The Big “Monster”: User Generated Content in the Indian Landscape

by Urjitah Srikanth, Meghana Chandorkar | May 4, 2022 | Intellectual Property

Introduction

The most popular way of finding a new song, or discovering a show or movie, is by hearing it or about it, relentlessly, on Instagram ‘Reels’, or other social media platforms and short form video applications. In fact, if a song is ‘trending’ on such platforms, it is likely to be streamed on audio streaming platforms, multiple times, by millions of users, or even heard on the radio, enabling it to be a sure shot ‘hit’ . However, the flipside of the song becoming so popular, for the owners of songs, is that all such uses may not have been done with the owner’s permission. In fact, most uses of songs and other content (audio, visual, and audio-visual) on the internet, have likely been done without appropriate permissions.

Many users creating content for use on the internet, whether in the form of images as memes, videos of performances hopping on to the latest dance trend, end up using songs and other content owned by someone else, under the incorrect assumption that small or insignificant uses of third-party content on the internet will not amount to infringement or that they fall under “fair-use”. In fact, many users also incorrectly believe that providing appropriate credit or adding a ‘disclaimer’ would be sufficient to avoid receiving any copyright infringement claims from the owners of the ‘used content’. Another common misconception is that use of the ‘used content’, without permissions, as long as it doesn’t generate any revenues, is permissible. These wrong assumptions, and perhaps a lack of awareness of the rights being utilized or that such utilization requires authorization from the owner of the content, has led to the creation of the monster that is ‘user generated content’.

It can, however, be a friendly monster, and can work in the favour of both – the owner of the content, and the creators/users of the content. The creators and users of the user generated content – social media influencers and content creators, have made lucrative careers out of their presence on the internet and have amassed a huge number of ‘followers’. Whereas, for owners of the content, the favourable by-products of the use of their content by such users to create the user generated content, are large scale promotion and visibility of their content, to millions, on the eternal endless internet. That being said, unless the term of copyright has expired, or the use is deemed to be ‘fair use’ under the applicable laws, the content owner’s rights, such as copyright and other neighbouring rights, like moral rights and performer’s rights, in both – the existing audio and audio-visual content (“Third-Party Content”) are being utilized, without the owner’s authorization, by the creators/users in the creation of the content that they ultimately create using such Third-Party Content (“User Generated Content”).

As seen above, User Generated Content is currently a fairly confused jumble of good and bad, for users/creators of User Generated Content (“Creators”) and owners of Third-Party Content (“Owners”) alike. There are pros and cons to User Generated Content, and it is the cons that must be ‘caged’, and the pros are the reason they have to be ‘befriended’.

Caging the Monster

Beginning with the cons of User Generated Content, probably the biggest and foremost negative aspect is the uncontrolled and unauthorised usage of the Third-Party Content, because of which an Owner stands to lose significantly. There could be considerable loss of revenues, whether from the lack of license fees or royalties, or from consumer preference of User Generated Content over Third-Party Content. There is also a high risk of content piracy from unchecked use and availability of Third-Party Content as a part of User Generated Content. Further, unauthorised use of Third-Party Content by a Creator could be in a manner that is not appreciated by the Owner, or in a manner that the Owner could consider to be damaging to their reputation or goodwill and/or as distortion or mutilation of their content. An Owner is left with having to make a choice between having their content become wildly popular by means of its unauthorised use by Creators at the risk of losing out on their economic benefits, or effectively, stifling its success by taking an adversarial position against unauthorised User Generated Content. While the biggest and foremost negative aspect likely affects only Owners, it will be in the best interest, and for the most part, under the

1. https://www.hindustantimes.com/entertainment/music/surreal-for-chaand-baaliyan-to-go-viral-after-two-years-of-release-aditya-a-101646393968095.html

control of the Creators to not let such cons get in the way of their creativity. Let’s look at how, a little closely.

