Delhi High Court
Shri Rishi Raj vs Saregama India Ltd. on 9 November, 2021
Author: Jayant Nath
Bench: Jayant Nath
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
Judgment Reserved on: 08.03.2021
% Judgment Pronounced on: 09.11.2021
+ CS(COMM) 403/2017
SHRI RISHI RAJ ..... Plaintiff
Through Mr.Harish Malhotra, Sr.Adv. with
Mr.Rajender Agarwal, Adv.
versus
SAREGAMA INDIA LTD. ..... Defendant
Through Mr.Sanjeev Sindhwani, Sr.Adv. with
Mr.Ankur Sangal, Ms.Sucheta Roy
and Ms.Richa Bhargava, Advs.
CORAM:
HON'BLE MR. JUSTICE JAYANT NATH
JAYANT NATH, J. (JUDGMENT)
IA No.6852/2017 & 1414/2020
1. This is an application filed by the plaintiff seeking an ex-parte ad
interim injunction to restrain the defendant, its directors, officers etc. from
licensing or exploiting in any manner, including through physical formats
such as CDs, DVDs, magnetic tapes, pen drives and/or on the internet
through their website www.saregama.com or any other websites/software
application, the copyrighted works viz. sound recordings (songs)
incorporated in various cinematographic films as well as audio visuals of
such songs.
2. The accompanying suit is filed by the plaintiff stating that it is
carrying on the business of film production, distribution and exhibition
IA No.6852/2017 & 1414/2020 in CS(COMM) 403.2017 Page 1 of 11
under the name and style of ‗RAJ RISHI FILM'. Apart from the film
production, distribution and exhibition, the plaintiff is also said to be
engaged in the business of acquiring negative rights of various films from
different producers which are approximately 250 in number. However, it is
stated that the present suit is confined to only infringement caused by the
defendant to144 films which are stated in para 2 of the plaint. It is urged that
in terms of the agreements of the respective producers/negative right
holders, it is only the plaintiff alone who is entitled to deal with the said
films and is the copyright holder of the said films.
3. Regarding the defendant, it is stated that they have engaged in the act
of piracy/copyright infringement, inasmuch as, it is involved in the
unauthorised/unlicensed exploitation/licensing of sound recording as well as
audio-visuals of such songs etc. It is stated that the plaintiff having acquired
negative rights of such films, it is the plaintiff who alone is the recorded
owner of the aforesaid films and is the copyright holder of all the rights
flowing from the said films which includes the performing copyrights in its
story, songs, music etc. It is stated that the defendant has been
misrepresenting itself to be the owner/copyright holder of the sound
recordings as well as audio visuals of such songs incorporated in the
aforesaid films rights of which exclusively vest with the plaintiff alone. It is
further stated that a notice dated 29.04.2017 was sent to the defendant to
render accounts of the amount earned by the defendant by usage of
composition in musical works and lyrics and other losses were also sought.
The defendant sent a reply dated 19.05.2017 denying the stand of the
plaintiff.
IA No.6852/2017 & 1414/2020 in CS(COMM) 403.2017 Page 2 of 11
4. The defendant in the written statement states that the defendant is in
the business of acquiring copyright in many sound recordings and literary,
musical and dramatic works. The defendant possesses one of the richest
catalogues of Hindi and other Indian language film and non-film music,
especially old film soundtracks. It is stated that the plaintiff's rights are
limited to assignment of alleged rights in the negatives of the impugned
cinematograph films, which are only rights over the source material of the
impugned cinematograph films and may extend to the rights of theatrical
distribution, satellite broadcasting etc. of the cinematograph films as a
whole. On a perusal of the agreements, it is stated that it is evident that the
assignment of the rights by the producers/right holders of the impugned
cinematograph films to the plaintiff do not extend to the separate right over
the sound recordings which are a part of the impugned cinematograph films
including the impugned works forming part of the aforesaid cinematograph
films. In terms of some of the agreements filed by the plaintiff, the
producers/right holders in the impugned cinematograph films have
acknowledged the rights of the defendant in the impugned works
incorporated in the aforesaid films. The producers have only assigned the
right to receive royalties from realisation received from gramophone
companies for records, discs, music, cassettes etc. to the plaintiff. No rights
in the impugned works themselves have been assigned to the plaintiff.
