A “transfer of copyright ownership” is “an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright, whether or not it is limited in time or place of effect, but not including a nonexclusive license.” 17 U.S.C. §101. A transfer of copyright must (1) be in writing, (2) should use critical words such as “copyright” or “exclusive rights,” and (3) must be signed by the transferor. 2 Patry on Copyright § 5:107 (2007). There is one case that holds that e-mails do not satisfy the signature requirement. Ballas v. Tedesco, 41 F.Supp.2d 531 (D.N.J. 1999). “Plaintiff has not provided this Court with evidence of a signed writing granting him an exclusive license to market the sound recordings. Instead, Plaintiff argues that the parties’ exchange of e-mails evidences the agreement. The exchange of e-mails, however, does not satisfy the statutory requirement of a written instrument signed by the Defendants.” Id. at 541.

However, the Ballas case was decided before the 2000 Electronic Signatures in Global and National Commerce Act, 15 U.S.C.A. §7001 et seq. (the “ESign Act”) became effective.

The relevant part of 15 U.S.C. §7001(a) reads as follows:

(a) In general

Notwithstanding any statute, regulation, or other rule of law (other than this subchapter and subchapter II of this chapter), with respect to any transaction in or affecting interstate or foreign commerce–

(1) a signature, contract, or other record relating to such transaction may not be denied legal effect, validity, or enforceability solely because it is in electronic form; and
(2) a contract relating to such transaction may not be denied legal effect, validity, or enforceability solely because an electronic signature or electronic record was used in its formation.

(b) Preservation of rights and obligations

This subchapter does not–

(1) limit, alter, or otherwise affect any requirement imposed by a statute, regulation, or rule of law relating to the rights and obligations of persons under such statute, regulation, or rule of law other than a requirement that contracts or other records be written, signed, or in nonelectronic form; or
(2) require any person to agree to use or accept electronic records or electronic signatures, other than a governmental agency with respect to a record other than a contract to which it is a party.

The ESign Act applies to “any transaction in or affecting interstate or foreign commerce,” and copyright transfers would presumably fall under this umbrella, although there are no cases that are directly on point. Other cases that have analyzed the application of the ESign Act may be somewhat instructive. For example, in Campbell v. General Dynamics Government Systems Corp., 407 F.3d 546, 555 (1st Cir. 2005), the court concluded that the ESign Act “likely precludes any flat rule that a contract to arbitrate is unenforceable under the ADA solely because its promulgator chose to use e-mail as the medium to effectuate the agreement.” Likewise, in In re Cafeteria Operators, L.P., 299 B.R. 411 (Bkrtcy.N.D.Tex. 2003), the court held that e-mails sent between parties constituted a “writing” under the Perishable Agricultural Commodities Act. The Southern District held in Medical Self Care, Inc. ex rel. Development Specialists, Inc. v. National Broadcasting Co., Inc., No. 01CIV4191 (LTS)(RLE), 2003 WL 1622181 (S.D.N.Y. March 28, 2003), where a consent to an assignment clause required “prior written consent,” an e-mail may be considered a writing to enforce the clause.

However, the ESign Act also states that the use or acceptance of electronic signature is not mandatory. See, for example, Prudential Ins. Co. of America v. Prusky, 413 F.Supp. 2d 489 (E.D. Pa. 2005) (holding that an insurer did not violate the ESign Act by refusing to accept transfers by fax or electronic means).

Thus, a court will probably be foreclosed from holding that an electronic signature is inadequate for copyright assignments because of its electronic nature in light of 15 U.S.C. §7001(a), which states that a “signature… may not be denied legal effect, validity, or enforceability solely because it is in electronic form.” However, there is no requirement that the assignor may be forced to transfer a copyright assignment in electronic form. 15 U.S.C. §7001(b) states that the Act will not “require any person to agree to use or accept electronic records or electronic signatures.”

The definition of “electronic signature” in the ESign Act, 15 U.S.C. §7006, is very broad and includes sounds, symbols, and even processes in general, as long as such sounds, symbols or processes are logically connected with an instrument and are intended by the signer to sign the instrument.

(5) Electronic signature

The term “electronic signature” means an electronic sound, symbol, or process, attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record.

Thus, a copyright assignment via a click wrap agreement whereby an assignor must undergo the process of clicking “I agree” and pressing “send” could be considered a valid assignment, taking into account the broad definition of an electronic signature under the ESign Act, which includes “processes” as valid signatures.

Although it is extremely likely that an assignment by electronic means bearing the electronic signature of the assignor will be given legal effect, I would still proceed with a little bit of caution, because Ballas has not been overruled, the ESign Act is still (relatively) new, and there is no case law applying the ESign Act to copyright assignments.