Beginning with the basics, the Copyright Act, 1957, the law governing copyright in India, bestows certain exclusive rights to the owners/controllers and authors/creators of content – films and shows, songs, music, lyrics, photographs or stills from films and shows, dialogues, etc. There are also certain rights available to the actors, singers, and other visual and vocal performers, in their performances, as rendered for the audio/audio-visual content. These rights, for the purposes of understanding the rights used or exercised by a Creator in User Generated Content, can be broadly classified as under:

1. Reproduction – taking a piece of content, and ‘reproducing’ it, as it is or with modifications, on identical or other mediums, or in the same or other formats. Reproduction is ‘copy and pasting’ of sorts. For e.g., taking a still from a movie and uploading it on the user’s social media account, with an unrelated caption, pasting other images, emojis, etc. over it, would amount to reproduction.
2. Performance/communication to the public – any display or playing of Third-Party Content, as a part of User Generated Content (or otherwise), where it can be generally viewed by the public, is known as ‘performance’ of the Third-Party Content. Therefore, for example, where a Creator ‘acts’ out a popular movie scene in their User Generated Content, it will amount to performance of the dialogues acted out, or where a Creator dances to a song in their User Generated Content, it will amount to performance of the song.
3. Adaptation – adaptation is where one type of Third-Party Content is ‘adapted’ into another. For e.g., where a Creator creates a remix of a song, or creates a mash-up of two or more songs, the Creator has created an adaptation of the original song(s).

It is important to remember that there are several other rights that are available to a copyright owner/controller, and/or author of a copyrighted content, and in most User Generated Content, more than one right necessarily gets used or exercised. For example, a right in the copyright family known as ‘personality rights’ gets exploited by a Creator who is miming an actor. In fact, a choreographer of a dance routine has certain rights in the routine that get exploited by Creators performing the routine.

In most cases, it is not possible to neatly classify the use of a Third-Party Content as having exercised any one particular right, and it is usually a combination of two or more rights that get exploited. What is more important to remember that if these rights in a Third-Party Content are used or exercised by a Creator in their User Generated Content, without appropriate permissions, then the rights of the Owner of the Third-Party Content are, necessarily, infringed. The owners, authors, artists, creators, etc. of the Third-Party Content, having spent considerable time and effort in its creation, would, naturally, like to reap its benefits. Such benefits are what is known as copyright – the intangible right to decide how the works gets used, and how to earn from it.

As elaborated by our colleagues in another article earlier this year , the principle of de minimis (i.e., a legal principle which allows for matters that are small scale or of insufficient importance to be exempted from a rule or requirement) does not find statutory backing in India. It is left to the Courts to determine, on a case-by-case basis, whether a use of copyrighted content is small enough to not be considered as infringement. Therefore, it must be borne in mind that all unauthorised uses of copyrighted content, in any form or manner, in any quantity, or to any extent, will be infringement. This throws the question of ‘small’ or ‘insignificant’ or ‘harmless’ uses of Third-Party Content out the window, as there exists no such possibility.

In this digital era, especially with the advent of the pandemic, when life, as we know it, became almost entirely virtual, User Generated Content has taken a fairly uncontrollable and unchecked form. Many social media platforms and short-form video applications, such as Josh, Moj, ShareChat, MX Takatak, etc., in addition to the most popular, YouTube, Instagram, and Facebook, offer people many ways to create, upload, and consume Third-Party Content and User Generated Content. These platforms, though they partake in the performance of the Third-Party Content (as a part of User Generated Content or otherwise) by literally providing a platform for communication of the User Generated Content, have legitimate shelter under the statutory protection granted to ‘intermediaries’ under the Information Technology Act, 2000 (as amended from time to time).

1. https://tmtlaw.co.in/doctrine-of-de-minimis-vis-a-vis-copyright-infringement/

For the unacquainted, an intermediary is a platform that merely receives, stores, or transmits any content on behalf of another. The Indian legal framework provides that an intermediary shall not be liable for any content made available or hosted by it, provided that the function of such intermediary is limited to providing access to a communication system over which information made available by third parties is transmitted or temporarily stored or hosted, and provided further that an intermediary does not: (a) initiate the transmission, (ii) select the receiver of the transmission, and (iii) select or modify the information contained in the transmission.

