Inception Media Llp vs Star India Pvt. Ltd. And Anr
2015 Latest Caselaw 408 Bom

2015 (62) PTC 241 (Bom)

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8. This case differs materially from Beyond Dreams in three

critical respects: first, the Defendants question the Plaintiff's standing or right to bring the suit at all saying that Ms. Kothari is not

the author of the literary work; second, the Defendants contend that the Plaintiff's rights, if any, have been assigned in perpetuity to Zee, and have not since been re-assigned back to the Plaintiff; and third,

the Defendants point to certain 'release forms' said to have been signed at the relevant time on behalf of Baba Arts. The second and third arguments of course proceed on the basis that copyright did

(and does) vest in the Plaintiff. I think it is fair to say that the question of assessing any similarity will arise only if the Plaintiff can

successfully meet these three contentions, all of which are in the nature of threshold or in limine defences. I will, therefore, address

these three questions first before turning to the fourth defence, which is, naturally, that the works are dissimilar and there is no infringement.

THE CLAIM TO SOLE AUTHORSHIP

9. The Plaintiff says that Ms. Kothari is the sole author and

absolute owner of the literary work in question. This is specifically said to include and encompass:

"the concept, story, character sketches,

thoughts, expressions, pitch lines, plot, tracks, screenplay, etc., along with a brief outline of three episodes."

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This is the description used by the Plaintiff throughout. 7 Ms.

Kothari is said "as the original author of" this literary work to have registered it with the Film Writers' Association on 29th November

2012 in her own name. The Plaintiff itself is an assignee of the copyright claimed by Ms.Kothari under a Deed of Assignment dated 9th June 2015,8 and the Plaintiff claims that till that assignment, Ms.

Kothari was the 'first author', the 'absolute owner' and 'copyright holder' of the work in question.9 This is of some consequence: the statement is clear and unequivocal, with no ambiguity about it at all,

that Ms. Kothari was the author, and the sole author of this work.

Neither she nor the Plaintiff suggest that the work, or any part of it,

was commissioned under a contract of service or was prepared in the due course of employment by an employee. The Plaintiff's own

documents raise a very significant question mark over this assertion. To the Affidavit in Rejoinder is annexed a copy of an email dated 18th September 2012 from one Harsh Tyagi, apparently a

scriptwriter.10 The email says that Mr. Tyagi sent Ms. Kothari

several documents as attachments to his email. These included files titled "characters of T.docx"; "Ye Tera Ghar ye Mera Ghar.docx" and "Tera Ghar Mera Ghar Episodes.docx". Ms. Kothari seems

simply to have forwarded these to her husband, her fellow partner with the Plaintiff, a few days later on 29th September 2012. 11 This is apparently the work that was registered with the Film Writers'

Plaint, paragraph 5; Affidavit in Support of the Notice of Motion, paragraph 3, Motion paperbook p. 9; Rejoinder Affidavit, paragraph III, Motion paperbook p. 214; written submissions, paragraph 1.

Motion paperbook, pp. 254-256.

Motion paperbook, p. 215 (Affidavit in Rejoinder).

Motion paperbook, p. 245.

Motion paperbook, p. 244.

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Association.

10. Mr. Daver says this is inconsequential. Ms. Kothari applied

for copyright registration on 21st November 2012, one that she obtained on 8th November 2013, and, he says, that ends the matter especially in view of Section 48 of the Copyright Act, 1957. That

section, with emphasis added, reads:

Section 48 -- Register of Copyrights to be prima facie evidence of particulars entered

therein

The Register of Copyrights shall be prima facie evidence of the particulars entered

therein and documents purporting to be copies of any entries therein, or extracts therefrom certified by the Registrar of Copyrights and sealed with the seal of the

Copyright Office shall be admissible in evidence in all courts without further

proof or production of the original.

