In case of infringement of Copyright by an individual, action may not be an action in rem, but an action in personam, as against infringer of Copyright. There is no ground to interfere with judgment and order under appeal. Appeal is dismissed. Film “Thaana Serntha Koottam”

MIPR 2018 (1) 0324 = MANU/TN/0148/2018

IN THE HIGH COURT OF MADRAS

 

Shanthi Thiagarajan

vs

K.E. Gnanavelraja and Anr.

 

O.S.A. NO. 6 OF 2018 AND C.M.P. NO. 467 OF 2018 DECIDED ON: 11.01.2018

Judges

Indira Banerjee, C.J. and Abdul Quddhose, J.

Counsel

For Appellant/Petitioner/Plaintiff: AR.L. Sundaresan, Sr. Counsel for K.

Harishankar, Adv. For Respondents/Defendant: P.S. Raman, Sr. Counsel for Vijayan Subramanian,

Adv. Respondent No. 1, R. Krishnamurthy, Sr. Counsel for Vijayan Subramanian,

Adv. Respondent No. 2

HEAD NOTE

Arbitration clauseAssignment – Copyright – Infringement – Denial of Interim relief – Plaintiff challenge based on rumours and guilty of laches moreover appellant/plaintiff can be compensated in monetary terms inter alia, no grounds for restraining Defendant Respondents from releasing film “Thaana Serntha Koottam” (TSK)?

 

 

Therefore Held, it is not disputed that film Special 26 and its script qualify as cinematograph film and literary work respectively. For grant of an interim order of restraint, three factors are vital- (i) whether applicant has been able to make out a very good prima fade case; (ii) whether balance of convenience lies in favour of grant of ad-interim relief; (iii) whether monetary compensation will provide the applicant with adequate relief; and (iv) whether there has been delay or laches on part of applicant in applying for interim relief. Plaintiff Appellant assigned her rights to RPP Film Factory, giving RPP Film Factory right to further assign right to remake the film “Special 26” in Tamil and Telugu. RPP Film Factory has assigned this right to Defendant Respondents. Whether right included right to dub film in Tamil or Telugu or both is a matter of interpretation. Prima facie, right that is given to Defendant Respondent No. 1 is to remake and/or dub film in Tamil and Telugu, but no other language. Moreover film is due to be released on 12th January, 2018. Film has already been remade. There is ex facie an agreement between RPP Film Factory and Defendant Respondents. Comparative loss suffered by Defendant Respondents if suit ultimately fails would be much greater than loss suffered by Plaintiff Appellant if suit ultimately succeeds, for Plaintiff Appellant could be monetarily compensated. Furthermore, production commenced long ago. Plaintiff Appellant had obviously not been vigilant in protecting her rights. She, admittedly, heard rumours of production of film TSK but did not take steps to ascertain whether it was a remake of Hindi Film “Special 26”. Plaintiff Appellant has prima facie been negligent and her conduct smacks of laches in protecting her right. Furthermore, monetary compensation will provide Plaintiff Appellant adequate relief. In any case, agreement between Plaintiff Appellant and RPP Film Factory contains an arbitration clause. As an assignee of rights under said agreement, Defendant Respondent No. 1 was also bound by arbitration agreement. Copyright is a right in rem. However, in case of infringement of Copyright by an individual, action may not be an action in rem, but an action in personam, as against infringer of Copyright. There is no ground to interfere with judgment and order under appeal. Appeal is dismissed.

JUDGMENT

Indira Banerjee, C.J.

  1. This appeal is directed against a judgment and order dated 5th January, 2018
    passed by the learned Single Judge rejecting the application being O.A. No. 3 of 2018
    filed by the Appellant Plaintiff in the Commercial Suit being C.S. No. 10 of 2018 for
    an order of interim injunction, inter alia, restraining the Defendant Respondents
    from releasing the film “Thaana Serntha Koottam”, hereinafter referred to as ‘TSK’.
  2. The Appellant Plaintiff is the Proprietrix of a Proprietor Firm being ‘Staar Movies’
    engaged in the business of production and distribution of cinematograph films. The
    Appellant Plaintiff claims to have produced and distributed reputed films and also
    acquired rights for remake of films in other languages as part of a business, which,
    as aforesaid, she carries on under the name and style of ‘Staar Movies’.
  3. In 2008, M/s. Viacom 18 Medial Private Limited, hereinafter referred to as ‘Viacom’
    produced and distributed the film ‘Special 26’. We need not discuss the Plot of the
    film which is not really relevant to the question involved in this appeal.
  4. The film ‘Special 26’ distributed by Viacom was directed by Neeraj Pande who
    also wrote the script thereof. The producers of the film were M/s. White Frame
    Pictures and Friday Film Works Private Limited.