More recently, though, popular audio clips and songs/song clips are made available by the platform itself, under a ‘library’ feature of the application, for use by the users of the platform in their User Generated Content. Such making available of audio clips to users of the platform, by the platform, if done without appropriate licenses, will disentitle them from seeking the statutory protection available to intermediaries, as it goes against the conditions mentioned above.

The Indian statutory and judicial landscape impose certain due diligence obligations on an intermediary, with respect to the content it hosts. An intermediary has the right, and in certain instances, an obligation, to ensure content on its platform does not infringe any rights of any third-parties. In particular, when an intermediary has received notification of infringement of rights in the content on its platform, it must take necessary action to take it down and prevent such infringement. Practically speaking, however, it is not manually possible or feasible for an Owner of the Third-Party Content to comb these platforms, extract details of infringing content, and notify the platform of the same, mainly because these platforms boast of millions of daily active users .

Needless to say, the task of caging the monster appears to be a tedious task. As putting a complete end to User Generated Content, or even controlling it on a largescale level, may not be possible, the question that remains is if some kind of a work around is possible, even if only for the obvious reason of preserving the freedom of speech and expression of the Creators of User Generated Content. It would definitely be easier for Creators of User Generated Content, if they do not have to fear and/or respond to copyright infringement claims, and for Owners of Third-Party Content to not have their content be unfairly used without permissions.

There are a few ways in which Third-Party Content may be used by Creators in order co-exist without disputes, and/or infringing rights of any person or entities, while also protecting freedom of speech and expression, for the most part, as indicated below:

1. By using content available in the licensed content library of social media platforms only. As tempting or convenient as it may be to use (or reproduce) a song directly, the same may get picked up in fingerprinting (explained below), and be subject to unpleasant claims or blocks.
2. There are certain uses which are statutorily deemed to not be infringement. The Indian copyright law provides a detailed list of uses of Third-Party Content, such as criticism, review, reporting, use in the course of education, etc., which are considered as ‘fair-use’ and are exempted from the exclusive rights available to the owner of copyright, and thus, will not be deemed to be infringement. Creators of User Generated Content must stay within the bounds of these exceptions to avoid infringement claims.
3. Approaching the Owners for permissions to legitimately use such Third-Party Content to create the User Generated Content.

Befriending the Monster

Recognising that User Generated Content, with its many pros, is here to stay, will be the first step to dealing with it in an effective manner. As already mentioned above, there is a new category of professionals in this digital day and age – the influencers, bloggers/vloggers, and content creators, and they have become important tools to having countless entertainment content, brands/products/services, advertisements, information, news, etc. reach a consumer in the palm of their hands. What Owners are also coming to realise is that Creators are instrumental in the increase in popularity of their content without spending what

1. https://indianexpress.com/article/technology/social/josh-the-short-video-app-born-after-indias-tiktok-ban-gets-805-million-7854930/
2. Section 52 – Copyright Act, 1957

otherwise would have been a hefty marketing budget to undertake traditional ways of promoting their content, with lesser reach.

Platforms like YouTube and Meta (for Facebook and Instagram) have led the way in this endeavour of befriending the monster. Presently, they have obtained blanket licenses from owners of music content for use of music on their platforms, perhaps pre-empting that they could be subject to copyright infringement claims and notices, due the acts of the Creators on their platforms. Such licenses typically allow the platform to offer songs from their licensed music catalogue, as a part of the aforementioned ‘library’ feature, and in a sense, legitimise the use by the Creators of the Third-Party Content in the User Generated Content, on the licensee platforms. Some platforms are also actively working with Owners of the Third-Party Content, to develop efficient technologies, specifically, ‘finger-printing’ technologies . Without going into the technical details, this technology identifies Third-Party Content (both audio and audio-visual), that has been used in User Generated Content. It then deals with the unauthorised usage of the Third-Party Content automatically, whether by way of placing automatic claims and redirecting revenue (if any) to the original owner, blocking, muting, etc., but all of this, while giving sufficient opportunity to the users to respond to the claims.

