Delhi High Court - Orders
Rdb And Co. Huf vs Harpercollins Publishers India ... on 29 September, 2021
Author: C.Hari Shankar
Bench: C.Hari Shankar
$~3(Original Side)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 246/2021, I.A. 6843/2021, I.A. 9516/2021, I.A.
10959/2021 & I.A. 11425/2021
RDB AND CO. HUF ..... Plaintiff
Through: Mr. Hemant Daswani, Mr.
Siddhant Shrivastava, Mr.
Anmol Saxena & Mr.
Sarabpreet Singh, Advs.
versus
HARPERCOLLINS PUBLISHERS INDIA PRIVATE
LIMITED ..... Defendant
Through: Ms. Swathi Sukumar,Ms.
Ashima Obhan, Ms. Taarika
Pillai, Mr. Naveen Nagarjuna &
Ms. Tarini Sahai, Advs.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
ORDER
% 29.09.2021
(Video-Conferencing)
I.A. 9516/2021 (under Order XIIIA, Rule 4 of the CPC, 1908- for summary judgment)
1. This is an application under Order XIIIA, Rule 4 of the Code of Civil Procedure, 1908 (CPC), as amended by the Commercial Courts Act, 2015, preferred by the defendant.
2. I have heard Ms. Swathi Sukumar, learned Counsel for the defendant at length. Ms. Sukumar has concluded her submissions on the application, and Mr. Daswani is to be heard in reply.
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 246/2021 Page 1 of 9 Signing Date:01.10.2021 09:27:283. Ms. Sukumar clarifies, to a query from the Court, that her client is seeking a summary judgment only qua Prayer ‗a' in Para 34 of the plaint, which reads thus:
―a. A Decree for permanent injunction restraining the Defendant, either by themselves or through its dealers, distributors, stockist, agents, associates, sister concerns, employees, servants, and/or assigns from making, selling, offering for sale, advertising directly or indirectly any work including indulging in novelization of the film/ script whether direct, indirect, derivative with respect to the cinematograph film NAYAK amounting to infringement of copyright of the plaintiff;‖
4. According to Ms. Sukumar, there is no chance of the plaintiff succeeding in the relief claimed in Prayer ‗a' of the plaint, and, therefore, the defendant is entitled to a summary judgment without subjecting the plaint to trial on the said prayer.
5. The submissions advanced by Ms. Sukumar may be enumerated thus:
(i) Mr. Satyajit Ray is, admittedly, the script writer and the author of the screenplay and the script in the film ―NAYAK‖.
(ii) The plaintiff is the producer of the said film. The plaintiff claims that, by virtue of being a producer of the film, it acquires automatic copyright in the underlying work, namely the screenplay and the script of the film.
(iii) Admittedly, there is no assignment of copyright, to the plaintiff, in the underlying work, either by Satyajit Ray or by Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 246/2021 Page 2 of 9 Signing Date:01.10.2021 09:27:28 any person claiming copyright under Satyajit Ray. Nor has any document assigning the rights in the underlying work to the plaintiff been placed on record.
(iv) In this context, my attention was invited to Paras 15 and 16 of the plaint, which read thus:
―15. Plaintiff states that apart from making and/or circulating and/or publishing and/or distributing infringing book and such other infringing work using the Plaintiff's sole and exclusive copyright in the cinematograph film including but not limited to the national award winning screenplay or otherwise, bare perusal of the novel launched by the Defendant would reveal that the Defendant, without acknowledging and without prior express permission from the Plaintiff, has blatantly used 23 film stills (pictures) including the original poster of the film on the infringing book's cover without any express permission of the Plaintiff. Copies of said 23 film stills are separately marked and filed with the list of documents. Copy of the comparison the original poster of the film and the blatant copy by the Defendant on its book cover is filed with the list of documents.
