Calcutta High Court
Saregama India Ltd vs The New Digital Media & Anr on 22 September, 2022
IN THE HIGH COURT AT CALCUTTA
Civil Appellate Jurisdiction
Original Side
Present:- Hon'ble Mr. Justice I. P. Mukerji
Hon'ble Mr. Justice Subhendu Samanta.
APO No. 14 of 2018
With
CS No. 310 of 2015
Saregama India Ltd.
Vs.
The New Digital Media & Anr.
For the Appellant : Mr. Ranjan Bachawat, Sr. Adv.
Mr. Debnath Ghosh,
Mr. Shounak Mitra,
Ms. Vaibhavi Pandey,
Mr. Akash Mukherjee, Advs.
For the Respondents : Mr. Soumendra Nath Mookerjee,
Ld. Advocate General.
Mr. Shaunak Mitra, Mr. Shaswat Nayak, Mr. Sarbajit Mukherjee, Ms. Alakananda Das, Advs.
Judgment on : 22.09.2022. I. P. MUKERJI, J.-
Eleven hindi cinematograph films are involved in this appeal. They are:-
1. Do Badan. 2. Babu 3. Yahudi. 4. Awara Baap. 5. Duniya.
6. Bombai Ka Babu. 7. Aaj Aur Kal. 8. Teen Devian.
9. Dushman. 10. Loafer. 11. Dhanwan.
A commercial film in our country is never complete without a string of songs. A scene where actors are singing a song is filmed. Thereafter, the song from the sound track is attached to that part of the film, so that it runs with the scene, matching the lip of the actor and the picturization. The respondents/defendants (respondents) claim the complete right of exploitation of these movies. They claim the audio, video and sound recording rights. They also assert that they are exclusively entitled to broadcast, publish, download and stream these works. The appellant/plaintiff (appellant) on the other hand says that several years ago and more than 50 years ago in the 1960's in some cases, they (which includes their predecessor-in-interest) had acquired from the producers of these films the exclusive right to play, broadcast, publish, reproduce in other media, the songs in audio form and other sound recordings in these films. They also had copyright over the underlying musical and literary works to the exclusion of all others. Any other rights in these films could have been assigned to others but not the audio songs and sound recording.
This copyright appeal is from a final interlocutory order made by a learned single judge on 22nd December, 2017. By this order the respondents were restrained from using the sound track of three films "Awara Baap, Babu and Dhanwan" categorized as "type B" films till the disposal of the suit. They were allowed to use the digital recording of the songs in the sound track of the eight films categorized as "types A and C", each type consisting of four films, subject to keeping accounts of the revenue earned by this exploitation and furnishing a quarterly statement of it to the appellant.
At the time of moving this interim application, on 5th November, 2015 the learned interlocutory judge had granted an order of injunction for a limited period, which was subsequently extended from time to time, restraining the respondents from in any way exploiting the sound track of any of these films. This was modified as stated above by the final order.
This appeal is from that part of the final order permitting the respondents to exploit the types A and C film sound tracks and to be more specific the songs in their audio version and the other sound recordings.
When the appeal was being heard, learned counsel for the respondents assured the court that till its disposal, his clients would not show the songs in any media.
2 The producer of the film is the first owner of the copyright under Section 17 proviso (a) of the Copyright Act, 1957 in the sound track along with the copyright in other works in these films.
In or about October, 2015, particularly by their email dated 21st October, 2015 the respondents started claiming copyright over the audio musical and mp3 rights of the songs in all the above films. They also claimed to be the owners of the musical, literary and all underlying works in the songs in those films. They said that those rights had been assigned to them by their assignor. They told the appellant that they had no right to use or exploit the sound recordings.
The respondents declared their source of right in the agreement dated 6th November, 2013 under which one Hemant Jain, sole proprietor of Jayashree Pravin Enterprises granted perpetual licence/copyright to the respondents to utilize or exploit the above films. Copyright in 546 films were in this way purported to be granted to the respondents by Hemant Jain. Hemant Jain in turn claimed to have acquired this right through diverse agreements entered into over a period of time with the assignees of the producers of these films. The appellant says that once the rights over the audio songs and other sound recordings had been transferred to them by the producers, the self-same rights could not have been assigned to others.