Further, the last few years have shown us that Owners and Creators can, in fact, co-exist. The most heart-warming story is of a young singer, all the way across the globe in the U.S.A., creating and uploading a cover version of a popular song on the internet, the cover version becoming popular on social media and finding its way to the producer, and the producers loving the version so much that they collaborated with the singer to create an official acoustic version of the song, which is also extremely popular. The singer, needless to say, is now hugely successful . The cover version, though an infringement when first uploaded, opened up beneficial avenues, to both the parties. Similarly, a content creator and singer based in Mumbai, who regularly creates and uploads different versions of popular Indian and international songs on her social media accounts was also discovered based on a Hindi version of an English song that she created. What is notable about this instance is that the English song, which wasn’t so popular when released in the early 2000s was ‘trending’ on the User Generated Content circles, and as a consequence, on streaming platforms. The Creator’s song was also highly appreciated on social media, ultimately reaching the original singer, who sincerely appreciated it .

Conclusion

Copyright is a personal right, in that, if Third-Party Content is used in User Generated Content, the same is infringement de facto, but that infringement becomes an issue, if the Owner of the Third-Party Content decides to treat it as an issue. An Owner of Third-Party Content, legally has, and should have, the right to decide how their content is used. As we have seen, a few instances of use of User Generated Content have led to tremendous success and recognition for some Creators, as in these instances, the Owners chose to appreciate the User Generated Content. However, the possibility than an Owner may not appreciate the User Generated Content and may instead choose to assert their rights always exists. It is evident that the law needs to adapt to recognise the boom in the development of User Generated Content and make provisions to address this, while ensuring that Owners don’t lose out on the economic benefits of being copyright owners, so that their rights aren’t rendered meaningless, and nor do the Creators lose out on their creative freedom and growth. Until this happens, it will be in the best interest of a Creator of User Generated Content, to be cognizant of an Owner’s copyright while using Third Party Content.

1. ‘Fingerprinting’ is identifying a piece of content by its unique characteristics. It is typically accompanied by an unique alpha-numeric ID given to a piece of content, by the platform on which the content is uploaded. The ‘fingerprint’ of the content is then used to track similar or substantially similar content on the platform, and tackle infringement, by placing claims / blocks / strikes, etc. Google first developed this technology, known as ‘Content ID’ for YouTube, which is now adopted or developed by other platforms. There are also service providers such as ‘Audible Magic’ that provide content infringement tracking via fingerprinting as a service to other platforms. It is pertinent to note that each platform has different terms and conditions for upload of content and use of fingerprinting technology. Further reading:
   https://support.google.com/youtube/answer/2797370?hl=en; https://www.audiblemagic.com/technology/.
2. https://rollingstoneindia.com/the-extraordinary-rise-of-lisa-mishra
3. https://support.google.com/youtube/answer/2797370?hl=en; https://www.audiblemagic.com/technology/.

Meghana Chandorkar, Partner

An Alumnus of ILS Law College, Pune, Meghana has 12 years of experience as an Intellectual Property and Media & Entertainment lawyer. After graduating in 2009, she has worked with the intellectual property teams of leading law firms, with a strong focus on trademark and copyright law, as an in-house counsel for a music company, and for a broadcast, media, and entertainment company.

Urjitah Srikanth, Senior Associate

Urjitah is a Senior Associate at TMT Law Practice. She graduated in 2018, and enrolled with the Bar Council of Maharashtra and Goa. Since her graduation, she has worked with boutique IP law firms, servicing media and trademark (prosecution) clients, and has also worked in-house for a music label and publisher.