5. It is stated that the rights in the sound recordings and cinematograph
films as a whole can be assigned to different entities. Hence, it is urged that
any alleged assignment of the negative rights in the impugned
cinematograph films to the plaintiff does not affect the assignment of
separate copyright in the impugned work, i.e. sound recordings to the
IA No.6852/2017 & 1414/2020 in CS(COMM) 403.2017 Page 3 of 11
defendant. The defendant is the actual owner of the copyright over the
impugned works by virtue of provisions of the Copyright Act, 1957.
6. I may note that when this application came up on the first date i.e.
30.05.2017 for hearing notice was issued in the matter. This court had
framed the issues on 12.12.2019 and the matter had been sent for recording
of evidence.
7. On 12.12.2019, the following issues were framed:
―i. Whether the plaintiff has any copyright over the sound
recording and the underlying works of the cinematograph
films forming the subject matter of the present dispute? OPP
ii. Whether the defendant is infringing the copyright of the
plaintiff in the sound recordings and underlying works of
the cinematograph films forming the subject matter of the
present suit? OPP
iii. Whether the defendant is the actual owner and has copyright
over the impugned works by virtue of the Copyright Act and
the defendant is holding copyright in respect of the sound
recording, literary, musical works to reproduce and
communicate the same to the public by any mode or
medium including TV, cable TV, radio, internet, mobile as
claimed by the defendant? OPD
iv. Whether the plaintiff is entitled for a decree of permanent
injunction as claimed? OPP
v. Whether the plaintiff is entitled to mandatory injunction as
prayed? OPP
vi. Whether the plaintiff is entitled for a decree for rendition of
account and claim damages from the defendant, as claimed
in the plaint? OPP
vii. Relief.‖
IA No.6852/2017 & 1414/2020 in CS(COMM) 403.2017 Page 4 of 11
8. Issue No.1 is as to whether the plaintiff has copyright over the sound
recording and the underlying works of the cinematograph films forming the
subject matter of the present dispute. The onus to prove this issue is on the
plaintiff.
9. Clearly, these are facts which will have to be gone into after the
parties have led their evidence.
10. Further, reference may also be had to the ‗List of Documents' filed by
the plaintiff. As an example, I may have a look at the first agreement dated
01.05.1999, which pertains to the films, ―Annkh Ka Tara‖, Hindi, ―Nagin
Aur Suhagn‖, Hindi etc. Narration reads as follows:
―The above negative rights include all rights which are existing
at present or which may occur in future to be utilised through
any source or media for all purposes and all sizes including TV,
telecasting rights, satellite rights, cable TV rights, DVD rights
for whole world including India.
WHEREAS the 2nd party has approached the First
Party(PRODUCERS) to assign the 2nd party the negative rights
which includes picture and Non - commercial, Theatrical, Non -
Theatrical Rights of the Exhibition, Exploitation and
Distribution of all GUAGE Standard (in 35 mm 16 mm super 8
and all other available non stand sizes) ALL DIMENSIONS and
mediums (viz. all possible use and utilizations for Theatrical,
Non - Theatrical, T.V Telecasting and Video or in any possible
manner of its Exhibition in AIR, SEA &. LAND) of the said
PICTURE for ENTIRE INDIA AND OVERSEAS. Have
irrevocably agreed to FILM TRADE, and WHEREAS the
PRODUCERS have irrevocably agreed to assign the said
RIGHTS of the VIDEO FILM to 2nd Party, on the terms and
conditions as under‖
IA No.6852/2017 & 1414/2020 in CS(COMM) 403.2017 Page 5 of 11
11. A bare reading of the above clause shows that the issue raised by the
plaintiff about its stated exclusive rights in the cinematographic films as
compared to the separate right over sound recordings is an issue that would
require closer and better examination after evidence is completed. At this
stage, it cannot be said that prima facie a case has been made out in favour
of this plaintiff.
12. The defendant will maintain true and appropriate accounts of all
revenue/earnings generated from the songs of the films spelt out in para 2 of
the plaint. If, at any stage, this court directs filing of the said accounts, the
defendant will forthwith file the same on an affidavit.
13. With the above directions, the present application is disposed of.
IA.No.1414/2020
14. This application was filed by the plaintiff in January, 2020 after issues
were framed stating that the plaintiff along with the plaint had filed copies of
58 agreements in respect of the films in support of its claim.
15. It is however claimed that at the time of further scrutiny of records in
order to file an affidavit of evidence, the plaintiff noticed 9 more agreements
which were entered into with various producers/negative right holders which
were not filed due to inadvertence. Hence, the present application praying
that the additional documents which have already been filed by the plaintiff
along with an affidavit on 07.01.2020 be allowed to be taken on record.
