Principles of Copyright Law – Cases and Materials

property on the terms specified by the licensor, who remains the owner. A licence may be quite

informal and even implied. Posting material, without any stated restrictions, on an electronic

bulletin board may, for example, imply a licence to users to download and make a hard copy of

it, at least for their private use. Licences are usually personal to the licensee unless transfer or

sub-licensing is clearly permitted or implied from the circumstances. ...

a) Exclusive, Sole, and Non-exclusive Licences

Licences can be exclusive, sole, or non-exclusive. An exclusive licence gives the licensee the

power to exercise a right to the exclusion of all others including the licensor: it is as close to an

assignment as a lease of land is to an outright conveyance of the fee simple. An exclusive

licensee may grant an exclusive sub-licence, and the latter sub-licensee may presumably do

likewise. Such exclusive licences and sub-licences of copyright must be in writing.

A sole licence means that the licensee is the only licensee appointed, but does not preclude the

licensor from competing with the licensee. A non-exclusive licence implies that other licensees

may be appointed to compete with one another and the licensor. ... An exclusive distributor is

not a licensee unless it is authorized to do an act within the copyright owner’s rights. For

example, if he is also authorized to reproduce the protected material, even for limited purposes

such as promotion, the distributor may be an exclusive licensee of the copyright to that extent.

This status may enable him to sue infringers.

2. ASSIGNMENTS AND EXCLUSIVE LICENCES MUST BE IN
   WRITING TO BE VALID

U.S., U.K. and many other laws require that, to be valid, an assignment or

exclusive licence must be in writing; the assignee or exclusive licensee is

entitled to sue for infringement of the copyright. The exclusive licensee must

usually make the copyright owner a party to the proceedings.

A non-exclusive licence need not be in writing. The non-exclusive licensee

normally cannot sue for infringement of the copyright.

The consequences of not having an assignment or exclusive licence in writing

varies among jurisdictions. There are three possibilities:

(a) The transaction is void and no interest passes.

(b) In the U.K. and many Commonwealth countries, the transferee or

licensee may have an “equitable interest” in the copyright and can, if

the circumstances require it (e.g., if he has paid money to the

transferor or licensor), ask a court to compel the transferor or licensor

to sign a writing to validate the transaction fully. Meanwhile, the

transferee or licensee can sue for a pretrial injunction, but cannot sue

for a final injunction or for damages until the necessary writing is

produced.

(c) In the U.S., the transaction is invalid as an assignment or exclusive

licence but may take effect as a non-exclusive licence.

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III. OWNERSHIP OF RIGHTS