One of the great things about copyright is the flexibility of licensing. Copyright licences can be for a particular right, for a particular area, for a particular period, and subject to almost any conditions you can dream up. As a junior lawyer involved in a music industry contract review exercise, I remember seeing a licence in a recording contract that covered the entire universe “excluding Venus”. I can’t recall the name of the diva who had demanded the reservation of Venusian rights.
On more prosaic ground, the foundation of the copyright licensing regime in English law can be found in the Copyright, Designs and Patents Act 1988. This post discusses the key provisions of the CDPA applying to copyright licences generally.
The basic idea of a licence is revealed in Section 16, which defines the acts restricted by copyright. It says, in Section 16(2), that copyright is infringed by a person who without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by the copyright. So licences of copyright can be thought of as carve-outs from the set of restricted acts. However, remember licensing provisions in contracts can be much more than mere carve-outs.
Licences can bind successors in title
Section 90(4) provides that licences of copyright granted by a copyright owner are binding on the owner’s successors in title, with one exception. That exception is the person known to law students as “equity’s darling”: namely, “a purchaser in good faith for valuable consideration and without notice (actual or constructive) of the licence or a person deriving title from such a purchaser”.
Section 91(3) covers the same ground as 90(4), but in respect of a prospective owner of copyright. So, licences of copyright granted by prospective owners of copyright will also be binding upon successors in title, excluding equity’s darling.
Section 92 is concerned with exclusive licences. However, “exclusive licence” is given a special meaning: “a licence in writing signed by or on behalf of the copyright owner authorising the licensee to the exclusion of all other persons, including the person granting the licence, to exercise a right which would otherwise be exercisable exclusively by the copyright owner”. So, an exclusive licence that isn’t in writing or isn’t signed by or on behalf of the copyright owner isn’t an exclusive copyright licence for the purposes of the CDPA.
There are a couple of main consequences of a licence falling within the definition.
- Under Section 92(2), an exclusive licensee has the same rights against a successor in title who is bound by the licence as he or she has against the person granting the licence.
- Under Section 101, an exclusive licensee has (except vs the copyright owner) the same rights and remedies in respect of matters occurring after the licence grant as an assignee. These rights are concurent with those of the copyright owner.
Section 101A of the CDPA gives certain rights to non-exclusive licensees: that is, the holders of licences “authorising the licensee to exercise a right which remains exercisable by the copyright owner”. Such a licensee may bring an action for infringement if:
- the infringing act was directly connected to a prior licensed act of the licensee; and
- the licence is in writing and is signed by or on behalf of the copyright owner and expressly grants the non-exclusive licensee a right of action.
In an action brought under this Section 101A, the non-exclusive licensee has the same rights and remedies as the copyright owner would have had if he had brought the action. As with exclusive licencees, the rights are concurrent with those of the copyright owner.
Exercise of concurrent rights
The mechanisms for controlling the exercise of concurrent rights for both exclusive and non-exclusive licencees, are set out in Section 102.
The CDPA has important implications for the copyright licences, but what is most startling is the limited degree of statutory intervention. For the time being, licensors and licencees are relatively free to agree the basis upon which works will be licensed. Even where the CDPA does intervene, there may be freedom to contract-out of the statutory provisions, as with the rights of non-exclusive licensees.