 

 

  1. By an agreement dated 25th July, 2012 executed by and between M/s. White Frame
    Pictures and Friday Film Works Private Limited and Viacom, Viacom acquired
    distribution as well as re-make rights of the film ‘Special 26’. It is pleaded that by
    virtue of the agreement dated 25th July, 2012, Viacom obtained the right to re-make the
    said movie ‘Special 26’ in various languages and also to assign the re-make rights.
  2. By an agreement dated 19lh August, 2013, Viacom assigned rights to re-make the
    film ‘Special 26’ in four regional languages, namely, Tamil, Telugu, Malayalam and
    Kannada to the Appellant Plaintiff. According to the Appellant Plaintiff, she has
    paid the entire consideration as stipulated in the agreement.
  3. By virtue of the aforesaid agreement, the Appellant Plaintiff acquired the right to
    remake, dub or sub-title the film ‘Special 26’ in any of the four languages referred to
    above and other foreign languages. According to the Appellant Plaintiff, in or about
    the year 2016, she commenced production of the film ‘Fever 26’ in Kannada, which
    was to be a remake of the Hindi film ‘Special 26’.
  4. In the application for interim injunction, it is pleaded that, in September, 2016, one
    M/s. RPP Film Factory represented by Prashanth. P., having its office at 11/11, Sree
    Apartments, Circular Road, United India Colony, Kodambakkam, Chennai 600 024,
    approached the Appellant Plaintiff for assigning of re-make rights of the film
    ‘Special 26’ in Tamil and Telugu.
  5. An agreement was executed by and between the Appellant Plaintiff and the said
    M/s. RPP Film Factory whereby the Appellant Plaintiff assigned the rights to re-make
    the film ‘Special 26’ in two languages, namely, Tamil and Telugu, to M/s. RPP Film
    The judgment and order under appeal records that it is not in dispute that the
    agreement between the Appellant Plaintiff and M/s. RPP Film Factory conferred on
    M/s. RPP Film Factory the right to further assign the re-make rights of the film
    ‘Special 26’ in Tamil and Telugu. It appears that on 23rd September, 2016, M/s. RPP
    Film Factory executed an agreement assigning its remake rights to the Defendant
    Respondent No. 1.

 

  1. According to the Appellant Plaintiff there were unverified rumours that the
    Hindi film ‘Special 26’ was being re-made in Tamil. The Tamil movie titled “Thaana
    Serntha Koottam” (TSK) starring Surya Sivakumar, Keerthi Suresh and Ramya
    Krishnan amongst others was a remake of the Hindi film ‘Special 26’. However,
    since the rumours were unverified, the Appellant Plaintiff decided to wait and
    watch (paragraph 12). Later, information surfaced that the Defendant Respondent
    2 was directing the said Tamil film TSK which was remake of ‘Special 26″.
  2. According to the Appellant Plaintiff, she waited till advertisements and
    promotional activities of the film ‘TSK’ confirmed that the movie was a re-make of
    the Hindi film ‘Special 26’. On 22nd December, 2017, the attention of the Appellant
    Plaintiff was drawn to a wikipedia page, which stated that the film ‘TSK’ was an
    adaptation of the Hindi film ‘Special 26’. At around the same time, the Appellant
    Plaintiff came across other news items and publications to the effect that ‘TSK’ was
    an adaptation of the Hindi film ‘Special 26’.
  3. The Appellant Plaintiff claims that the agreement between the Appellant Plaintiff
    and M/s. RPP Film Factory had lapsed by reason of non-compliance of provisions
    thereof and in particular, the requirement to commence production of the remake
    film within 21st September, 2017. The agreement having lapsed, the remake rights
    reverted to the Appellant Plaintiff and the Appellant Plaintiff alone has the right tc
    remake the film.

