerns from clients in regards to copyright infringement due to images posted on their webpages or blogs. If you receive a demand letter from a law firm asking for money because of an image or content on your website, take a step back and consider the following before you pay anything.

They have the wrong guy.

It is very common for the letter to go to the wrong person. Is it actually your website or your blog that posted the images? If you’re not in control, you’re likely not responsible for the infringement.

Did the copyright owner actually register the work?

Ask the law firm or owner to prove they have actually registered the copyright for the work.  If they have, there should be a certificate of registration.  If there is no federal copyright registration, they can’t get the big damages they claim.   

Does an exception apply?

Copyright law has numerous exceptions for the use of copyrighted works.  Consider if the use falls under the “fair use” exceptions, including if the purpose and character of the work is for educations or commentary purposes, or whether there was a commercial benefit.  If the use of the work was protected by fair use, there’s no infringement.

Check your images

A legitimate copyright infringement lawsuit can be very expensive.  If someone has a legitimate copyright on an image that you are using without permission, damages can range from $30-150k per infringement.  Do a check of your website and make sure you own the images on it, have the permission of the copyright owner (sometimes called a license), or are confident the image is in the public domain and free to use – or better yet, let the attorneys at Cokinos | Young do it for you!  We offer comprehensive website and content audits so you can be sure you are not at risk of receiving one of these demands.  We can also help you draft terms and conditions and implement other safeguards to take advantage of the safe harbor provisions in copyright law that shield website owners from infringement liability. The above article is not legal advice and should not rely on it as such. Do not hesitate to reach out to one of our Cokinos | Young attorneys with any questions or concerns.

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Sweden May Block Russian LNG If Orban Scuppers EU Sanctions (1)

By John Ainger

Sweden is looking at ways to unilaterally block imports of Russian liquefied natural gas if Hungary stops or succeeds in watering down the European Union’s proposed latest sanctions on Moscow.

EU member states are discussing sanctions targeting key Russian LNG projects, as well as a ban on using the bloc’s ports to re-export supplies destined for third countries, as part of an effort to limit the Kremlin’s ability to generate revenues from the fossil fuel. Hungarian Prime Minister Viktor Orban has opposed the package and sanctions require the unanimity of the EU’s 27 member states.

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Copyright Violation and Distribution of Prohibited Content on the Internet: Analysis of Legal Arrangements in the Legislation of the Russian Federation

• Gyulnaz Eldarovna ADYGEZALOVA Kuban State University, Krasnodar, Russian Federation
• Ruslan Muradovich ALLALYEV Plekhanov Russian University of Economics, Moscow, Russian Federation
• Alla Vasilievna KISELEVA Southern Federal University, Rostov-on-Don, Russian Federation
• Natalya Anatolyevna GRIGORIEVA Peoples` Friendship University of Russia, Moscow, Russian Federation

The article provides an analysis of the features of the legal regulation of copyright protection and the control of the distribution of the prohibited content on the Internet. Copyright violation and distribution of the prohibited content are considered by the author as two sides of the same problem – the illegal use of information on the Internet. Despite the close attention received from legislators, law enforcers, Internet-based businessmen, journalists, bloggers and regular users of Internet resources, the amount of whom is becoming larger from year to year, this problem still remains unsolved up to date, so the urgency of development of its legislative solution is unquestionable. The objective of the work presented is to seek effective legal regulation of Internet relations connected to the protection of authors' rights and the fight against the distribution of illegal (hazardous) content. In order to achieve this objective the author analyses the Russian legislative framework, refers to international and foreign experience and views the positions of representatives of various sciences related to the Internet, especially legal scholars and political scientists. Various categories of Internet-based information, which are regulated under the Russian legal system, are considered in this article. The potential of existing technologies to restrict access to Internet resources is analyzed. The results of the study of different views on the mentioned problems are presented, and solutions for their resolution are offered, which is of scientific and social interest. The scientific novelty and relevance of the study are that in order to address the problem of copyright control and the distribution of illegal content on the Internet, it proposes an integrated approach, combining legislative restriction of access to relevant information with opening an active dialog with the Internet community and business in the area of Internet communications.

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Assignment of intellectual property rights (pro-assignee)

Practical law uk standard document 0-500-7124  (approx. 29 pages), get full access to this document with a free trial.

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