Does a copyright license or assignment have to be in writing?

Our page on IP licensing and assignments explains the difference between renting rights and selling them. This page answers the narrower question that decides whether either deal holds up: what the Copyright Act requires on paper. The rule is short, it sits in 17 U.S.C. 204(a), and it applies to creators and companies in Georgia exactly as it does everywhere else in the country, because copyright is federal law.

How the writing rule works, step by step

1. Name the grant. Decide whether the deal moves ownership of a right (an assignment, an exclusive license, a mortgage) or only gives permission (a nonexclusive license). Section 101 calls the first group a "transfer of copyright ownership" and expressly leaves nonexclusive licenses out of that term (17 U.S.C. 101).
2. If it is a transfer, put it in writing. A transfer, other than one by operation of law, is not valid unless there is an instrument of conveyance, or a note or memorandum of the transfer, in writing and signed by the owner of the rights conveyed or the owner's duly authorized agent (section 204(a)).
3. Get the right signature. The person who owns the rights signs. The statute does not require the buyer or licensee to sign, although a two-way agreement normally carries both signatures.
4. Consider an acknowledgment. A notary's certificate is not required for validity, but it is prima facie evidence that the transfer was signed (section 204(b)). For a document signed abroad, the certificate comes from a U.S. diplomatic or consular officer or an authorized official whose authority such an officer certifies.
5. Record it where it counts. Recording with the Copyright Office is voluntary, but it decides priority between conflicting transfers and gives the public constructive notice once the work is registered (17 U.S.C. 205). Our page on recording a copyright assignment or license walks through the filing and the $95 electronic fee.
6. Calendar the long tail. Most grants an individual author signs on or after January 1, 1978 can be terminated decades later, whatever the contract says (section 203).

What counts as a transfer, and what does not?

Section 101 defines a transfer of copyright ownership as "an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation" of a copyright or of any of its exclusive rights, "whether or not it is limited in time or place of effect, but not including a nonexclusive license." Two consequences follow, and both surprise people.

First, an exclusive license is treated as a transfer even when it is narrow. A five-year exclusive license to use a photograph on packaging in the United States is still a transfer of part of the copyright, so it needs the signed writing. Copyright is divisible: any of the exclusive rights in section 106, and any subdivision of them, can be transferred and owned separately, and the owner of a particular right gets all the protection and remedies of a copyright owner for that right (17 U.S.C. 201(d)).

Second, a nonexclusive license is not a transfer, so section 204 does not require it to be written or signed. That does not make a handshake license a good idea. Its terms are whatever the parties can later prove, and, as the next section shows, a written and signed nonexclusive license gets protection that an oral one does not.

Why put a nonexclusive license in writing anyway?

Because of priority. Under section 205(e), a nonexclusive license prevails over a conflicting transfer of ownership, whether or not the license is recorded, if it is evidenced by a written instrument signed by the owner of the rights licensed and it was taken before the transfer was signed, or in good faith before the transfer was recorded and without notice of it. An oral license gets no such statutory protection. If the owner later sells the copyright to a buyer who objects to your use, the signed paper is what keeps your permission alive.

Written terms also settle the questions that cause most licensing disputes: which uses, which media, which territory, for how long, and for what payment. The four variables on our IP licensing page (term, territory, media and money) are hard to prove from memory. For a creator, a written license is also the way to advertise and price permission, an idea our post Creative Smarts, Part I develops when it discusses Creative Commons licenses, which are standard written nonexclusive grants.

What should a short signed grant say?

The statute accepts "an instrument of conveyance, or a note or memorandum of the transfer," so a one-page document can work when it is precise. The Copyright Office's recordation rules add a practical test: a document it records must be complete by its own terms and legible (37 CFR 201.4(d)). A grant that meets those standards usually covers:

• the parties' full legal names, and the signer's authority if a company or agent signs;
• the work, identified by title and, where it exists, registration number, so a search would reveal it;
• the words of grant: "assigns" for a sale, or "grants an exclusive license" or "a nonexclusive license" for a rental, never a mix;
• which exclusive rights are covered (reproduction, distribution, derivative works, public performance or display), and any rights reserved, such as the creator's portfolio use;
• term, territory and media;
• the payment, or a statement that consideration was received;
• a further-assurances promise to sign whatever else is needed to record or confirm the grant; and
• the owner's signature and date.

Our older post on making your IP work for you sets out the business side of the same checklist: identifying the right owner, the scope, and fair terms.