16. However, in the reply, the defendant states that the plaintiff has not
been able to provide sufficient and reasonable cause or explanation for filing
the additional documents at this belated stage. It is stated that the additional
documents would have been in power/possession/in custody of the plaintiff
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at the time of the filing of the present suit. The suit is at the stage of
evidence, the plaintiff cannot be allowed to produce any additional
documents at this belated stage without giving a reasonable cause for non-
filing of the same.
17. Order 11 Rule 1 CPC, as applicable to Commercial Suits reads as
follows:
―ORDER XI DISCLOSURE, DISCOVERY AND
INSPECTION OF DOCUMENTS IN SUITS BEFORE
THE COMMERCIAL DIVISION OF A HIGH COURT OR
A COMMERCIAL COURT
1. Disclosure and discovery of documents.--(1) Plaintiff shall
file a list of all documents and photocopies of all documents in
its power, possession, control or custody, pertaining to the suit,
along with the plaint, including:--
(a) documents referred to and relied on by the plaintiff in the
plaint;
(b) documents relating to any matter in question in the
proceedings, in the power, possession, control or custody of
the plaintiff, as on the date of filing the plaint, irrespective
of whether the same is in support of or adverse to the
plaintiff's case;
(c) nothing in this Rule shall apply to documents produced by
plaintiffs and relevant only--
(i) for the cross-examination of the defendant's witnesses, or
(ii) in answer to any case set up by the defendant subsequent
to the filing of the plaint, or
(iii) handed over to a witness merely to refresh his memory.
xxx
(3) The plaint shall contain a declaration on oath from the
plaintiff that all documents in the power, possession, control or
custody of the plaintiff, pertaining to the facts and
circumstances of the proceedings initiated by him have been
disclosed and copies thereof annexed with the plaint, and that
IA No.6852/2017 & 1414/2020 in CS(COMM) 403.2017 Page 7 of 11
the plaintiff does not have any other documents in its power,
possession, control or custody.
Explanation.--A declaration on oath under this sub-rule shall be
contained in the Statement of Truth as set out in the Appendix.
(4) In case of urgent filings, the plaintiff may seek leave to rely
on additional documents, as part of the above declaration on
oath and subject to grant of such leave by Court, the plaintiff
shall file such additional documents in Court, within thirty days
of filing the suit, along with a declaration on oath that the
plaintiff has produced all documents in its power, possession,
control or custody, pertaining to the facts and circumstances of
the proceedings initiated by the plaintiff and that the plaintiff
does not have any other documents, in its power, possession,
control or custody.
(5) The plaintiff shall not be allowed to rely on documents,
which were in the plaintiff's power, possession, control or
custody and not disclosed along with plaint or within the
extended period set out above, save and except by leave of
Court and such leave shall be granted only upon the plaintiff
establishing reasonable cause for non-disclosure along with the
plaint.‖
18. Hence, as per the scheme of the afore-noted provisions, the plaintiff
has to file the list of all documents and photocopies of all documents in his
power, possession, control or custody pertaining to the suit alongwith the
plaint. He has to also file a declaration on oath that all documents in his
power, possession, control or custody pertaining to the facts and
circumstances of the proceedings have been disclosed and copies thereof
have been annexed with the plaint and that the plaintiff does not have any
other documents in his power, possession, control or custody. When the suit
was filed the plaintiff did file the afore-noted declaration by way of
affidavit.
IA No.6852/2017 & 1414/2020 in CS(COMM) 403.2017 Page 8 of 11
19. The ground now given in the application is inadvertence, namely, that
the plaintiff has filed 58 agreements in respect of the films, however, at the
time of preparing affidavit by way of evidence, it is claimed that the plaintiff
noticed 9 more agreements which were not filed due to inadvertence. Would
this inadvertence constitute a reasonable cause for non-disclosure of these
documents along with the plaint?
20. In the above context reference may be had to the judgment of the
Supreme Court in the case of Sudhir Kumar @ S. Baliyan vs. Vinay Kumar
G.B. being 2021 SCC OnLine SC 734, decided on 15.09.2021. The
Supreme Court held as follows:
―33. It emerges from the record that the first suit was filed by
the plaintiff in the month of October, 2018, bearing TM No.236
of 2018, restraining the defendant from infringing and passing
off plaintiff's Trade Marks. That an ex-parte interim injunction
was passed in favour of the plaintiff by order dated 29.10.2018.
