Calcutta High Court
Kamal Kumar Bansal & Anr vs Gautam Kundu & Ors on 23 August, 2010
Author: Sanjib Banerjee
Bench: Sanjib Banerjee
GA No. 2721 of 2010
CS No. 220 of 2010
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
KAMAL KUMAR BANSAL & ANR.
Versus
GAUTAM KUNDU & ORS.
BEFORE:
The Hon'ble JUSTICE SANJIB BANERJEE
Date : 23rd August, 2010.
Mr.S.N. Mookerjee, Sr. Adv., Mr. Ranjan Bachawat, Adv., Mr.Debnath Ghosh, Adv., Mr.S. Ray Chowdhury, Adv., Mr.O. Chatterjee, Adv., for the plaintiffs.
Mr.S.K. Kapur, Sr. Adv., Mr.Jishnu Saha, Adv., Mr.Vipul Kundalia, Adv., Mr.K. Shah, Adv., Ms.Sonal Shah, Adv., for the defendants.
The Court : The plaintiffs claim to be the producers of the Bengali film Ogo Bodhu Sundari which is remembered as the last film of Bengali 2 icon Uttam Kumar. The plaintiffs claim that in the defendants having released songs which are identical to some of the songs that were contained in the plaintiffs' film, they have infringed the plaintiffs' copyright therein. In addition, the plaintiffs say that the defendants have attempted to pass off their proposed film by the same name as the plaintiffs' in the defendants copying the stylised form in which the film name Ogo Bodhu Sundari had been written by the plaintiffs. The third grievance is in respect of the film itself, which is proposed to be released on August 27, 2010, but the plaintiffs say that since the plaintiffs have not had an opportunity to view the defendants' film, they have reserved their rights and the suit has been instituted with leave under Order II Rule 2 of the Code of Civil Procedure.
The plaintiffs refer to three of the songs that have been released by the defendants. The plaintiffs say that under an agreement of April 3, 1979 the plaintiffs commissioned one Bibhuti Bhusan Mukherjee for the purpose of writing the screenplay, dialogue and lyrics relating to their film. A copy of the agreement appears at pages 38 to 40 of the petition. The plaintiffs rely on the future assignment of the copyright in the work then proposed to be created by Bibhuti Bhusan Mukherjee which is evident from the said agreement.
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The plaintiffs say that they had engaged one Bappi Lahiri for the purpose of composing the music for their film. The plaintiffs do not have a copy of the agreement that may have been executed with Bappi Lahiri but insist that as the producer of the film, it was the second plaintiff who was the first owner of the copyright in the music and musical composition relating to the said film.
Though the first plaintiff claims to have written the story for the film, not much is made of this claim since the defendants laugh at the suggestion and say that the plaintiffs' film was a substantial reproduction of a popular English film by the name of 'My Fair Lady' which was based on George Bernard Shaw's Pygmalion.
The plaintiffs also claim to have commissioned one Gautam Barat to create the artistic work relating to the form of depiction of the name of the plaintiffs' film. The plaintiffs say that they do not have a copy of the agreement with Gautam Barat but they have relied on recent correspondence exchanged with Gautam Barat which would go to show that notwithstanding Barat being the creator of the artistic work embodied in the stylised form of the name of the film being written, it was the plaintiffs who were the owners of the copyright therein.
The plaintiffs refer to the copies of the jacket relating to the music records of the plaintiffs' film. The plaintiffs compare the jacket to the inlay 4 cards relating to the compact discs of the defendants' film music which have already hit the market. The plaintiffs complain of the lyrics of at least three of the songs which appear in the defendants' music recording. The plaintiffs say that the second, third and fifth songs are substantial copies of four of the songs contained in the plaintiffs' film, with the lyrics being a verbatim reproduction of what was contained in the plaintiffs' film. The appearing defendants - all but defendant no.7 Bappi Lahiri are represented
- say that the defendants claim their right under an arrangement with the sixth defendant company. It is not the appearing defendants' case that either the lyrics or the musical composition in respect of the relevant songs are substantially different from what was contained in the plaintiffs' film. They suggest that it is the sixth defendant company which is the owner of the copyright in the literary, dramatic and musical works contained in the lyrics and the music relating to the songs contained in the original film; and the sixth defendant has permitted the producers of the new film to exploit the same.
The appearing defendants say that by an agreement of August 22, 1979, the plaintiffs and/or the second plaintiff as the producer of the original film had assigned the copyright in the entirety of the songs relating to the original film music to the sixth defendant and, accordingly, the sixth defendant has duly paid royalty to the plaintiffs for the last 31 years. The 5 appearing defendants refer to some of the recent letters exchanged between the plaintiffs and the sixth defendant from which it appears that the plaintiffs did not have a copy of the relevant agreement and required the sixth defendant to forward a copy thereof. The appearing defendants say that the sixth defendant had duly forwarded a copy of the agreement of August 22, 1979 to the plaintiffs, but the plaintiffs have feigned ignorance thereof at paragraphs 18 and 19 of the petition. The appearing defendants refer to the averments in the petition, and particularly to those contained in paragraph 22 thereof, in so far as they relate to the music and say that the plaintiffs were aware that the entirety of the works relating to the music of the plaintiffs' film had been assigned for valuable consideration to the sixth defendant company and as such that the plaintiffs did not retain any of the rights in respect thereof.