What changes the answer

• Who owns the right you are licensing. Only "the owner of the rights conveyed" or its duly authorized agent can sign an effective transfer (section 204(a)). If a song, photo or script has several owners, check who holds which right before anyone signs; our page on what you give up when you sell a music catalog shows how ownership splits between a composition and a recording.
• Co-owners. The House Report printed with section 201 explains that co-owners of a copyright are treated generally as tenants in common, each with an independent right to use or license the work, subject to a duty to account to the others for profits. A buyer who needs ownership or exclusivity should still get every co-owner's signature.
• Employees and commissioned work. If the work is made for hire, the employer or commissioning party is the author from the start and owns all the rights unless both sides agree otherwise in a signed writing (section 201(b)). A commissioned work qualifies only in nine categories and only with a written instrument signed by both parties; our page on choosing between a work made for hire and an assignment explains when each applies.
• Magazine and anthology contributions. Without an express transfer, the owner of a collective work is presumed to get only the privilege of reproducing and distributing a contribution in that collective work, its revisions and later works in the same series (section 201(c)).
• Transfers by operation of law. Section 204(a) does not apply to a transfer by operation of law, and a copyright may pass by will or intestate succession (section 201(d)(1)).
• Termination. An exclusive or nonexclusive grant signed by an individual author on or after January 1, 1978, other than for a work made for hire or by will, can be terminated in a five-year window that opens 35 years after the grant, "notwithstanding any agreement to the contrary" (17 U.S.C. 203). Our page on getting rights back after 35 years has the timeline.

A worked example

Common mistakes

• Treating a paid invoice as a transfer. Paying for a work does not move the copyright. Unless it is a work made for hire, ownership moves only through a writing the owner signs.
• Calling a license "exclusive" in an email thread nobody signs. If it is exclusive, it is a transfer, and the signed-writing rule applies.
• Mixing the words. A document headed "License" that "grants, transfers and assigns all right, title and interest" is a sale, as our licensing page warns. Decide which deal you mean and use those words throughout.
• Leaving the work unidentified. "All artwork created for the client" invites argument. List titles, dates and registration numbers so a reasonable search would reveal the document.
• Getting the wrong signature. A manager, label or production company can sign only if it owns the right or is the owner's duly authorized agent. Ask for proof of authority.
• Forgetting brand deals. Content made for a sponsor raises the same questions, which is why our post on influencer contract tips tells creators to define IP ownership and usage rights in the contract itself.

What to do this week

1. List every work your business uses but did not create in-house, and note who made it.
2. For each one, find the signed document that gives you ownership or an exclusive right. Mark anything that rests on an email, invoice or conversation.
3. For the gaps, decide whether you need ownership (an assignment), exclusivity (an exclusive license) or just permission (a nonexclusive license), and get a short grant signed by the owner.
4. Confirm the signer owns the right, or holds written authority from the owner.
5. Register the important works and record the key transfers with the Copyright Office.
6. Put any author-signed grant into a calendar for its termination window, 35 years out.

Frequently asked questions

Does an electronic signature count?

For recording, the Copyright Office treats any legally binding signature, including an electronic signature, as an "actual signature" (37 CFR 201.4(c)(3)). Documents without a handwritten signature are recorded as copies with a sworn certification, and click-to-agree signatures need a description and supporting evidence (201.4(d)(1)).

Does the document have to be notarized?

No. Section 204(b) says a certificate of acknowledgment is not required for validity. It is still useful, because a proper certificate is prima facie evidence that the transfer was signed.

Does a license survive if the owner sells the copyright?

A nonexclusive license that is written and signed by the owner survives a later transfer, recorded or not, if it was taken before the transfer was signed, or in good faith before the transfer was recorded and without notice of it (section 205(e)). An unwritten license has no such statutory priority.

Can one co-owner license the work without the others?

The House Report printed with section 201 says each co-owner generally has an independent right to use or license the work, subject to a duty to account to the others for profits. A licensee who needs exclusivity, or the right to sue, should get every co-owner to sign.

Who can sue if someone copies a licensed work?

The legal or beneficial owner of the exclusive right that was infringed (section 501(b)). An exclusive licensee can sue for its right; a nonexclusive licensee cannot, as our page on whether a licensee can sue an infringer explains.

Does a trademark license have to be in writing too?

Not under the trademark statute. The USPTO's examination manual says a controlled license may be recognized "whether oral or in writing" (TMEP 1201.03(e)). What matters is the owner's control over quality, covered on our page on trademark license quality control. A trademark assignment, by contrast, must be in writing (15 U.S.C. 1060(a)(3)).

Zala IP Law drafts and reviews licenses and assignments for creators, brands and production companies, and Shreepal J. Zala practices federal intellectual property law nationally. If a key deal rests on an email or a conversation, request a consultation or call 404-313-1701.