16. It is pertinent to mention that all these film stills, posters, pictures, etc. forming part of the intellectual property m the cinematograph film, carry a commercial value in themselves, till the expiry of the copyright, and any third person who wishes to use it, pays royalty/compensation to the owner of the copyright.
Plaintiff in the past has engaged in similar activity of licensing/commercial exploitation in the past with third party entities who have purchased rights/licenses to use the film still/posters for commercial benefit. Copies of emails and invoices citing such examples are filed with the list of documents.‖
(v) According to the plaintiff, therefore, in the submission of Ms. Sukumar, all rights in copyright, relating to the film Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 246/2021 Page 3 of 9 Signing Date:01.10.2021 09:27:28 NAYAK stand subsumed in the copyright held by the plaintiff as the producer of the film.
(vi) On merits, therefore, Ms. Sukumar, submits that, essentially, the issue that arises for consideration is whether, by virtue of the copyright held by the plaintiff in the film NAYAK, as its producer, the plaintiff also acquired an automatic copyright in the underlying work on which the film was based namely the script and screen play of the film, of which, admittedly, Mr. Satyajit Ray was the author.
6. My attention was, thereafter, invited to the definitions of ―author‖ and ―cinematograph film‖, as contained in Clauses (d) and (f) of Section 2 of the Copyright Act, 1957 (―the Act‖), which, in its un- amended avatar, would apply to the present case, in the submissions of Ms. Sukumar.
7. Additionally, Ms. Sukumar referred to Section 13(1) and (4), Section 14(1)(a) and (c), as well as provisos (a) & (b) to Sections 17 and Section 19 of the Act, which may be reproduced thus:
"13. Works in which copyright subsists (1) Subject to the provisions of this section and the other provisions of this Act, copyright shall subsist throughout India in the following classes of works, that is to say,--
(a) original literary, dramatic, musical and artistic works;
(b) cinematograph films; and
(c) records (4) The copyright in a cinematograph film or a record shall not affect the separate copyright in any work in respect of which or a Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 246/2021 Page 4 of 9 Signing Date:01.10.2021 09:27:28 substantial part of which, the film, or, as the case may be, the record is made.‖ "14. (1) For the purposes of this Act, ―copyright‖ means the exclusive right, by virtue of, and subject to the provisions of, this Act-
(a) in the case of a literary, dramatic or musical work, to do and authorise the doing of any of the following acts namely:-
(i) to reproduce the work in any material form;
(ii) to publish the work;
(iii) to perform the work in public;
(iv) to produce, reproduce, perform or publish any translation of the work;
(v) to make any cinematograph film or a record in respect of the work;
(vi) to communicate the work by radio-diffusion or to communicate to the public by a loud-speaker or any other similar instrument the radio-diffusion of the work;
(vii) to make any adaptation of the work;
(viii) to do in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub-
clauses (i) to (vi);
(c) in the case of a cinematograph film, to do or authorise the doing of any of the following acts, namely:-
(i) to make a copy of the film;
(ii) to cause the film, in so far as it consists of visual images, to be seen in public and, in so far as it consists of sounds, to be heard in public;
(iii) to make any record embodying the recording in any part of the sound track associated with the film by utilising such sound track;
(iv) to communicate the film by radio-diffusion.
"17. Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein:
Provided that -
(a) in the case of a literary, dramatic or artistic work made by Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 246/2021 Page 5 of 9 Signing Date:01.10.2021 09:27:28 the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner of the copyright in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in all other respects the author shall be the first owner of the copyright in the work;
(b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at the instance of any person, such person shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(c) in the case of a work made in the course of the author's employment under a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(d) in the case of a Government work, Government shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(e) in the case of a work to which the provisions of section 41 apply, the international organisation concerned shall be the first owner of the copyright therein.
