Difference between assigning and licensing a photograph

When you assign your rights in a photograph for a valuable consideration (fee), that is a complete transfer where you do not retain any rights. On the other hand, when you license somebody to use your photograph, that is merely a permission to use your photograph in certain ways, for a certain period, within certain geographical territory and for certain purpose only. In a typical licensing arrangement, any usage of photograph in violation of the terms of the license, would be illegal. For instance, if a person A licensed you to use his photograph in a film, that license is only for that film, and not for using it for any other purposes.

Further, license can also be exclusive or non-exclusive. If you have given exclusive right to somebody to use your photograph, you cannot give that same photograph to others for any use. Likewise, when you have given a non-exclusive right to your client to use your photograph, you are free to give the same photograph to others as well for commercial gain. Exclusivity is an important term to understand as a photographer, because most of the stock photography website may ask you for an exclusive right, so that you cannot sell the same photograph to other competing websites.

In order to understand the difference between ‘assignment’ and ‘licensing’ of photograph, let’s look at each of the aspects in a tabular form:

Assignment vs. Licensing of Photograph

MEANING

  • Assignment is permanent transfer of ownership of your intellectual property (IP) rights in the photograph (may be for a given period or territory).
  • Licensing is limited right to use your IP, without any transfer of ownership (may be for a definite term and defined geographical territory).

CONTROL

  • In an assignment, the owner (assignor) of IP loses all rights/ control over the IP and the assignee acts as the owner.
  • Owner of IP can continue to use IP and can regain full control over the same.

GOVERNING LAW

  • Assignment of IP is specifically regulated by the relevant statute governing that respective IP right (e.g. Indian Copyright Act for copyright in a photograph).
  • Licensing is not regulated by any specific statute. The terms of licensing is governed by the licensing agreement between the parties. While the parties are free to mutually agree to any terms, the validity of that contract will be governed by Indian Contract Act, 1872. If the terms of the licensing agreement is by way of an e-contract or email, the validity of the same will be tested as per Indian Evidence Act, 1872.

QUANTUM OF TRANSFERABLE RIGHTS

  • You can transfer partial or all IP rights (absolute transfer) in the photograph.
  • You can transfer only limited rights in photograph, else it would become an assignment.

PROCEDURAL REQUIREMENTS

  • It would be as prescribed by the relevant statute on the respective IP right. Typically, an assignment agreement is to be reduced into writing and registered with appropriate IP registry.
  • There are no specific procedural requirements for licensing of photograph in any statute.

ASSIGNABILITY AND SUB-LICENSING

  • Assignee (i.e., to whom you assign the photograph) has full right to further assign the IP in photograph to others, without your consent or permission.
  • In a licensing arrangement, you can impose restrictions on sub-licensing of the photograph.

REPRESENTATION IN LEGAL PROCEEDINGS

  • Assignee can sue in his/her own name for infringement of copyright or any other rights, without involving you as the assignor.
  • Here, a licensee (i.e., to whom you license the photograph) cannot sue in his own name for any infringement of your copyright and other rights.

How a typical “License Terms” look like

Let me explain the jargons here for your easy understanding:

  • Perpetual license: Once for all. i.e., the licensee is not restricted by any fixed number of years to use the photographs;
  • Worldwide license: Your photograph can be used by licensee anywhere in the world; not necessarily India;
  • Non-transferable license: Licensee cannot transfer the rights he acquired from you to anyone else;
  • Non-sublicensable: Licensee cannot further sub-license your photograph to others;
  • Non-exclusive license: The rights in photograph you licensed to licensee is not exclusive, and you are free to license the same photograph to others as well;
  • Single user license: Your licensing in the photograph is only for one user, i.e., the licensee, and cannot be used by many other who may be associated with licensee.

How can a photographer assign copyright in his work to others?

First of all the assignment must be in writing and duly signed by the photographer/artist (Assignor) or by his/her duly authorized agent. Such an assignment deed should:

  1. identify the specific works;
  2. specify the rights assigned;
  3. mention the duration and territorial extent of such assignment;
  4. specify the amount of royalty payable, if any, to the author or his legal heirs during the currency of the assignment, and
  5. make provision for revision, extension or termination of the assignment on terms mutually agreed upon by the parties.

Furthermore, such an assignment deed must be duly executed, which means that it must fulfill the stamping requirement of that particular state where the parties are situated.

What will be the period of assignment if it is not specifically stated in the assignment deed?

In such a case, the period of assignment will be 5 (five) years from the date of execution of the assignment deed.

What if the Assignee does not exercise the rights assigned to him by the Photographer?

If an assignee does not exercise the rights assigned to him within a period of one year from the date of assignment, the assignment in respect of such rights stands lapsed after the expiry of the said period unless otherwise specified in the assignment.

Now, we can hope that the next time a client tries to confuse you with these two terms, you are better equipped with the right knowledge to deal with it. Happy Clicking!

Author: Vivek Verma

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Published by Vivek Kumar Verma

Investment Banking Lawyer | Photographer & Blogger | Connoisseur of Food | Poet

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