At this point of time, it is necessary to notice a typical type A or C film agreement.
It was entered into on 22nd February, 1966 by the Gramaphone Company of India (Pvt.) Ltd. by which the appellant was then known with JB production (Page 27 to 30 of the paper book). The material clauses of this agreement are as follows:-
"1. For the purpose of this Agreement:-
a) The word "work" used hereinafter has the meaning assigned to it by section 2(y)(i) of the Indian Copyright Act. 3
b) The word "record" shall mean a double-sided disc record, a magnetic tape or any other sound-bearing contrivance or appliance reproducing a performance or performances by the Clients' artistes and musicians of one or more works owned by the Clients.
2. The Clients shall during a period of One year(s) computed from the 6th January, 1966 supply the Company at their own expenses with artistes and musicians etc., to perform musical and/or other works from their films for the purpose of making gramophone records, and the artistes and musicians etc., shall attend at the Company's studio or such other place as may be appointed by the Company and shall at such place and time record such works as the Company shall which the Company shall select, in which the Mechanical Reproduction Rights including the right to make gramophone records belong to the Clients.
4. Notwithstanding the provisions in Clauses 2 and 3 hereof the Clients shall at their own expense alternatively and subject to the consent of the Company supply the Company with sound tracks or recorded tapes of their musical and/or other works and the Company shall utilize such sound tracks or recorded tapes for the purpose of re- recording therefrom and the subsequent manufacture of gramophone records as referred to in the above-mentioned clauses provided they are in the opinion of the Company suitable for such purpose. The Clients 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 shall not during the said period of One year(s) allow any of their musical and/or other works to be recorded or re-recorded by any of their artistes and musicians etc., or from any film sound tracks 4 or recorded tapes or other means for any other person, firm or corporation whatsoever carrying on a business similar to or in competition with that of the Company in all or any of its branches.
6. The Company during the said period of one year(s) and thereafter while the records recorded or re-recorded under the provisions of this Agreement remain on sale by the Company shall pay to the Clients a royalty on net sales made in any part of the world of all records of the performance of the artistes and musicians etc. as aforesaid calculated on the retail selling price in the country of manufacture for the time being at the following rates:-
(a) In the case of a double-sided disc record:-
(i) Performance by the Clients' artistes of any work or
works owned by the Clients on any one side of a record 2 ½ % per side
(ii) Performance by the Clients' artistes of any work or works owned by the Clients along with performance by other artistes of a work or works not owned by the Clients, on any one side of a record a share proportional to the number of works of 2 ½ % per side
(b) In the case of any other record, the same shall be deemed to consist of sections, each Section comprising the equivalent of a double- sided 78 rpm record and royalty shall be calculated on the same basis as provided under (g) (i) and (ii) above on each such Section reproducing performances of the Clients' artistes. PROVIDED ALWAYS that such royalty shall be payable only so long as the Clients shall not at any time hereafter, allow their artistes and musicians etc., to record any works recorded or re-recorded under the provisions of this Agreement or permit, the recording of such works from any film sound track or recorded tape or other means for any other person, firm or corporation whatsoever carrying on a business 5 similar to or in competition with that of the Company in all or any of its branches and PROVIDED FURTHER that such royalty shall not be payable to the Clients in respect of records recorded or re-recorded under the provisions of this Agreement by any of the Clients' artistes and musicians etc., who has before the execution of this Agreement recorded on behalf of the Company.
7. The Clients hereby agree that they assign their gramophone recording rights in all works to be recorded or re-recorded under the provisions of this Agreement to the Company, and hereby agree further to indemnify and deep indemnified the company in the case of such works as aforesaid from and against all actions, claims and damages which the Company may incur by reasons of the recording, issue and sale of such works.
8. In consideration of the assignment set out in Clause 7 hereof the Company shall pay to the Clients a copyright royalty on net sales made in any part of the world of the works recorded or re-recorded under the provisions of this Agreement calculated on the retail selling price in the country of manufacture for the time being at the following rates:-
(a) In the case of a double-sided disc record:-
(i) A work or works owned by the Clients and reproduced on any one side of a record.