It appears having realized and found that the earlier suit was not
in consonance with the provisions of the Commercial Courts
Act, the plaintiff withdrew the said suit being TM No.236 of
2018 on 27.07.2019 with liberty to file a fresh suit as per the
Commercial Courts Act, 2015. Therefore, the second suit was
filed on 31.08.2019 and within a period of thirty days from
filing of the second suit the appellant herein - original plaintiff
preferred the present application seeking leave of the court to
file additional documents. In the application, it was specifically
mentioned that so far as the invoices are concerned, the same
were not in its possession at the time of the filing of the plaint
and so far as the other documents are concerned they were not
filed due to they being voluminous. Therefore, so far as the
invoices sought to be relied on/produced as additional
documents ought to have been permitted to be relied
on/produced as it was specifically asserted that they were not in
his possession at the time of filing of the plaint/suit.
xxx
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36. Now, so far as the other documents sought to be relied
on/produced as additional documents other than the invoices are
concerned the same stands on different footing. It is not
disputed and in fact it was specifically admitted and so stated in
the application that those additional documents other than the
invoices were in their possession but not produced being
voluminous and that the suit was filed urgently. However, it is
to be noted that when the second suit was filed, it cannot be said
to be urgent filing of the suit for injunction, as the first suit was
filed in the month of October, 2018 and there was an ex-parte
ad interim injunction vide order dated 29.10.2018 and thereafter
plaintiff withdrew the said first suit on 27.07.2019 with liberty
to file a fresh suit as per the Commercial Courts Act and the
second suit came to be filed on 31.08.2019 after period of one
month of the withdrawal of first suit. Therefore the case on
behalf of the plaintiff that when the second suit was filed, it was
urgently filed therefore, the additional documents sought to be
relied upon other than the invoices were not filed as the same
were voluminous cannot be accepted. And therefore as such
Order XI Rule 1 (4) shall not be applicable, though the
application was filed within thirty days of filing of the second
suit. While seeking leave of the court to rely on documents,
which were in his power, possession, control or custody and not
disclosed along with plaint or within the extended period set out
in Order XI Rule 1 (4), the plaintiff has to establish the
reasonable cause for non disclosure along with plaint.
37. In view of the facts and circumstances narrated hereinabove
and in view of the filing of the first suit in the month of
October, 2018; the ex-parte ad interim injunction order in
favour of the plaintiff dated 29.10.2018; withdrawal of the first
suit on 27.07.2019 and subsequently the filing of the second suit
on 31.08.2019, non filing of the additional documents other
than the invoices on the ground of they being voluminous
cannot be said to be a reasonable cause for non disclosure/filing
along with plaint. There was sufficient time gap between the
filing of the first suit and filing of the second suit i.e.
approximately 10 months and therefore when the second suit
IA No.6852/2017 & 1414/2020 in CS(COMM) 403.2017 Page 10 of 11
was filed the plaintiff was having sufficient time after filing of
the first suit, to file the additional documents other than the
invoices at the time when the second suit was filed. Therefore
as such, both the courts below have rightly not permitted the
plaintiff to rely upon the documents, other than the invoices as
additional documents in exercise of the powers under Order XI
Rule 1 (4) read with Order XI Rule 1 (5).‖
It is clear from the above judgment that the Supreme Court did not
accede to a request to allow filing of additional documents due to sufficient
time gap between the filing of the first suit and the filing of the second suit
i.e. approximately 10 months. In that case, the documents were not filed
stating that they were voluminous but, the court did not accept such a
ground.
21. In the facts of the present case, it is obvious that the documents which
are now sought to be filed by the plaintiff were in the power and possession
of the plaintiff. The only ground urged for not filing the documents with the
plaint is that it was by an inadvertent error.
22. The suit was filed in 2017 and the application for filing additional
documents had been filed three years later in 2020 merely stating
inadvertent error. In my opinion, there is no reasonable cause given by the
plaintiff for not filing the additional documents along with the plaint. The
application is belated. The plaintiff cannot be permitted to rely on the
documents as sought.
23. The application is accordingly dismissed.
JAYANT NATH, J.
NOVEMBER 09, 2021/v/st IA No.6852/2017 & 1414/2020 in CS(COMM) 403.2017 Page 11 of 11