Q&As

To provide for an effective assignment of future copyright works by a licensee back to the licensor (for example, the assignment back of future improvements made by a licensee) is the original license by the licensor sufficient consideration or does the practitioner need to draft nominal consideration into the operative clause?

read titleRead full title

Produced in partnership with Joshua Marshall of Fieldfisher
Published on: 07 December 2016
imgtext

The starting point is that, in order to be valid, an assignment of existing Copyright must be in writing and signed by or on behalf of the Assignor under section 90 of the Copyright Designs and Patents Act 1988 (CDPA 1988).

Prima facie, these are the only formalities necessary to give effect to a legal assignment of existing copyright. Under general English law, assignment of legal rights which do not yet subsist amounts to a 'contract to assign', which may suffice to show equitable but not legal ownership of the assignee. However, future copyright in works not yet in existence are capable of being assigned by agreement pursuant to CDPA 1988, s 91, contrary to the general rule. The formalities required for an effective assignment of future copyright

Joshua Marshall
Joshua Marshall

Fieldfisher

Joshua is a solicitor in the Intellectual Property and Technology Protection and Enforcement team. He practices in all areas of intellectual property litigation including copyright, design, trademark and patent, primarily in proceedings issued in the Intellectual Property Enterprise Court. In addition, and as part of reputation management, he also specialises in proceedings for libel, slander and malicious falsehood. Joshua works with a variety of high end to high street fashion designers and retailers, including household names, assisting in the protection of their intellectual property rights in the market. He also works with an array of commercial entities in various sectors assisting in the protection and enforcement of their key brands, trademarks and product technologies. Finally, he advises both individuals and businesses in the protection of their reputations in the media and online.

Read moreRead more
Powered by Lexis+®
Jurisdiction(s):
United Kingdom
Related legal acts:
Key definition:
Copyright definition
What does Copyright mean?

Any property right over certain creative works, which grants exclusive right to the owner.

Read more

Popular documents

Copyright infringement—remedies

Copyright infringement—remediesThis Practice Note covers the remedies available for copyright infringement.The remedies available in cases of copyright infringement are the same as those available for all IP right infringement. For further detail, see Practice Note: Civil and criminal remedies for

Copyright infringement

Copyright infringementSTOP PRESS—Impact of the Retained EU Law (Revocation and Reform) Act 2023: This document contains references to retained EU law (REUL) and associated terms introduced by the European Union (Withdrawal) Act 2018 in connection with Brexit. From 1 January 2024, REUL that remains

Copyright—authorship and ownership

Copyright—authorship and ownershipThe Copyright, Designs and Patents Act 1988 (CDPA 1988) defines the author of a work as the person who created it. The author as creator is not always the owner of a work, although it is usually the case that they are the first owner of copyright unless employed, in

Copyright—secondary infringement

Copyright—secondary infringementSTOP PRESS—Impact of the Retained EU Law (Revocation and Reform) Act 2023: This document contains references to retained EU law (REUL) and associated terms introduced by the European Union (Withdrawal) Act 2018 in connection with Brexit. From 1 January 2024, REUL that