2 ½ % per side
(ii) A work or works owned by the Clients and reproduced along with one or more other works not owned by the Clients on any one side of a record, a share proportional to the number of works of 2 ½ % per side
(b) In the case of any other record, the same shall be deemed to consist of Sections, each Section comprising the equivalent of a double-sided 78 rpm record and royalty shall be calculated 6 on the same basis as provided under (a)(i) and (ii) above on each such Section reproducing the works owned by the Clients.
10. 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 recorded or 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 sale right of production, reproduction, sale was a performance (including broadcasting) throughout the world by any and every means whatsoever of the record of the works performed by the artistes and musicians etc. under this Agreement. The Company shall in the absolute discretion be entitled to authorize any other persons, firms or corporations in any part of the world to manufacture, sell and/or catalogue records of all or any of the titles recorded or re-recorded under the provisions of this Agreement when royalties shall become payable to the Clients as mentioned in Clauses 6 and 8 hereof.
12. The Company shall be entitled to continue this Agreement for one further successive period of one year(s) upon giving notice in writing to the Clients. Any notice given under the provisions hereof shall be given before the expiration of this Agreement, or any continuance thereof as the case may be, by registered letter and sent to the address of the Clients last known to the Company."
Copyright Act, 1957 Before proceeding further, a look at certain provisions of the Copyright Act, 1957 will be instructive.
Section 2(c) defines "artistic work" as follows:-
"(c) "artistic work" means,--
7
(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;
(ii) a work of architecture; and
(iii) any other work of artistic craftsmanship."
Section 2(d) is as follows:-
"(d) "author'' means,--
(i) in relation to a literary or dramatic work, the author of the work;
(ii) in relation to a musical work, the composer;
(iii) in relation to an artistic work other than a photograph, the artist;
(iv) in relation to a photograph, the person taking the photograph;
(v) in relation to a cinematograph film or sound-recording, the producer; and
(vi) in relation to a cinematograph film or sound recording, the producer; and
(vi) in relation to any literary, dramatic, musical or artistic work which is computer-generated, the person who causes the work to be created."
Prior to 1994 amendment, Section 2(d)(vi) was as follows:-
"(vi) in relation to a record, the owner of the original plate from which the record is made, at the time of the making of the plate."
Section 2(dd) is as follows:-
"broadcast" means communication to the public -
i) By any means of wireless diffusion, whether in any one or more of the forms of sings, sounds or visual images; or
ii) By wire, and includes a re-broadcast;
Section 2(o) defines "literary work" in the following manner:-
"(o) "literary work" includes computer programmes, tables and compilations including computer [databases]."
Section 2(p) defines "musical work" as follows:-
"(p) "musical work" means a work consisting of music and includes any graphical notation of such work but does not include any words or any action intended to be sung, spoken or performed with the music."
8
Section 2(t) defines "plate" as:
"plate" includes any stereotype or other plate, stone, block, mould, matrix. Transfer, negative [duplicating equipment] or other device used or intended to be used for printing or reproducing copies of any work, and any matrix or other appliance by which [sound recording] for the acoustic presentation of the work are or are intended to be made;"
Section 2(xx) defines "sound recording" in the following way:-
"2. (xx) "sound recording" means a recording of sounds from which such sounds may be produced regardless of the medium on which such recording is made or the method by which the sounds are produced."
Section 2(y) defines "work" as:-
"(y) "work" means any of the following works, namely:--
(i) a literary, dramatic, musical or artistic work;
(ii) a cinematograph film;
(iii) a sound recording."
Before its amendment in 1994, Section 2y was the same except that the word "record" instead of "sound recording" constituted Section 2y(iii). It is to be noted that the term "work" in the said agreement was understood by the meaning assigned to it by Section 2(y)(i) of the Copyright Act, 1957, before its amendment in 1994. Section 13 provides that copyright would subsist in inter alia, the original musical and artistic works, cinematograph, films and sound recording. [See Section 13(1) of the said Act].