"19. Mode of assignment-No assignment of the copyright in any work shall be valid unless it is in writing signed by the assignor or by his duly authorised agent.‖
8. Apropos these provisions, Ms. Sukumar submits that-
(a) Section 13(4) provides a complete answer to the plaintiff's case, as it postulates, unambiguously, that a separate copyright held in respect of the work underlying in a Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 246/2021 Page 6 of 9 Signing Date:01.10.2021 09:27:28 cinematograph film could not be prejudiced by the copyright held in the cinematograph film itself,
(b) the rights of the plaintiff, as the producer of the cinematograph film were restricted to Sub-Clauses (i) and (iv) of Clause 14(c), which did not include novelisation of the script or screenplay, on the basis of which the film was made,
(c) Mr. Satyajit Ray, as the author of the script and the screen play on the basis of which the film was made, was the copyright holder in the said script and screen play and enjoyed, therefore, the various rights enumerated in Section 14(a); at best, it could be said that the right under Section 14(a)(v) may have been licensed by Mr. Satyajit Ray to the plaintiff.
(d) all other rights which vested in Mr. Satyajit Ray, as the copyright holder in the script and screenplay of the film and as enumerated in the various sub-clauses of Section 14(a), vested in the defendants as the licensees of the legal heirs of Mr. Satyajit Ray.
(e) proviso (a) and (b) to Section 17 also clearly disabused any argument of a right, vesting in the producer of a cinematograph film, to the underlying work on the basis of which the film was made and
(f) Section 19 required that any assignment of copyright would have to be in writing, signed by the assignor or his duly authorised agent; the Act, did not, therefore, recognise any Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 246/2021 Page 7 of 9 Signing Date:01.10.2021 09:27:28 assignment by conduct or any oral assignment.
9. Ms. Sukumar also placed reliance on various judicial authorities. She referred, particularly, on Thiagarajan Kumararaja v. Capital Film Works (India) Pvt. Ltd1, the decision of a learned Single Bench of the High Court of Bombay in Adai Mehra Production Pvt. Ltd v. Sumeet P. Mehra2, and the judgments of the Supreme Court in Indian Performing Right Society Ltd. v. Eastern Indian Motion Pictures Association3 and Power Control Appliances v. Sumeet Machines Pvt. Ltd 4.
10. She drew my attention, particularly, to Paras 1.3,3.1, 4(i) (ii)
(iii) and (viii), 18.4, 19.7, 21, 25, 26, 27 and 28 of Thiagarajan Kumararaja1, and contended that her case, was, in fact, better than the case of the appellant in the said case, as her client was not re-making the film in which the plaintiff held copyright but was only publishing an English book, in the form of novelisation of the script of the film which was in Bengali. In Adai Mehra Production 2, Ms. Sukumar relied particularly on Paras 24, 28, 29, 57, 58, 59, 60, 61, 67, 68 and
72. Ms. Sukumar further submitted that Indian Performing Right Society3, on which the plaintiff was relying, involved an entirely different issue, as to whether royalty was separately required to be paid to the author of the underlying works, in a case where copyright was held in the cinematograph film along with underlying works.
12018 (73) PTC 365 (Mad) (DB) 2 2014 (59) PTC 575 (Bom) 3 AIR 1977 SC 1443 4 (1994) 2 SCC 448 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 246/2021 Page 8 of 9 Signing Date:01.10.2021 09:27:28
11. To demonstrate the distinction between that case and this, Ms. Sukumar referred to Paras 15 and 21 of the said decision. The reference to Power Control Compliances4, was in the context of the submission of Ms. Sukumar, that the plaint was not maintainable as the legal heirs of Mr. Satyajit Ray, who held copyright in the script and screenplay of the film had not been made parties.
12. To hear Mr. Daswani by way of response to the submissions of Ms. Sukumar, re-notify as part-heard, day after tomorrow i.e. 1st October, 2021.
13. A copy of this order be e-mailed to learned Counsel for both the parties.
C.HARI SHANKAR, J SEPTEMBER 29, 2021 ss Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 246/2021 Page 9 of 9 Signing Date:01.10.2021 09:27:28