From a copy of the agreement of August 22, 1979, the appearing defendants have relied primarily on clauses 1, 5 and 8 thereof. Clauses 2, 3, 4 and 11 have also been placed by the parties. Though several Clauses of the agreement are relevant, but at this ad interim stage, clauses 2, 5 and 8 of the agreement of August 22, 1979 may be noticed :
"2.The Clients shall as soon as possible before release of the film for exhibition supply the Company with sound-tracks or recorded tapes of 6 such musical and/or other works from the film Ogo Bodhu Sundari as the Company shall select and the Company shall utilise such sound tracks or recorded tapes for the purpose of re-recording therefrom and the subsequent manufacture of gramophone records provided they are in the opinion of the Company suitable for such purpose.
The Client agree to indemnify the Company and keep the Company indemnified from and against all actions, claims and damages in which the Company may be incurred by reason of such re-recording and subsequent manufacture, issue and sale of gramophone records derived from sound-tracks or recorded tapes supplied by the Clients as aforesaid."
"5. The Clients hereby agree that they assign their gramophone recording rights in all works to be re-recorded under the provisions of the Agreement to the Company, and hereby agree further to indemnify and keep indemnified the Company in the case of such works as aforesaid from and against all actions, claims and damages which the Company 7 may incur by reason of the re-recording, issue and sale of such works."
"8.The Company shall be the owner of the original plate within the meaning of the Copyright Act 1957, and any extensions or modifications thereof of each title re-recorded under the provisions of this Agreement at the time when such plate shall be made. The Company shall also be entitled to the sole right of production, reproduction, sale, use and performance (including broadcasting) throughout the world by any and every means whatsoever of the records of the works performed by the artists and musicians etc. under this Agreement. The Company shall in its absolute discretion be entitled to authorise any other persons, firms or corporation in any part of the world to manufacture, sell and/or catalogue records of all or any of the titles re-
recorded under the provisions of this Agreement when royalties shall become payable to the Clients as mentioned in Clauses 4 and 6 hereof."8
While the appearing defendants submit that the entirety of the plaintiffs' rights relating to the literary, dramatic and musical works embodied in the music and songs contained in the plaintiffs' film had been assigned in favour of the sixth defendant, the plaintiffs' endeavour to demonstrate that only restricted rights were assigned. According to the plaintiffs, it was only the gramophone recording rights that had been transferred or assigned and for such purpose they rely on the expression in clause 2 of the agreement, " . . . shall utilise such sound tracks or recorded tapes for the purpose of re-recording therefrom and the subsequent manufacture of gramophone records . . ."
The plaintiffs insist that under the said agreement, the plaintiffs were to hand over the sound recording or recorded tapes of the songs from the plaintiffs' film to the sixth defendant and the sixth defendant's rights in respect thereof were only to record from such sound recording, including making an original plate therefrom and exercising all the rights relating to the original plate. The plaintiffs say that clause 8 of the agreement, the one that recognises the sixth defendant to be the owner of the original plate within the meaning of the Copyright Act, 1957, permitted the sixth defendant to produce, reproduce, sell, use and perform "the works performed by the artists and musicians under this agreement." The plaintiffs say that such right would not permit the sixth defendant to claim 9 to be the owner of the copyright in the literary, dramatic or musical works embodied in the songs as the right of the sixth defendant was restricted to the performance which had been rendered by the plaintiffs' artists and was confined to the sound recording made over by the plaintiffs to the sixth defendant.
The appearing defendants say that if the rights of the assignee are to be so restricted, it would make the agreement meaningless. The defendants say that notwithstanding the gramophone recording rights having been assigned in favour of the sixth defendant, such defendant had exploited the music for other purposes and had paid royalty to the plaintiffs which the plaintiffs have accepted without demur. The defendants refer to a recent letter issued on May 6, 2010 by the sixth defendant to the second plaintiff, forwarding a cheque for Rs.8,793/- on account of digital and mobile download royalty. The defendants contend that it was always the understanding of the parties that it was the sixth defendant which was the owner of the copyright in the songs after the second plaintiff as the first owner thereof had duly assigned the entirety of the works in favour of the sixth defendant for valuable consideration and against the second plaintiff's right to receive royalty. The appearing defendants have relied on a judgment reported at AIR 2006 Cal 340 for such purpose. However, the 10 decision in that case turned on the interpretation of the relevant agreement.
The parties have relied on divers of the provisions of the Copyright Act, 1957, including Sections 14 and 52(i)(j) thereof. The plaintiffs have relied on to interpretation clause in the Act prior to its amendment in 1994. The plaintiffs say that as the owner of the original plate, within the meaning of Copyright Act, 1957, prior to its amendment, the sixth defendant was entitled to only reproduce the work that was embodied in the original plate itself and not exploit the literary content thereof or the musical or the dramatic aspects thereof de hors the particular performance in the recording that was trapped in the original plate.