Section 17 enacts that the author of the work shall be the first owner of the copyright subject to the conditions mentioned in the proviso thereto which amongst other things stated that where the author rendered the work under a contract of service for literary or artistic work, the employer would be treated to be the first owner of the copyright. 9 Section 55(2) states that wherein the case of a literary, dramatic, musical or artistic work, the name of the author or publisher appears at the work, such persons shall be presumed to be the author or publisher of the work.
Section 18 of the said Act deals with assignment of copyright. It states that the owner of the copyright may wholly or partially assign its copyright to another. Assignment can also be made of any future work but could only take effect when it comes into existence. On assignment the assignee shall be treated as the owner of the copyright. Section 19 says that the assignment has to be in writing signed by the assignor or the agent, identifying the work assigned.
ARGUMENTS Mr. Ranjan Bachawat, learned senior counsel assisted with great competence by Mr. Debnath Ghosh, arguing the appeal for the appellant submitted as follows:-
All the sound recording in a particular film, which included the songs and other music in audio form were recorded in an original plate of which the producer of the film was the first owner of the copyright under Section 17 first proviso of the Copyright Act, 1957. By agreement between the first owner and his client, this right was assigned to the latter. As a typical agreement he analyzed the terms and conditions of the said agreement dated 22nd February, 1966 between the parties and/or the appellant's predecessor-in-interest. Apart from sound recording, the producer was also the owner of copyrights in other works in the film. Those rights had not been assigned. For example, the producer could claim a copyright over the whole film or a part of it. A part of it may contain a particular song in video form with the same sound recording. This could be seen as a copyright over a separate work. The producer retained the right to assign the whole film or a part of it, including the video clipping of the song. 10 But, he could not assign the copy right of the sound recording only, which right was vested in the appellant.
Referring to Section 55(2) of the said Act, learned counsel submitted that the sound recording had been captured in gramophone records with the name of the appellant on it. It had to be presumed under Section 55(2) of the said Act that that appellant was the owner of the copyright. Interpreting two clauses 2 & 3 of the agreement, Mr. Bachawat contended that one year's time was provided to the parties to make the recording at the appellant's studio and for that period the producer would not allow recording of the self-same work by any other person (Clause 5). Under Clause 6, if recording was completed before one year and on sale of the records within that period or beyond that period the producer would be entitled to royalty.
This according to him was independent of Clauses 7 and 8 which provided for assignment of the recording rights in favour of the appellant and the royalty that would be payable on such assignment. Mr. Bachawat tried to explain how there was alleged transfer of copyright to the appellant's predecessor-in-interest by M/s. J.B. Production by an agreement dated 28th March, 1987 (Pg. 262A of the paper book). The producer purported to transfer all the rights of a typical film falling in Types A and C to an organization Movie Classic. Again on 5th February, 2000 (Pg. 239 of the paper book) Movie Classic purported to transfer the said rights to Hemant Jain, operating under the name and style of "M/s. Jayshree Pravin Enterprises". Then, again on 6th November, 2013 Hemant Jain purportedly assigned those rights to New Digital Media, the respondent No.1.
Learned counsel submitted that the producer of the films had assigned the copyright in the sound recordings in favour of the appellant unconditionally and absolutely. The producer was divested of all those rights on such assignment being made irrespective of whether royalty was received by him or not or exploitation of the songs. He cited 11 Gramophone Company of India Ltd. vs. Shanti Films Corporation and Ors. reported in AIR 1997 Cal 63. The producer could not have possibly reassigned those rights or any right which he did not possess in favour of Movie Classic and consequently Movie Classic could not transfer what they did not have to Hemant Jain. The respondents could not acquire any rights from Hemant Jain. Learned counsel conceded that the producer retained the ownership and copyright over any other works in the films. He could assign the video right or the songs being played on video mode but could not assign the sound recordings including songs in audio mode of which the copyright was absolutely vested in the respondents.
