Assignment of copyright
How to contract the transfer of copyright?
The Intellectual Property Law (“LPI”) proclaims the full freedom of authors to transfer the economic rights of their works.
The most common way used by authors to make their work economically profitable is to agree to the assignment by contract of their exploitation rights.
The Law establishes a general regulation for the transmission of copyright of any type of work.
It also contains specific regulations on some types of contract in attention to the nature of certain works. This is the case of publishing contracts, theatrical representation and musical performance.
Practice, in turn, has developed a multiplicity of contractual modalities on the exploitation of copyright; With them, the peculiarity of each case is addressed, whether it is audiovisual works, computer programs, databases or any other genre.
We want here to provide some ideas about the general rules of the copyright assignment contract.
The Law requires that these contracts be documented in writing duly signed by the parties. This requirement would not be adequately met, for example, if the contracting parties have limited themselves to issuing and receiving means of payment or merely emails have been exchanged.
A contract that does not meet this requirement is valid in principle, but the author may request its resolution if the assignee refuses to formalize it in writing.< /p>
Written representation is also required in the case of the salaried author. In this case, the lack of a written agreement presumes that the employee exclusively assigns to the company the exploitation rights of his work only to the extent necessary for the usual activity of the employer; he could not use it for other different purposes (art. 51 LPI).
Signature of all holders
The contract must be signed by all rights holders, whether original (authors of the work) or derivatives (heirs or assigns).
Special mention should be made of works in whose generation several authors had participated. All of them must give their consent for the contract to become valid.
Detail of the agreed terms
In copyright exploitation contracts, clarity and specification of the agreed terms is especially recommended. This specification must refer above all to:
- The definition of the rights assigned from among all those that legally correspond to the author (rereproduction, distribution, public communication, transformation, remuneration for private copy, etc).
- The modalities of exploitation.
- The duration time.
- The territorial scope.
Art. 43 LPI warns that the assignment of rights will be limited, in these four areas, to what is determined in the contract.
The general principle of author protection plays a relevant role here. A deficient specification would lead to an interpretation by the courts in the most favorable sense to the owner of the rights, that is, to attribute a smaller transmission of rights.
The aforementioned precept establishes a supplementary regime; if the parties do not specify the duration, the assignment will be limited to 5 years.
If the territorial scope has not been defined, the contract will be limited to the country in which the assignment is made. And if the modalities of exploitation of the work are not expressed, the assignment will be reduced to what is essential for the purpose of the contract. All this attends to a restrictive interpretation of the transmission.
Exclusive exploitation of copyright or not
This circumstance must be specified in the agreement. If nothing is mentioned, it will be understood that the contract is not exclusive.
Exclusivity implies the impossibility of exploitation of rights by another person, even by the assignor of the rights himself.
This allows the assignee to prosecute infringers, bringing legal action, without the need for rights holders.
The exclusive assignee, unless otherwise agreed, may grant non-exclusive authorizations in favor of third parties.
The transfer of exclusive rights constitutes the transferee in the legal obligation to put all the necessary means for the effective exploitation of the work according to its nature and the uses of the professional activity , industrial or commercial in question (art. 48 LPI). This norm allows the exercise of judicial actions in case of breaching this obligation.
The Law pays special attention to the author’s right to obtain compensation. In his art. 46 requires, as a general rule, that this remuneration be proportional to the income obtained from the exploitation. In this way it is intended to make the author participate in the success of his creation in a percentage way strong>. P>
Only in assessed cases is lump sum remuneration allowed:
- Serious difficulty in determining or proving income.
- Ancillary exploitation of the work.
- When the work is integrated with others and does not constitute an essential element in the whole.
- In the first and only edition of certain written works listed by the Law (dictionaries, anthologies, encyclopedias, scientific works, translations, editions at reduced prices, etc.).
If the flat-rate payment produces a manifest disproportion between the transferee’s benefits and the author’s compensation, the author can request a revision of the contract or an increase in his income .