Consider this hypothetical fact situation: ‘A’, a student at university ‘X’, submits his thesis to the University. After the completion of the course, ‘A’ publishes his thesis as a book. University ‘X’ alleges copyright violation as the Terms and Conditions (“T&C”) of his admission assigns the copyright over the thesis with the University. T&C allows a student to reproduce the thesis for non-commercial purposes only. What is the legal tenability of this framework?
On the face of it, University ‘X’ seems to enjoy absolute rights over the thesis. It looks like a clear case of infringement. However, as one looks deeper, it may appear to be a fragile framework.
[Note that this opinion is general in nature considering my intention to give a broad legal perspective on the framework.]
Section 19 of Copyright Act, 1957
According to the fact situation, the author, ‘A’, assigned his copyright over the thesis with the University. The relevant parts of Section 19 of Copyright Act, 1957 (“1957 Act”) which deals with assignment of copyright are as follows:
“19. Mode of assignment – (1) No assignment of the copyright in any work shall be valid unless it is in writing signed by the assignor or by his duly authorized agent.
(3) The assignment of copyright in any work shall also specify the amount of royalty and any other consideration payable, to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties.
S.19 of 1957 Act envisages the existence of legally binding, written assignment contract as a pre-condition. When compared to the Indian Contract Act, 1872, it sets out certain mandatory requirements such as assignment in writing signed by the assignor or by his duly authorized agent, specification of rights assigned, duration and territorial extent etc.
‘Amount of royalty and any other consideration payable’ is a mandatory requirement. If T&C of the University ‘X’ is silent on this requirement, the validity of the agreement can be challenged.
Indian Contract Act, 1872
Since Indian Contract Act, 1872 (“1872 Act”) is the general law, it is imperative to comply with its requirements. Accordingly, S.10 of 1872 Act is relevant:
“10. What agreements are contracts – All agreements are contracts if they are made by the free consent of parties competent to contract, for a lawful consideration and with a lawful object, and are not hereby expressly declared to be void.
Nothing herein contained shall affect any law in force in India and not hereby expressly repealed by which any contract is required to be made in writing or in the presence of witness or any law relating to the registration of documents.”
It may be possible to challenge the T&C on the following counts:
a) T&C vitiates free consent of parties:
Free consent is vitiated by inter alia undue influence and coercion. They make the contract voidable. As per S.16 of 1872 Act, a contract is said to be induced by undue influence where the relations subsisting between the parties are such that one of the parties is in a position to dominate the will of the other and uses that position to obtain an unfair advantage over the other. Further, a person is deemed to be in a position to dominate the will of another when he holds a real or apparent authority over the other. Also, where a person who is in a position to dominate the will of another, enters into a contract with him, and the transaction appears on the face of it or on the evidence adduced, to be unconscionable, the burden of proving that such contract was not induced by undue influence shall lie upon the person in a position to dominate the will of the other.
When T&C assigns copyright over the thesis with the University in an absolute manner, it does look to be one-sided. Allowing a student to reproduce the thesis for non-commercial purposes doesn’t balance the scales. Therefore, the very tenability of the framework can be challenged on the ground of undue influence.
It is doubtful whether coercion can be used as a ground for challenge here. ‘Coercion’ under 1872 Act has a limited ambit. It may be, however, possible to challenge the T&C on the (weak) ground of equity citing academic coercion. Note that ‘economic duress’ is an accepted ground under common law and an analogy may be possible here.
b) T&C vitiates the requirement of consideration
Every agreement to be enforceable at law must necessarily be supported by consideration. This rule is in accordance with the maxim “Ex nudo pacto non oritur actio” which signify that out of nude pact, no cause of action arises. The expression ‘consideration’ is understood in the sense quid pro quo which means something in return. Can award of degree / award of marks be cited as a consideration for the assignment of copyright? It is a doubtful proposition as ‘fees’ being paid (and not assignment of copyright) is the consideration for the education imparted which culminates in award of degree. It is irrelevant whether the ‘fees’ is paid by the student or the government. Legally, ‘fees’ encapsulate quid pro quo element and in this case, for the education imparted. It can, therefore, be argued that the assignment of copyright is without consideration and therefore, void.
Broadly speaking, it may be possible to challenge the framework on the grounds of lack of consideration and vitiating free consent. Ss.18 – 19A of 1957 Act may offer other grounds as well depending on the given fact situations. As I stated earlier, this post doesn’t substitute a formal legal opinion given on a specific fact situation. This post carries the following message: if you are precluded from commercializing your thesis by the T&C of your university, do not take it as a ‘full stop’.