Doctrine of De Minimis Vis-À-Vis Copyright Infringement

by Sapna Chaurasia, Krishi Shah | Jan 6, 2022 | Intellectual Property

In the world of social media where people are hooked onto reels, memes and tend to click pictures, vlog their experiences, and post the same on their respective social media handles such as Instagram and Facebook, they unknowingly tend to infringe copyright of multiple owners on multiple occasions in multiple jurisdictions.

For instance, certain restaurants follow a practice of wishing the guests on their birthday through a small performance by their waiters singing “Happy Birthday” in a special manner. The guest records the performance and posts it on his/her Instagram account without obtaining the express consent of such waiters. Under the Copyright Act, 1957 the waiters will be ‘performers’ and thereby the said waiters have the exclusive right to make recordings of their performance and communicate it to public, and the act of the guest to record the performance without consent of the waiters and further post it on a social media platform technically amounts to copyright infringement[1]. Since it is copyright infringement, it can be enforced in courts, but the questions that arise are should such claims actually be enforced by a court of law and is it cost effective to adjudicate such claims? One of the answer to such an issue is the principle of De Minimis.

The principle of De Minimis is a common law principle that has been derived from the Latin term ‘De Minimis Non Curat Lex’, which means that the law does not care for, or take notice of, very small or trifling matters[2]. This principle is not statutorily recognized by most countries in the world. However, courts in India and United States of America (“USA”) amongst some other countries, have used this principle and assessed its applicability on case-to-case basis. Accordingly, this principle is largely based on judicial precedents around the world.

Factors for the De Minimis doctrine vis-à-vis Copyright Infringement laid by Hon’ble Delhi High Court:

The Indian Copyright Act, 1957 (“Copyright Act”) does not give any statutory recognition to the doctrine of de minimis. This principle, in relation to the Indian copyright law, was first discussed in 2011, by the Delhi High Court in Super Cassettes Industries Limited & Ors. v. Chintamani Rao & Ors[1] wherein a news channel called India TV, used certain copyright works such as sound recordings and clips of films produced by Super Cassettes’ and Yash Raj Films’ respectively without obtaining appropriate licences and defended its action to be covered under fair dealing as embodied in Section 52(1)(a) and 52(1)(b) of the Copyright Act^[2] wherein any copyright work used for the purpose of reporting current events would not amount to copyright infringement.  The Learned Single Judge of the Hon’ble Delhi High Court rejected the fair use defence inter alia, on the grounds that the Copyright Act provides for specific rights vested in a copyright holder along with specific exceptions thereto and a general principle outside the scope cannot be applied by the Court; This was taken in appeal by India TV[1] and the primary questions before the Division Bench were

(i)  whether use of a single line from a song from a film produced by Yash Raj Films (“YRF”) would amount to copyright infringement and

1.  Section 51 read with Section 38A of the Copyright Act, 1957
2. https://www.latestlaws.com/wp-content/uploads/2015/04/Blacks-Law-Dictionery.pdf
3. Super Cassettes Industries Limited & Ors. v. Chintamani Rao & Ors., 2282/2006
4. Section 52(1)(a) – “a fair dealing with a literary, dramatic, musical or artistic work for the purposes of— (i) Private use including research; (ii) criticism or review, whether of that work or of any other work;”; Section 52(1)(b)- “a fair dealing with a literary, dramatic, musical or artistic work for the purpose of reporting current events—(i) in a newspaper, magazine or similar periodical; or(ii) by broadcast or in a cinematograph film or by means of photographs.”
5. India Tv Independent News Service Pvt. Ltd. & Ors. Vs. Yashraj Films Pvt. Ltd. (2013 (53) PTC 586 (Del))

(ii) whether singing a few lines from different songs of films produced by YRF, by a singer, who originally sung the songs in the films, in a chat show would constitute copyright infringement.