Learned Advocate General very ably assisted by Mr. Sounak Mitra, learned Advocate made the following submissions:-
The appeal court normally does not interfere with the discretion exercised by the learned single judge in passing or refusing to pass an interim order of injunction, unless it is perverse or contains such obvious or manifest errors or is so unreasonable that it cannot be sustained. The case of Wander Ltd. and Anr. vs. Antox India P. Ltd. reported in 1990 (Supp) SCC 727 was referred to. Learned counsel submitted that nothing had been shown to suggest that the exercise of discretion by the learned single judge was perverse.
It was also submitted that like in other cases for grant of interlocutory injunction, the appellant had to establish a prima facie case, that the balance of convenience was in his favour and if the order as prayed for was refused, irretrievable injury would be caused to him. The appellant had the duty to establish prima facie that they were the owner of the copyright on the date of institution of the suit and continued to be so. Since this onus was not prima facie discharged by the appellant, they were not entitled to any interim order. Learned Counsel also referred to Anil Rishi vs. Gurbaksh Singh reported in (2006) 5 SCC 558 (Para 8, 9 and 10), Subhra Mukherjee 12 and Anr. vs. Bharat Coking Coal Ltd. and Ors. reported in (2000) 3 SCC 312 (Para 12) and Rangammal vs. Kuppuswami and Anr. reported in (2011) 12 SCC 220 (Para 21 to 29, 34 to 36, 44 to 49) to emphasize the onus on the appellant to establish a prima facie right that they were the owners of the copyright which they had failed to do. Prior to the amendment of Section 2(y) in 1994 with effect from 10th May, 1995 the definition of "work" in Section 2(y) was as follows:-
"Clause (y)- "Work".- The definition of "work" under the Act is to mean any of the following, namely:
(i) a literary, dramatic, musical or artistic work;
(ii) a cinematograph film;
(iii) a record."
Learned Advocate General also argued that by agreement his clients acquired the entire copyright in connection with those films which included the video rights and sound track. What had been assigned in favour of the appellant were works as defined in Section 2(y)(i) of the Copyright Act as it stood then and included only musical, literary, dramatic and artistic work. It did not include the sound track which according to learned counsel was to be found in the definition of cinematograph film described in Clause 2y(ii). Therefore, the appellant did not acquire any right over the sound track.
Learned counsel made a very interesting interpretation of Clauses 2, 3 and 4 of the agreement. Under Clauses 2 and 3 the appellant received musicians and artists from the producer who would perform the musical and other works from the films in which was incorporated the original sound recording, including audio songs for the purpose of making gramophone records. This performance would be a version of the work stored in the original sound track of the films. This original sound track to be used in the film was never assigned.
DISCUSSION THE AGREEMENT: Learned Advocate General said that there was not any assignment, in favour of the appellant, of any of the subject musical 13 works comprising of audio songs or any such musical work with literary, dramatic or artistic work accompanying or underlying it, captured in the film or in its soundtrack or in the plate. Neither had the appellant acquired any right in the other works relating to the films. Since those rights in the film or plate or sound track had not been assigned to the appellant, the said musical work from these media or any part of it in audio or video mode could be played or shown or exploited by the respondent. At best, the appellant could claim copyright over the version of the soundtrack or record or film recorded by them in terms of Clauses 2 and 3 of the agreement, learned counsel argued. This argument is not correct, in my opinion.
This, if accepted would mean that the assignor could re-assign the works stored in the sound track or plates or captured in the cinematograph film in audio or video form to other persons. It would give the agreement a wholly erroneous, illogical and unreasonable interpretation. The effect of this argument would be that the appellant would be obliged to pay royalty on the records and on assignment of copyright but the producer would continue to retain the right to get the original sound recording exploited wherever he pleased and by whomsoever he chose. When a work is being performed, to acquire copyright on a subsequent reproduction, it has to be recorded and stored in a medium. The Copyright Act, 1957 has conveniently described it as a plate under Section 2(t). This is conceptualized in Clauses 2 and 3 of the agreement. In other words, there would be a master medium by whatever name you call it, from which the work could be re-produced and captured in other media including gramophone records.
