"In an assignment of copyright for a limited period (where ownership is assigned for a period of, say, two years andWhen commenting, please indicate -- if it's not immediately apparent -- the jurisdiction from which you hail.thereafter the ownership will revert back to the assignor), is it possible, or reasonable, to insert a clause into the assignment agreement that the assignment (which is essentially a sale of the copyright) is personal to the assignee and shall not be directly or indirectly transferred, disposed of, encumbered or shared with any party, other than on the express terms of the assignment agreement? Can the new owner of the copyright, albeit only for a limited two year period, be restricted in this manner?"
Friday, 16 April 2010
Limited term assignments: a reader writes ...
One of this blog's readers has posed the following question and would welcome responses (posted below as comments, please!):
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7 comments:
Why assign ownership if wishing to restrict the privilege's behaviour as transferable legal property?
What's wrong with a license?
Is there a need to comply with an intransigent requirement that copyright must be assigned?
Consider my jurisdiction Central Atlantic - not that it has any bearing on the above.
Surely the answer is simply "yes" - the copyright owner can negotiate terms as he pleases...
While in Ireland, section 120 of our 2000 Act is almost identical to section 90 of the UK 1988 Act (so that an assignment can be for some or all of the relevant rights rights and either full or partial) I think that in the heel of the hunt in Ireland we would call the above a licence (albeit perhaps an exclusive one) if it had a limited term and was personal to the "assignee".
UK speaking here...
So long as the assignment complies with the limited formalities set out in section 90(3) of the CDPA 1988 (and leaving aside competition law), there would be no legal objection to a contractual term against assignment on and it might be commercially entirely sensible if the reputation of the work required a particular style of performance or interpretation. However, such a term would not, I think, make the copyright unassignable. It would just make it a breach of contract, with the inconvenient remedy of a quia timet injunction. In order to recover the copyright from the third party one would have, I suppose, to enter the deep waters of fraudulent conveyances and constructive trusts (assuming consideration in the reassignment). Although it is easy to think of reasons why one might assign rather than license, the possibility of terminating a licence for breach of a contractual condition relating to exploitation solely by the specific licensee seems to argue in favour a licence rather than an assignment, if this is a major concern in the particular deal.
Sorry to go on almost for life plus 70 in answering.
Is this a fiduciary contract that is intended?
In any case no clause can prevent the assignee from transferring his property to a third party. But if he does so, he will fail to perform his obligation to revert the ownership to the assignor after two years. So he will be in breach of contract.
I am from a continental jurisdiction, where copyright is actually not assignable.
In the U.S., I would think you are talking about a licensing situation, not an assignment. An assignment is a different vehicle for real transfer of rights. In the case of licensing, any caveats and limitations can obviously be implemented, and most often are.
Surely, although as other comments have pointed out it is not a great idea, in principle one could assign on the basis described - that is,all the copyright for the limited period but only to be enjoyed personally by the assignee? The assignment of copyright is of an intangible right, a chose in action as the English theory has it, and as such is effectively defined by the assignor. The issue as has been pointed out is how to control the assignee's behaviour. Disclaimer: I haven't looked this up.
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