Whilst the Division Bench allowed the appeal and set out the three (3) approaches adopted by courts for applying the de minimis principle to copyright law i.e. (i) substantial similarity analysis (ii) the fair use analysis and (iii) applying de minimis where violation is ascertained to be trifling unimportant or insufficient. The Division Bench analysed the pros and cons of all three approaches in detail and laid down the following factors to be considered for applying de minimis as a defence for copyright infringement:

 (i) The size of the use and the type of harm it may cause: While considering the defence of de minimis, the size and harm caused by such infringing use has to be ascertained by the Courts. To use de minimis as a defence, the size of such use must be miniscule, and no significant harm should have been caused to the copyright owner by such miniscule use of the copyright work.

(ii) The cost of adjudication: The courts should consider the cost of adjudication in the event an infringement claim would be filed against such use. In order to qualify an infringing use as de minimis, the social cost of adjudicating such copyright claim must be much higher in comparison to the total benefit arising from such claim.

(iii) The purpose of the violated legal obligation: The Courts, while considering the defence of de minimis for any infringing use, should ascertain and consider the purpose of the infringing use. In order to qualify for the defence of de minimis, it should be ascertained that there is no wrongful purpose of the infringer for such infringing use.

(iv) The intent of the wrongdoer: While determining de minimis cases, the Courts should consider the motive of the accused. In the event, it is established from the facts of a case that the accused did not have any malafide intention such as to steal or appropriate something which belonged to other person for accused’s own benefit, such use shall qualify for the defence of de minimis.

(v) The effect on the legal rights of third parties: The infringing use, in order to qualify for de minimis defence, must not affect or cause any kind of significant harm or loss to any third parties.

Relying upon the aforesaid factors, the Division Bench held that the use of lyrics from a sound recording owned by YRF for an advertisement of “Sab Golmal Hai” by India TV, was trivial and attracted the defence of de minimis as the harm caused due to such infringement was trifle since the use was only five words from five stanzas; India TV’s intent was not to steal but to educate the public by raising consumer awareness and basis YRFs stance that it would charge Rs. 10,000/- as license for such usage, the Division Bench concluded that the amount was too trivial in comparison to the social cost of adjudication.

Regarding the second issue of the singer singing songs owned by YRF during India TV’s chat show-“India Beats”, the Division Bench held that when a celebrity participates in a discussion or a talk show which involves public interest, such celebrity would be entitled to refer to the milestones achieved by the celebrity in his/her life and it would be a case of de minimis use when such celebrity who is a performer sings small portion of the songs while discussing his/her life as one cannot separate from the life of the performer his/her performances and hence the appropriation of the lyrics would not constitute an actionable violation of the copyright in the sound recording. However, the Division Bench cautioned, that this defence has to be applied on a case-to-case basis with abundant caution.

The principle of de minimis was recently also used as a defence in Super Cassettes Industries Ltd. v. Shreya Broadcasting Pvt. Ltd., wherein the Delhi High Court, in light of the aforementioned five factors, perused the cue sheets submitted by Super Cassettes and held that since Shreya Broadcasting had infringed nearly 500 minutes of the Super Cassettes copyright works at different occasions without obtaining any appropriate license from Super Cassettes, such use did not qualify for the defence of de minimis and ordered Shreya Broadcasting to pay compensatory damages of Rs. 21,00,000/- to Super Cassettes.

It is pertinent to note that the courts in India have been very cautious and careful while adjudicating cases involving trivial copyright violations, so as not to send an adverse message to the public that trivial violations of copyright are always exempted. As other defences, there is no straitjacket formula to apply the defence of de minimis in infringement claims. The defence of de minimis cannot be applied as a precedent and has to be ascertained strictly on a case-to-case basis after consideration of all the surrounding factors in relation to the infringement.