To ascribe a proper meaning to and make a proper interpretation of these clauses of the agreement, the reference in Clause 2 to performance of musical and/or other works for the films for the purpose of making gramophone records would only refer to an intended film or a film without any sound track in it and not a film with the original sound 14 track as the learned Advocate General would view it. The sound track as produced under Clauses 2, 3 and 4 would be inserted into the film and would become part of its sound track.
It is also not possible to accept the interpretation of Section 2(y)(i) of the said Act before its amendment in 1994, given by the learned Advocate General that the sound track was not included within literary, dramatic, musical or artistic work as defined in Section 2(y)(i) but was included in the cinematographic film. The amendment of 1994 does not support this argument because the replacement of record in Section 2(y)(iii) by sound only expands the extent of sound recording, production and broadcast with the advancement of technology so as not to be restricted to "a record". This would find elucidation from the definition of sound recording in Section 2(xx) to the following effect:-
"2(xx) "sound recording" means a recording of sounds from which such sounds may be produced regardless of the medium on which such recording is the method by which the sounds are produced."
My view is as follows:-
The work referred to in the agreement dated 22nd February, 1966 was confined to musical work including audio songs as described by Section 2(y)(i) of the Copyright Act, 1957 prior to its 1994 amendment. If one considers Clause 2 of the agreement it would appear that one year's time was provided to the producer to render such work to the appellant for the purpose of its being recorded in the plate and on such recording, the copyright in that work would vest in the appellant. This recording could be used in making, inter alia, gramophone records. Under Clause 3, alternatively, the producer with the consent of the appellant, provided sound tracks or recorded versions of the works to enable the appellant to re-record the works from it in the plate. Such re-recorded work could also be used for the purpose of inter alia manufacture of gramophone records.
15 Under Clause 5, during this one year's preparatory time, the producer was not allowed to allow the recorded work or the re-recorded work to be recorded or re-recorded for any other person carrying on similar business as the appellant. Clause 6 of the agreement made it plain that it was possible for a work to be completed in one year and sold in the market. If the work of which the appellant had copyright was sold in the market before the expiry of one year or thereafter, the producer would be entitled to royalty as specified in that clause.
Then comes the important clause which is Clause 7 which says that the gramophone records in all works to be recorded or re-recorded in terms of this agreement were assigned to the appellant. This clause provided for a different category of royalty which was on assignment, based on a percentage of the sale proceeds.
Mr. Bachawat was very candid and correct in submitting that the copyright which his client claimed was not over any part of the film but only over the musical work or sound. Hence, if the sound was part of the film and played with the film, it was a different work. There would be no infringement of copyright. But the sound simpliciter could only be owned by the appellant and that any reproduction of that sound recording in isolation by someone else would amount to infringement of his client's copyright.
Actionable Claim - Assignment:-
An actionable claim is defined in Section 3 of the Transfer of Property Act, 1882 thus:-
"3. Interpretation clause.--In this Act, unless there is something repugnant in the subject or context,--
"actionable claim" means a claim to any debt, other than a debt secured by mortgage of immoveable property or by hypothecation or pledge of moveable property, or to any beneficial interest in moveable property not in the possession, either actual or constructive, of the claimant, which the Civil Courts recognise as affording grounds for relief, whether such debt or beneficial interest be existent, accruing, conditional or contingent." 16
In English law an actionable claim is known as a "chose inaction" which includes a wide variety of rights in contract or in property which can only be claimed or enforced by action and not by taking physical or constructive possession. It is also some type of beneficial interest in movable property. In other words, this kind of right is not exercised by taking physical possession of the subject matter of the right but can be claimed and enforced otherwise than by physical possession. Copyright is a species of actionable claim. An actionable claim according to English law and our law is assignable. Section 130 of the Transfer of Property Act, 1882 is about transfer of an actionable claim. The section makes it absolutely plain that an absolute transfer or assignment of an actionable claim can be made with or without consideration. Assignment of an actionable claim like copyright is considered as a transfer under the Transfer of Property Act, 1882. Section 8 of the said Act makes it clear that such transfer passes to the transferee all the interest which the transferor is capable of passing in the property. An assignment of an actionable claim is a type of transfer like sale or gift and if it is in absolute terms it is not limited by any duration or condition. It is required to be made in writing signed by the transferor or his agent. Upon execution of this document, there is immediate and absolute vesting of all rights in the transferee. Upon such transfer, the transferee acquires the right to initiate action which the transferor was entitled to before such transfer. If an actionable claim can be assigned without consideration, then a provision for payment of royalty on assignment is not necessary for validity of the assignment. Whether the appellant paid royalty or received royalty for a particular period and then stopped paying it, is hardly material.
