Recently, in the case of JA Entertainment Pvt Ltd v MS Sithara Entertainment and Ors,(1) the Delhi High Court held that dubbing a movie based on work copyrighted by another person, to whom separate rights are assigned in relation to the copyrighted work, does not constitute infringement.
The plaintiff approached defendant three (the producer of Malayalam film Ayyappanum Kozhiyum (the film)) and the predecessor of defendant four for the film's Hindi remake rights. Pursuant to negotiations, the plaintiff, defendant three and the predecessor of defendant four executed an assignment agreement dated 13 May 2020 whereby the Hindi remaking rights, the rights to remake and dub the film in Hindi and the right to add subtitles to the film and its Hindi remake were granted to the plaintiff.
In March 2022, the plaintiff came across a trailer of a Telugu film, Bheemla Nayak, dubbed in Hindi (the suit film). The plaintiff immediately asked defendant three about the nature of the rights assigned to defendant one, who was the producer of the suit film. Defendant three stated that only limited rights had been assigned to remake the film in Telugu and supplied the plaintiff with the deed of assignment dated 18 March 2020 exacted between defendant three and defendant one. The plaintiff, upon learning that the exploitation rights of the suit film had been assigned to Goldmine Telefilms Pvt Ltd, issued a notice to defendant one to cease and desist from releasing the suit film. As defendant one refused to comply with the requisitions of the notice, the plaintiff filed the present suit and subsequent interim application for ad-interim reliefs.
The plaintiff submitted that defendants three and four were the original owners of the film and thus were protected under section 14 of the Copyright Act 1957. The plaintiff, by way of the assignment agreement, had legally acquired the rights to remake the film in Hindi and dub the film in any language. The plaintiff further submitted that defendant one's deed of assignment dated 18 March 2020 was only to remake the movie in Telugu and subtitle it in any language and thus defendant one's act of dubbing the suit film in Hindi was an infringement of the plaintiff's copyright regarding the film. The plaintiff further submitted that, as only limited rights in the film were assigned to defendant one, defendant three remained the owner of the original work by virtue of section 18 of the Act. It was further submitted that the film was not a new work and that the defendants were required to pass the test of substantial similarity as laid down in R G Anand v Delux Films and Ors.(2)
Defendant one submitted that, by way of the deed of assignment, they had acquired copyrights for:
- the story;
- remaking and dubbing the film into Telugu;
- subtitling the film into all Indian and world languages; and
- all formats and media and, thus, the assignment included the right to convert the suit film into all formats including by dubbing.
It was further submitted that the deed of assignment had no negative covenants restricting defendant one from exploiting the rights in the remade film.
Defendant one further submitted that, by virtue of the deed of assignment, they owned the entire bundle of rights in the remade suit film and that the suit film had a new name and a different cast and songs, thus making it a distinctive and separate work. Defendant one also stated that since the suit film was a separate work, they had the right to dub or subtitle the suit film in any language. Defendant two submitted that since the suit film was a completely new film, the copyrights in the film belonged to defendant one and thus defendant one had the unencumbered right to dub the suit film.
The Court revisited the provisions of the Act and observed that, after a conjoined reading of sections 17, 2 (d) (v) and 2 (uu) of the Act, it was clear that the author of a work is the first owner of the copyrights related to a film, the producer is the author and thus the owner of the first copyright of the film. The Court analysed the concept of dubbing in light of the expression "communication to the public" as defined under section 2 (ff) of the Act. The Court thereafter referred to the judgment of the division bench of the Madras High Court in the case Thiagrajan Kumararaja v Capital Film Works (India) Pvt Ltd and Anr.(3) In this court case, the Court had held that dubbing would fall within the ambit of the expression "communicating to the public" and the producers and authors, as owners of the film, would have the rights to both dub and subtitle their work subject to any restrictions, among other rights.
The Court observed that it was not the plaintiff's case that the suit film made by defendant one infringed the copyright of the plaintiff and had in fact themselves accepted the fact that the suit film was completely new.(4) The Court observed that the plaintiff's case actually was that the dubbing of the suit film into Hindi would infringe their copyright. In order to answer this controversy, the Court revisited the deed of assignment and the plaintiff's assignment agreement. The Court observed that, in the former, defendant three had assigned all rights for remaking and dubbing the film in Telugu and subtitling it in all Indian and world languages with the power to alter, delete, add and modify the story and screenplay, thus renouncing all their rights in the new Telugu film produced or dubbed. In the later agreement, defendant three and the predecessor to defendant four had assigned rights to, among other things, make a new film based on the film and the underlying works in Hindi and the right to dub the film in Hindi or any other language with the right to dub the Hindi film. The Court further observed that prima facie the plaintiff had been assigned the right to:
- remake and dub the film; and
- make a new film in Hindi with the right to dub the film in Hindi or any other language.
However, the right to remake the film in Telugu had not been given to the plaintiff.
Under the provisions of section 51 of the Act, copyright is deemed to be infringed when any person, without licence from the owner or registrar or in contravention of the licence conditions, does anything that only the owner can do. The Court stated that since the rights granted to the plaintiff were not encroached upon by defendants one and two, prima facie, there was no case of infringement.
The Delhi High Court further observed that the plaintiff, in light of the deed of assignment, could not complain about the dubbing of the suit film into Hindi as defendant one was within their rights to do so. The Court further observed that, prima facie, defendant two was the owner of the suit film in light of the deed of assignment and the Thiagrajan Kumararaja judgment(4) and thus was fully within their right to dub the film. The Court prima facie found that the plaintiff did not have a cause of action, and thus vacated the previous ad interim injunctions and disposed of the interim application.
For further information on this topic please contact Kanav Rawat at Clasis Law by telephone (+91 11 4213 0000) or email ([email protected]). The Clasis Law website can be accessed at www.clasislaw.com.
Endnotes
(1) I A No. 4813 of 2022 CS (COMM) 191 of 2022.