There is merit in the argument made on behalf of the plaintiffs. Prima facie, it appears that the defendants have infringed the plaintiffs' copyright in respect of the four songs contained in the plaintiffs' original film and which appear under the following titles in the defendants' inlay cards :
song No.2 - Nari Charitra, song No.3 - Tui Jato Phul, song No.5 - Eito Jiban. The agreement of August 22, 1979 appears to be a partial assignment of the copyright that was restricted to the rendition of the songs and did not extend to the substantive content of the literary, dramatic or musical work therein. Partial assignment of copyright is recognised by the statute. Since an assignment of copyright has to be in 11 writing, if the writing envisages a partial assignment the assignee cannot claim complete assignment of the entire bundle of rights of the first owner of the copyright or the assignor. Clause 5 of the agreement limits the grant to the right to make records (or other forms of sound recording device), but such right is in respect of the sound recording made over by the plaintiffs to the sixth defendant. The agreement does not admit of a case of complete assignment of the literary, dramatic and musical work forming part of the songs.
There is, however, substantial basis to the defendants' submission that the plaintiffs may not have told the entire story in the petition and that the plaintiffs have chosen to come only a few days prior to the proposed release of the film. The defendants have relied on a letter dated June 9, 2010 issued by the plaintiffs to the sixth defendant by which the plaintiffs had sought a copy of the agreement that had been entered into between the plaintiffs and the sixth defendant. The defendants say that if the plaintiffs were aware in the beginning of June, 2010 that the music had already been released in May, 2010, there is no explanation as to why the suit was not instituted prior to now. The defendants also suggest that the belated institution of the suit is with ulterior motive and to extract undue benefit from the defendants since the defendants are likely to be 12 seriously prejudiced if the scheduled release of the film, including the songs proposed to be incorporated therein, is in any manner affected.
Notwithstanding the allegations contained in the petition, it is apparent that the plaintiffs may have been aware of the music relating to the defendants' film having been released in May, 2010, prior to the third week of July that has been referred to in the petition. The plaintiffs should deposit a sum of Rs.4,00,000/- by way of an undertaking in damages, if it is ultimately found that the order of injunction that is proposed to be made was undeservingly obtained by the plaintiffs. But the conduct of the plaintiffs, and even the apparent delay, would not disentitle them from seeking an order. The question of inconvenience becomes irrelevant when the plaintiffs appear to be, prima facie, the owner of the copyright and the defendants appear, prima facie, to have infringed the plaintiffs' copyright. If the sixth defendant had no right in the substantive work and only had a right in the particular rendition or performance, it could not have authorised the producers of the new film to exploit such rights.
As to the stylised form of the depiction of the film title Ogo Bodhu Sundari, there does not appear to be any defence shown by the defendants. Though the title may have been registered by the defendants with the Eastern India Motion Pictures Association or any other authority, the registration of the title would not permit the defendants to copy the 13 plaintiffs' style of presenting the title or the manner in which the plaintiffs had originally designed the writing of the title as this would amount to passing off. Prima facie, the defendants appear to have attempted to cash in on the goodwill and reputation of the original film by suggesting that their film has an association with the original one.
Accordingly, there will first be an order of injunction restraining the defendants, whether by themselves or by their servants or agents or assigns or otherwise howsoever, from depicting the name of the film Ogo Bodhu Sundari in any manner which bears any resemblance to the stylised manner in which the plaintiffs wrote the title in their original film of 1979.
There will also be an order of injunction restraining the defendants, again whether by themselves or by their servants or agents or assigns or otherwise howsoever, from publishing or selling or marketing any sound recording incorporating the music or lyrics in the three songs referred to above namely, song No.2 - Nari Charitra, song No.3 - Tui Jato Phul and song No.5 - Eito Jiban, including in the defendants' film and the sound recording relating thereto, in any manner whatsoever. The injunction relating to the songs will operate unconditionally till August 26, 2010 and thereupon only upon a sum of Rs.4,00,000/- being deposited by the plaintiffs with the Registrar, Original Side, which is to be held to the credit 14 of the suit and subject to further orders that may be made herein. The money is to be invested by way of a short-term fixed deposit with a nationalised bank having its branch within the vicinity of this Court.
Affidavit-in-opposition may be filed within four weeks from date; reply thereto, if any, within a fortnight thereafter. The matter will appear in the monthly list of October, 2010.
There will, however, be no impediment to the film being released, without prejudice to the rights and contentions of the parties, if the film does not incorporate the three songs or the publicity and other material relating thereto do not depict the title of the said film in the same stylised form as the plaintiffs' original film.
The appearing defendants say that a premier of their film has been held earlier this morning and that the publicity material relating to such film, incorporating Ogo Bodhu Sundari in the particular form, has already been released. The holding of the premier of the film is disputed by the plaintiffs.
Urgent certified photocopies of this order, if applied for, be supplied to the parties subject to compliance with all requisite formalities.
(SANJIB BANERJEE, J.) sd/ 15