In Gramophone Company of India Ltd. vs. Shanti Films Corporation and Ors. reported in AIR 1997 Cal 63, Barin Ghosh, J. had opined on a construction of the agreement which was involved in that case that the 17 assignment was absolute and that payment of royalty thereunder had nothing to do with the validity of the assignment. His lordship had also held in relation to that agreement that exploitation of the copyright and payment of royalty also had got nothing to do with the initial assignment which was unconditional.
In Indian Performing Right Society Ltd. vs. Eastern Indian Motion Pictures Association & Ors. reported in (1977) 2 SCC 820, the Supreme Court said that "when a cinematographic film producer commissions a composer of music or a lyricist for reward or valuable consideration for the purpose of making that film or composing music or lyrics, described as "the sounds for incorporation or absorption in the sound track associated with the film, the producer becomes the first owner of the copyright". He is the one who has the exclusive right to assign it.
After assignment, reassignment of the self same rights would be infringement by the producer of the copyright now with the assignee. The assignee would have the exclusive right to play, use, broadcast and otherwise exploit the works over which he has acquired copyright. Barin Ghosh, J. remarked in the above case: "Therefore publication of the sound-track of the film in question or reproduction of records from the original plate or from the records produced by the plaintiff without its authority would prima facie be infringement of the copyright." The learned judge opined:-
"..........The intention of the parties whether it was an assignment or a grant of permission to use should, in the normal course, be gathered from the writing itself and the words used therein. If the word "assignment" is used then the assignment should in the normal course be readily accepted."
Assignment of copyright may be with or without consideration. It depends on the terms of the assignment whether the assignment is conditional or unconditional, absolute or limited. 18 The reference to one year in Clauses 3, 4, 5 and 6 of the agreement would only mean and include the time for making the recording in the plate and production of records etc. and not to any limited assignment of copyright.
It is absolutely clear that under Clause 7 of the agreement, transfer or assignment of copyright was not conditional or limited in duration of time. Neither any condition precedent or condition subsequent was attached to the assignment. Since it was absolute in its terms, the entire rights of sound recording in the plate or any reproduction thereof in the form of a record vested absolutely in the appellant and could not be re- assigned or re-transferred in favour of any other party by the producer. Interlocutory injunction - interference with:-
Learned Advocate general referred to the ruling of the Supreme Court in Wander Ltd. and Anr. vs. Antox India P. Ltd. reported in 1990 (Supp) SCC 727 to argue that in the matter of grant of an interlocutory injunction, the appellate court does not interfere with the exercise of discretion by the trial court unless "the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions."
Again the court went on to say "if the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion". In other words, if the interlocutory order is unreasonable or perverse or the appreciation of "settled principles of law regulating grant or refusal of interlocutory injunction", that is to say prima facie case, balance of 19 convenience and the irretrievable injury factor is grossly erroneous, the appellate court certainly has the right to interfere with it. Thereafter, learned Advocate General relied on three cases decided by the Supreme Court in Anil Rishi vs. Gurbaksh Singh reported in (2006) 5 SCC 558, Subhra Mukherjee and Anr. vs. Bharat Coking Coal Ltd. and Ors. reported in (2000) 3 SCC 312 and Rangammal vs. Kuppuswami and Anr. reported in (2011) 12 SCC 220 to argue that under Section 101 of the Evidence Act, 1872 the appellant had the burden of proving their right to use or exploit the songs and other sound recordings in the eleven films in question. The appellant had been unable to prima facie prove that the sound recording in the plate had been assigned to them or even assuming they had been able to prove so, they were unable to establish that this right extended beyond one year. The appellant may not be concerned with what was subsequently assigned by the producer or what assigned rights came into the hands of the respondent. It was enough for them to know and to establish, which the appellant has successfully done, prima facie that the sound track or sound recordings had been assigned to them and could not be assigned in favour of any other person. If any other person threatened to claim such right, it was non-est. The appellant could seek orders to restrain him from doing so.
