Can Your Copyright Be Assigned Without Your Knowledge?

It’s black letter U.S. copyright law that an assignment of copyright must be in writing.  Section 204(a) of the Copyright Act provides that “a transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance or a note or memorandum of the transfer is in writing and signed by the owner of the rights conveyed.” 17 U.S.C. § 204(a).

So, how can your copyright be assigned without your knowledge??

The court in Johnson v. Storix decided in the 9^th Circuit U.S. Ct. of Appeals on December 19, 2017, explains that the writing need not contain any magic words such as “assignment” or even “copyright” as long as the intent is clearly expressed.

In this case, Johnson developed software as a sole proprietor (Storix Software). The question arose whether he transferred ownership of the software to a company he formed (Storix, Inc.) prior to transferring partial equity ownership to others. There was no express written agreement whereby Johnson assigned ownership in the software to Storix.

There was a bad turn of events and Johnson had a dispute between others at Storix, Inc. Johnson basically said: “I own the software, not Storix, I never assigned it, and I’m taking my software and leaving.” A strict reading of the law would back up Johnson’s claim. However, …

On March 15, 2004, Johnson authored and affixed his name to the Storix 2003 Annual Report which stated: “All assets from Storix Software were transferred to Storix Inc., as of its incorporation as of February 24, 2003.”

Does the Annual Report constitute a written agreement? Does the fact that Johnson authored and put his name to the Annual Report constitute a signature? The Annual Report was written about one year after the stated transfer of assets, does that satisfy the Copyright Act’s requirements?

Unfortunately for Johnson, the court answered are yes, yes and yes.

The court found that the Annual Report constituted a “writing” due to the fact that it expressed the intent of Johnson to transfer ownership of the software to Storix, Inc. because it stated that “all assets” were transferred. So even without mention of “assignment” or “copyright” – the wording was considered sufficient.

What constitutes a “signature” under U.S. law is very flexible, it can be anything from letterhead to clicking an accept box on an online form. So, attaching Johnson’s name to the Annual Report he authored qualified as a signature.

Also, case-law has affirmed that an oral transfer of copyright followed by a written confirmation satisfies the Copyright Act’s “writing” requirement. So, the Annual Report, written almost a year after the actual transfer, served as a later confirmation.

See the text of the court decision HERE

Bottom Line:

Obviously, transfers of intellectual property, including copyright, should be memorialized in assignment agreements, or work made for hire agreements. However, due to the great flexibility under U.S. law of what constitutes a “writing” and a “signature,” especially given the wide use and variety of the electronic expressions of both, care should be taken to ensure that you do not inadvertently either transfer copyright ownership, or give anyone arguments they can use to claim that you did so transfer your copyright.