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
Assignment is permanent transfer of ownership of your intellectual property (IP) rights in the photograph (may be for a given period or territory).
Control Over IP
In an assignment, the owner (assignor) of IP loses all rights/ control over the IP and the assignee acts as the owner.
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).
Quantum of Rights that can be transferred
You can transfer partial or all IP rights (absolute transfer) in the photograph.
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.
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.
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.
Licensing is limited right to use your IP, without any transfer of ownership (may be for a definite term and defined geographical territory).
Owner of IP can continue to use IP and can regain full control over the same.
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.
You can transfer only limited rights in photograph, else it would become an assignment.
There are no specific procedural requirements for licensing of photograph in any statute.
In a licensing arrangement, you can impose restrictions on sub-licensing of the photograph.
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 licensing 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.
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