11. Indeed, Section 48 is Mr. Daver's answer to my question

whether copyright registration is conclusive proof of authorship. I do not think this submission is at all correct. The section plainly says that the Register of Copyrights is prima facie evidence of the particulars entered in it. On its own, this means that there is only a

presumption, albeit a strong one, nonetheless rebuttable about the correctness of the entries. That presumption can always be shown to be incorrect. Further, Section 48 is not an acknowledgement of actual authorship being proved, but only of copyright having been applied for and granted. The process involved in copyright

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registration is, as Dr. Tulzapurkar correctly points out, very

different from that required for sealing of patents. Indeed, this is as it must be, for although the Registrar may make such enquiry as he

thinks fit under Section 45(2), this enquiry is discretionary. The purpose of Section 48 is not to conclude proof of authorship but, as a matter of evidence and procedure, to allow into evidence certified

and sealed copies or extracts without requiring proof or production of the original register. Where, in a given case, there is material to indicate, even prima facie, that the claimant to copyright is not the

sole or first author, that presumption is rebutted. The "first owner" of copyright is the author under Section 17 of the Copyright Act. In

the case of a work made in the course of an author's employment under a contract of service or apprenticeship (and leaving aside

cases of newspaper reports, etc., and commissioned artworks and films), subject to a contract to the contrary, the employer is the first owner of that copyright. There is nothing to show that Ms. Kothari

employed or commissioned Mr. Tyagi. The Plaintiff only says that

she was 'the sole author' and 'absolute owner' of the copyright, i.e., that she wrote it all herself. At the very least, Mr. Tyagi is very likely, on the Plaintiff's own showing, a joint author of the work in

question within the meaning of Section 2(z) of the Copyright Act. If that be so, then the exploitation of copyright must also be joint, and that includes the joint right to assign the copyright to a third party. 12

12. The consequences of this are grave, and I do not think Mr. Daver is in the least justified in describing the 2nd Defendant as something of a doryphore in raising the issue. It undermines the

Angath Arts Pvt Ltd v Century Communications & Anr., 2008 (4) Mh. L. J. 926

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Plaintiff's title under its 9th June 2015 assignment from Ms.

Kothari. If her own sole and absolute ownership and authorship are in doubt, she could not have passed absolute title to the Plaintiff.

Had there been some sort of explanation about Mr. Tyagi's involvement, things might have been very different. What the Plaintiff says in paragraph VII of the Rejoinder is only this: 13

VII. ... I say that the Copyright Certificate issued by the Copyright office under Section 48 of the Copyright Act,

1957, wherein it is binds every party to such registration.[sic] Annexed hereto is

the extract of the register of copyrights 'Copyright Certificate' certified by the

Registrar of Copyrights and sealed with the Seal of the Copyright Office as "Exhibit A"

along with a duly certified copy of the said Literary Work of the Plaintiff.

Further, on various occasions vide emails including but not limited to 10th September

2012, 18th September 2012, i.e., prior to Ms. Nandita Kothari's commencement of work for Baba Arts, Ms. Nandita Kothari after

working on the said literary work, discussed the further development on the said literary work with Mr. Vipul Kothari.

Annexed hereto and marked as "Exhibit B and C" are copies of the said emails.

(Emphasis added)

Motion paperbook, pp. 215-216.

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13. This raises more questions than it answers. The emails in

question are produced by the Plaintiff itself. They are of a time before Ms. Kothari began working with Baba Arts. They show Mr.

Tyagi to have worked on the 'Literary Work' in question. Mr. Tyagi was therefore not an employee of Baba Arts. Nor was Ms. Kothari. The suggestion in the pleading that Ms. Kothari 'after working on

the said Literary Work discussed' its further development with Mr. Vipul Kothari of the Plaintiff is at the very least misleading to the extent that it suggests that she alone worked on the material. In

paragraph 3(a) of the written submissions, the Plaintiff carefully changes tack ever so slightly. It says:

3(a) ... The Plaintiff has attached two

emails dated 10th September, 2012 and 18th September, 2012 and referred to the same vide paragraph VII of the Rejoinder Filed By Plaintiff (Exhibit - B, Pg. 244 and

Exhibit - C Pg. 245) which indicates that the partners of the Plaintiff were in

discussion with each other and persons contracted by the said author with regard to the said Literary Work titled 'Yeh Tera

Ghar Yeh Mera Ghar' on such dates.