U.S.A Jurisprudence for De Minimis principle vis-à-vis Copyright infringement:

The U.S.A Court applied the De Minimis principle in Gayle v Home Box Office[1]  wherein Gayle’s graffiti was captured in the footage of a TV Show called Vinyl, when a character from the show was shown walking on the streets. The Court held that since the use of Gayle’s work was so limited, it was a de minimis claim that was almost frivolous in nature. However, this was largely because the graffiti was barely visible while viewing the clip in real-time and hardly recognisable when the video was paused.

Further in a recent case, Bell v. Wilmott Storage Services, LLC, the Ninth Circuit, clarified the role that the de minimis concept plays in copyright infringement cases i.e. de minimis is to be ascertained and applied on basis of the amount of copyright work that has been infringed and not just on the basis of the minimal use of such infringed copyright work.

Conclusion:

In the current digital era, the lines between actual infringement and trivial infringement have blurred and it has become increasingly difficult to ascertain what level of infringement would constitute actual infringement and what can be allowed as fair use or de minimis. The path of de minimis shall be trodden very carefully by the Courts to protect the interest of all parties involved and ensure that the applicability does not in any manner undermine the ownership of the copyright owners.

Sapna Chaurasia, Partner

Sapna Chaurasia is a Partner at TMT Law Practice and leads the Mumbai operations of the Firm.  She has an experience of more than 15 years working with law firms and in-house.  Her primary area of expertise are Intellectual Property, Dispute Resolution, Media and Entertainment, employment issues and internal compliances by companies.

Krishi Shah, Associate

Krishi is an Associate at TMT Law Practice. She has completed B.B.A LL.B. (Hons.) from University of Mumbai Law Academy in August 2021. She has garnered experience by working in media department of law firms and a production house. She has worked on several transactions pertaining to content creation and exploitation and worked on various kinds of agreements including artist management agreements, services agreements, brand solutions agreements, influencer agreements and other agreements and documents relevant in the media industry.

Producer is the Owner of Copyright in a Cinematograph Film – Madras High Court Reaffirms

by Anjali Tiwari | Dec 22, 2021 | Intellectual Property

CASE ANALYSIS: ‘S.J Suryah (a.k.a. S. Justin Selvaraj) v. S.S Chakravarty &Anr. (OSA No.138 of 2021) by the Hon’ble High Court of Madras’(OSA No.138 of 2021)’.

Recently, videorder passed in aforementioned case, theDivision Bench of the Hon’ble Madras High Court dismissed the Appeal filed by the Appellant/Plaintiffseeking grantof an injunction for Copyright infringement against the Respondents/ Defendants with respect to the remake rights of the film, ‘Vaalee’ (‘the film’).The judgment revisits and reaffirms the law on first ownership of cinematograph films.

• FACTUAL BACKGROUND OF THE CASE:

1.1 In 1997, on the proposal of an actor, namely, Ajith Kumar, the Appellant/Plaintiff came up with a story and script for a film which proposed to starAjit Kumar as the lead and the Appellant/Plaintiff himself as the director.The Appellant/Plaintiffclaimed that he had come up with the story, screenplay and the dialogue for the film. The first Respondent/Defendant agreed to produce the film based on the said story and engaged the Appellant/ Plaintiff as the director. The Tamil film, ‘Vaalee’,was released in the year 1999 and came to be a blockbuster.

1.2 The Appellant/Plaintiff had not assigned the underlying Copyright in the story, screenplay and dialogue to the first Respondent/Defendant.When the aforesaid movie was released in the year 1999, the Appellant/Plaintiff was given credit for the story, screenplay and dialogue pertaining to the film. However, the Appellant/Plaintiff ‘s contention was that as the director of the film and the author of the story, screenplay and dialogue, he was the owner of Copyright in the story, screenplay and dialogue of the film and that remaking of the film would not be possible without infringing his Copyright. Thus,the Appellant contented that Defendant No.1/Producer of the movie could not have assigned the remake rights of the movie to Defendant No.2.

1.3 During the course of the proceedings, it was brought on record that the Telegu dubbing rights were sold in 1998 itself and the film was remade in Kannada in 2001, i.e., 20 years ago. The Appellant however, had not raised any objections or claims with respect to the rights over the film at that time.

