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Assignment (copyright)

An assignment is a permanent transfer of copyright (like a sale).

1 January 2023

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Estimated reading time for this page: 5 minutes 

What it is

An assignment is a transfer of copyright (or part of it) from a copyright owner (the assignor) to a third party (the assignee), such that the assignee becomes the owner of that copyright.

Put another way: an assignment of copyright is like selling a house, whereas a licence of copyright is like leasing a house. 

Example

Alice has been approached by a television production company that wants to make a TV adaptation of her recent novel.

As copyright owner, Alice is the only person entitled to adapt the novel and, as such, the production company has asked for an assignment of this adaptation right.

Alice understands the commercial needs of the production company and is willing to transfer ownership of the right to them (rather than merely licence it). However, she does not want to assign any more rights than are strictly necessary.

Given that a partial assignment of copyright is possible, she assigns the right to adapt the novel to the production company. Alice retains ownership of other rights herself (such as the right to copy or translate the novel), allowing for future commercialisation if she so wishes e.g. by translating the novel for publication in new countries.

When it applies

An assignment takes place when the copyright owner (the assignor) agrees to transfer the copyright to a third party (assignee).

This is ordinarily done by way of an assignment agreement (sometimes known as an elective assignment), in which case the transfer takes effect from the date set out in that agreement. However, in limited circumstances the assignment can happen automatically (an automatic assignment – see key legal considerations below). 

Who/what it applies to

An assignment relates to the work set out in the assignment agreement and binds both the assignor and assignee.

Once an assignment has been made, the assignee becomes the new copyright owner and they then have the right to enforce the copyright against any third parties who might infringe it.

It's possible to assign copyright in future works e.g. those that have not been created yet. Therefore, the assignment can relate to both the assignor’s current and future copyright. In each case, the assignment can be for the whole or part of the copyright in question. 

Core principles

  1. An assignment is a permanent transfer of copyright (like a sale).
  2. The assignment may relate to all, or part (a partial assignment), of the assignor’s copyright.
  3. Once the assignment is made, the original copyright owner can no longer exercise the rights transferred (although, subject to the terms of the assignment, may continue enforcement action for any infringement prior to the date of assignment).
  4. The assignor cannot control how the assignee exercises the rights assigned, including any decision not to exercise the rights e.g. not to publish or perform the work.
  5. An assignment agreement should clearly set out the terms of the assignment including the scope of the assignment and any consideration payable.

Why it matters (risks/opportunities)

Risks

Permanent loss of rights.

Relative lack of formalities (see key legal considerations below), so care should be taken to ensure that assignments are not made unintentionally.

The assignor loses control of future use and revenue opportunities.

Opportunities

The current copyright owner receives a guaranteed payment for their work.

They can specify the terms of the assignment e.g. whether all or only part of the copyright is assigned.

Provides opportunities to monetise copyrighted work in a targeted way e.g. to transfer adaptation rights of a book to a film studio. 

Key legal considerations/elements

The assignment must be:

  • in writing 
  • signed by the assignor (owner)

It's best practice for the assignee to also sign the assigment (to avoid dispute as to whether they are bound by other terms of the assignment agreement e.g. payment).

For the assignment of current copyright there is no specific form of agreement that must be used e.g. the assignment can be by way of letter, provided it is in writing and signed.

An assignment can be either:

  • automatic – in limited circumstances copyright will be assigned automatically. These include insolvency and inheritance (through the rules of intestacy or as set out in the copyright owner’s will, whichever is applicable).
  • elective – in most cases the assignment will be an ‘elective’ assignment e.g. where a copyright owner chooses to assign the copyright and enters into an agreement to do so.

Key commercial considerations/elements

An assignment is a permanent transfer of rights. If a copyright owner wishes to retain ownership of their copyright and merely give a third-party permission to use the copyright in specific circumstances, they should use a licence instead.

As the new copyright owner, the assignee becomes the person entitled to take legal action in respect of any breach of the copyright.

It's possible to tailor the assignment agreement to the specific needs of the parties so these terms should be considered carefully as, once assigned, a copyright owner loses the ability to monetise the assigned rights 

An assignment can be exclusive or non-exclusive. Does the copyright owner want to retain the ability to use the work themselves or to allow others to use it? 

Ordinarily, an assignor will be entitled to sell any remaining copies of the work in their possession even if an assignment has been made. If this is not the intention of the parties it should be clearly set out in the assignment agreement.

FAQs

As the author of the work can I still use the work after assignment?

No, unless otherwise provided for in the assignment agreement, an assignment is a permanent transfer of copyright. This means that on assignment, only the assignee can exercise those rights moving forward.

Can I assign moral rights?

Moral rights (e.g. the right to be identified as the work’s author) cannot be assigned, although they can be waived. If the parties intend for the copyright owner to waive their moral rights this must be clearly stated in the assignment agreement.

Do I have to assign all my copyright?

No, you can make an assignment of your copyright in whole or in part. If you are assigning only certain rights to the assignee (e.g. the right to perform the work to a theatre company) this should be made clear in the assignment agreement.

Does there need to be consideration (payment)?

Although not strictly needed, unless the assignment is by way of a deed (a legal document that, unlike a contract, must be in writing, requires the parties’ signatures to be witnessed but does not require consideration to be paid), some consideration is usually required. This could be a nominal sum (e.g. £1), fair market value or consideration in kind e.g. the provision of services.

What’s the difference between an assignment and a licence?

An assignment is a permanent transfer of rights (like a sale), whereas a licence is a limited grant of permission (like a lease). With a licence, the original copyright owner retains ownership of the copyright, whereas with an assignment the ownership is transferred to the assignee.