In Wander Ltd. and Anr. vs. Antox India P. Ltd. reported in 1990 (Supp) SCC 727, the Supreme Court laying down its dictum based on the well known case of American Cyanamid Co. vs. Ethicon Ltd.
reported in [1975] 1 All ER 504 had observed that at the interlocutory stage the legal rights of the parties were "contested and remained uncertain till they are established at the trial on evidence." This is so because the evidence that is before the court is only partial and the complete evidence is available only after discovery and evidence is actually led by the parties in the box. Provided a substantial question is raised by the parties, the court at the interlocutory stage should try to 20 balance the scales by passing an appropriate interim order taking into account the balance of convenience and the irretrievable injury factor. This is one of the principles the court is to follow while considering grant of an appropriate interim order. Usually, this principle is applied more in intellectual property matters. The age old principle of evaluating the prima facie case by measuring the respective strength of the case of the parties on the available evidence is to be first applied and if the court on appreciation of the evidence is unable to come to a prima facie conclusion as to the relative strength of the respective cases of the parties should the alternative principle of identifying whether there is a substantial question to be tried, be invoked. Thereafter, the balance of convenience is to be seen. In this case, the learned judge has completely missed the following points:-
a) On scrutiny of anyone of the agreements, it would be clear that the sound recording rights had been unconditionally assigned to the appellant.
b) This sound recording right included the songs in the audio version as well as other sound recordings in the plate.
c) Once the copyright over the sound recording had been assigned to the appellant, this right was vested with them permanently and could not have been reassigned to any other person.
d) The respondents could not claim any right to use and exploit the sound recording on the basis of a purported assignment of rights in their favour.
e) The appellants had absolute copyright over this sound recording which in isolation could not be used and exploited by any other person.
f) The appellants had been able to prima facie prove that for one year they were given the right of making the recording in the plate or in the records reproduced from the plate. The assignment of copyright was 21 absolute and indefinite. The producer was entitled to royalty on sale of records as well as special royalty on the assignment.
g) The appellant had been able to prove prima facie this transfer of right in their favour and had been able to discharge this burden of proof resting on them at the interim stage.
h) From the plate this sound recording can be transferred or captured or reproduced in other media like records, tapes, digital media etc. Therefore, clearly a strong prima facie case apart from a substantial question to be tried had been established by the appellant.
This strong prima facie case about the entitlement of the appellant to the sound recording in these eleven films could not be displaced by the respondents. Even if it was assumed that the respondents had acquired other copyright in the film, by no stretch of imagination they could be entitled to use the sound recording in isolation exclusively or together with the appellant.
Hence, this appreciation of prima facie case by the learned single judge was grossly erroneous and unreasonable in my opinion. This exercise of discretion is liable to be interfered with by us. SUMMARY OF FINDINGS
(i) In respect of the audio songs and other sound recordings in films of types A, B and C, as recorded in the plate or in the film or in its sound track, the appellant has exclusive right to play or otherwise use or exploit those songs and sound recordings.
(ii) The appellant has also exclusive right to play or otherwise use or exploit those songs and other sound recordings which from the plate or from the film or its sound track has been transferred to or recorded in any other media like gramophone records, tapes, digital recording devices.
(iii) A video clip which consists of the selfsame sound recorded in a video is a separate work and may be assigned. The sound recording over 22 which the appellant has copyright may be played through the video mode. The appellant cannot claim copyright over it. The impugned judgment and order dated 22nd December, 2017 is modified by reinstating the initial interim order dated 5th November, 2015.
The appeal is allowed to the above extent.
No order as to costs.
Urgent certified photocopy of this judgment, if applied for, be supplied to the parties expeditiously on compliance of usual legal formalities. I agree.
(SUBHENDU SAMANTA, J.) (I. P. MUKERJI, J.)
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