1.4 The Appellant/Plaintiff proceeded to file a suit under Order VII Rule 1 of the Code of Civil Procedure,1908 read with Order IV Rule 1 of the Original Side Rules against the Respondents/Defendants for a declaration that the Appellant /Plaintiff is the author of the story, screenplay and dialogue of the film and that the re-make rights for the movie vest exclusively with him. The Appellant claimedthat any agreement between Respondents/Defendants pertaining to re-make of the said movie would be an infringement of his Copyright and therefore,null and void. The Appellant thussought a permanent injunction restraining the Respondents/Defendants from dealing with or making use of the re-make rights of the film in any language.

1.5 The Appellant filed an Application under Order XIV Rule 8 of O.S Rules read with Order XXXIX Rules 1 and 2 Code of Civil Procedure,1908seeking an order of interim injunction restraining the Defendants or any other person from in any manner making use of or dealing with the “re-make” rights of the film pending disposal of the Civil suit.

However, the Appellant/Plaintiff’s plea of injunction was rejected by both, the Hon’ble Single Judge as well as the Hon’ble Division Bench.

The Hon’ble Court considered, inter alia, the following issues:

1. Who is the owner of the film in terms of the Copyright Act?
2. Whether the Appellant/Plaintiff is entitled to the reliefs soughtwhen he had approached the Hon’ble Court after a period nearly around two decades?
3. Whether the credits given to the Appellant/Plaintiff as the writer, and director of the movie entitles him to claim original ownership of the script,screenplay, and dialoguesof the film, particularly so in the absence of a written contract?
4. Whether the Appellant/Plaintiff had acquiescedby not objecting to the earlier remake and dubbing of the movie in Kannada andTelugu respectively?

HELD

The Hon’ble Court held that Appellant/Plaintiff was not able to showprima facieto establish its case of Copyright ownership over the film. Merely because the producer gave credits to the Appellant as the author of the screenplay and   dialogue, does not entitle the Appellant to claim ownership of Copyright over the film’s screenplay etc.  The Courts also took note of the Appellant’s failure to place on record any agreement/contract that assigned his rights over the film’s screenplay. Therefore, the plea sought by the Appellant/Plaintiff for interim relief of injunction was dismissed by the Courts.

ANALYSIS

Copyright is a statutory right and there is no common law right beyond the statute. That Copyright subsists in the expression and not in the idea is an elementary principle of Copyright law. Section 2(d)(v) and Section 17 of the Copyright Act, 1957 further establish that it is the producer, as the author of the cinematograph film, who owns the Copyright in the film.In the present case the Appellant/Plaintiff sought to distinguish his case by relying upon the credits given to him for story, screenplay and dialogue. However, in the absence of any document to suggest that the Appellant had retained the copyright in story, screenplay or dialogue in the film, the Court relied upon the statutory provisions, to reject the Appellant’s prayer for an interim injunction against the Respondents.

Anjali Tiwari, Associate

Anjali is an Associate at TMT Law Practice. She was called to the Bar in June, 2019 and has gained considerable exposure through her experiences at different institutions. She has valuable experience of over 2 years and is a member of the Delhi High Court Bar vide membership No.19169/2019. Her primary areas of interest and expertise is Dispute Resolution, including but not limited to Injunction Suits, Declaration Suits, Recovery suits, Quashing petitions, writ Petitions, Criminal matters including the Bail Matters, Matrimonial Disputes including the Domestic Violence Cases, Divorce Petitions, Maintenance Petitions, Custody of Child under the Guardianship Act, Arbitration Matters. She is assisting and representing Clients with Commercial Dispute Resolution and General Corporate Advisory. She has considerable exposure at assisting and representing clients ranging from individuals, corporates to government departments before various fora, including trial courts, High Court of Delhi, Supreme Court of India as well as Tribunals.