 

  1. The Plaintiff Appellant also submits that the agreement between the Plaintiff
    Appellant and Viacom clearly provided for acknowledgment of the contribution of
    original copyright holders in the new film as remade.
  2. It is alleged that TSK has been promoted as written and directed by Vignesh
    Sivan i.e., the Second Respondent, in contravention of the assignment agreement.
    The Defendant Respondents through their Counsel assert that the contributions of
    the original story writer of the film ‘Special 26’ and other original copyright holders
    have duly been acknowledged.
  3. It is not in dispute that the film Special 26 and its script qualify as cinematograph
    film and literary work respectively. The question is whether the Defendants have
    acquired re-production rights as contended by them. There can hardly be any doubt
    that the Defendants have a good defence in view of the assignment agreement dated
    21st September, 2016 between the Plaintiff Appellant and RPP Film Factory and the
    subsequent assignment agreement dated 23rd September, 2016 between RPP Film
    Factory and the Defendant Respondent No. 1. The Petitioner has prima facie parted
    with her right to remake and/or dub the film in Tamil and Telugu.
  4. Whether the Defendants have contravened any conditions of the assignment
    agreement assigning to them the right to remake the film requires to be adjudicated
    in the suit. The question is whether an interim order should have been granted by
    the learned Single Bench as prayed for in the application.
  5. For grant of an interim order of restraint, three factors are vital- (i) whether the
    applicant has been able to make out a very good prima facie case; (ii) whether the
    balance of convenience lies in favour of the grant of ad-interim relief; (iii) whether
    monetary compensation will provide the applicant with adequate relief; and (iv)
    whether there has been delay or laches on the part of the applicant in applying for
    interim relief.
  6. As observed above, the Plaintiff Appellant assigned her rights to RPP Film
    Factory, giving RPP Film Factory the right to further assign the right to remake the
    film “Special 26” in Tamil and Telugu. RPP Film Factory has assigned this right to
    the Defendant Respondents.
  7. Whether the right included the right to dub film in Tamil or Telugu or both is a
    matter of interpretation. Prima facie, the right that is given to the Defendant Respondent
    1 is to remake and/or dub film in Tamil and Telugu, but no other language.
  8. To adjudicate the balance of convenience, the Court is to consider which party
    would suffer greater prejudice, the Defendant Respondents by grant of interim order
    if the suit ultimately fails, or the Plaintiff Appellant by refusal to grant interim relief,
    if the suit ultimately succeeds.
  9. The film is due to be released on 12th January, 2018. The film has already been
    There is ex facie an agreement between RPP Film Factory and the Defendant
    Respondents. The comparative loss suffered by the Defendant Respondents if the
    suit ultimately fails would be much greater than the loss suffered by the Plaintiff
    Appellant if the suit ultimately succeeds, for the Plaintiff Appellant could be
    monetarily compensated.
  10. Furthermore, the production commenced long ago. The Plaintiff Appellant had
    obviously not been vigilant in protecting her rights. She, admittedly, heard rumours of
    production of the film TSK but did not take steps to ascertain whether it was a remake

 

of the Hindi Film “Special 26”. The Plaintiff Appellant has prima facie been negligent and her conduct smacks of laches in protecting her right. Furthermore, as observed above, monetary compensation will provide the Plaintiff Appellant the adequate relief.

  1. In any case, the agreement between the Plaintiff Appellant and the RPP Film
    Factory contains an arbitration clause. As an assignee of the rights under the said
    agreement, the Defendant Respondent No. 1 is also bound by the arbitration agreement.
  2. It is true that Copyright is a right in rem. However, in case of infringement of
    Copyright by an individual, the action may not be an action in rem, but an action in
    personam, as against the infringer of the Copyright. The above view, however, is
    only a prima facie view to be decided in the suit.
  3. We find no ground to interfere with the judgment and order under appeal. We
    make it clear that the observations made in this judgment and order are prima fade
    observations which will not influence the suit and/or any proceedings in the suit in
    any manner whatsoever. The appeal is, therefore, dismissed. No costs. Consequently,
    M.P. No. 467 of 2018 is closed.
  4. A.R.L. Sundaresan, learned Senior Counsel submits that the film should
    acknowledge the original copyright holders and give credit for their respective
    contributions and the film as remade should be screened in the presence of the
    Plaintiff Appellant and/or her representatives. Mr. PS. Raman, learned Senior
    Counsel appearing on behalf of the Defendant Respondent No. 1 submits that credit
    has been given to Mr. Thiagarajan of Staar Movies and the original copyright holders
    of the film “Special 26”. Mr. Raman undertakes that the Defendant Respondents
    shall also screen the relevant part of the film containing the credits in the presence
    of the Appellant Plaintiff and/or her representatives.

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