(Emphasis added)

Those words "and persons contracted by the said author" are

wholly missing from the Affidavit in Rejoinder. There is nothing whatever to indicate this, and I think it is singularly unfortunate that any such additional misdirection, and it is only that, should be attempted in this manner. If this was so, it should have been clearly stated in the Affidavits: the Plaintiff ought to have said that others

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were employed, commissioned or 'contracted' to work on the

material. There is no such statement. On the contrary, as we have seen, there are repeated assertions that it was Ms. Kothari and she

alone who developed the whole of the literary work in question. Even more peculiar is the fact that Ms. Kothari applied for registration both with the Film Writers' Association and the Copyright Board

only in November 2012, well after Mr. Tyagi's involvement with the work.

14. But these already turbid waters are further muddied by what followed. In October 2013, Ms. Kothari was very much with Baba

Arts. Her assignment, such as it was, to the Plaintiff was not till 9th June 2015, and the Plaintiff's assignment in turn to Zee came only a

month later on 9th July 2015. On 10th October 2013, there was yet another email exchange between Ms. Kothari, then described as a Creative Director for Baba Arts, and one Nitin Keswani.14 In this,

Mr. Keswani asked Ms. Kothari to go through the episode and if she

'liked the plot' offered to start 'detailing and writing dialogues'. By then, of course, Ms. Kothari had obtained her copyright registration; but it is not at all clear what precisely she claims to have

assigned to the Plaintiff (and the Plaintiff in turn to Zee), and whether she was in fact the sole author of the work so assigned. I mention this because the 9th June 2015 Assignment to the Plaintiff 15 says that the work in Schedule I is assigned; and that Schedule 16

blandly states only "Yeh Tera Ghar Yeh Mera Ghar". This is not qualified to be the work prior to Ms. Kothari's engagement before

Plaint, Ex. I, p. 62.

Motion paperbook, pp. 254-256

Motion paperbook, p. 256

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Baba Arts, nor can that be deduced from this document. In the

paragraphs 15 to 17 of Plaint, the Plaintiff claims that from July 2013, Ms. Kothari 'requested her friends/acquaintances and also Mr.

Nitin Keswani to work on a draft screenplay' for the first episode. But the screenplay, as we have seen, is specifically included in the Plaintiff's definition of the 'literary work' in question. Again, it is

unclear whether Ms. Kothari was moonlighting and on her own commissioning further work on the material from third parties or whether these third parties were under contract to Baba Arts. Either

of these two scenarios jeopardises the Plaintiff's entitlement even further.

THE ASSIGNMENT TO ZEE

15. What is the effect of the Development Agreement dated 9th July 2015 between the Plaintiff and Zee at least as regards the

continued vesting of copyright (if any) in the Plaintiff? 17 Some of the

clauses of this Agreement are important and should be noted. In this document, the Plaintiff is described as "Production House" and Zee Entertainment Enterprises Limited as "Zee".

1.2 "Initial Concept" means the initial concept pitched by the broadcaster for a new television series. The Initial Concept

along with release form is attached as Schedule 1 to this Agreement.

1.4 "Developed Concept" means the new developed concept which was created as a result of mutual efforts of Zee and

Plaint, Ex.T, pp. 112-139A.

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Production House and the same is attached as Schedule 2.

1.5 "Development Work" shall mean the work

as defined under Clause 2.

1.8 "Zee Elements" means all the assistance provided to the Production House

with respect to the Development Work as listed in Schedule 3 and any other material as required by Zee from time to time.

2. Development Work

Zee hereby appoints the Production House to further develop the Developed Concept for the creation of this

Series and undertake the relevant Services to complete the development work and provide the deliverables to Zee, in accordance with the terms of

this Agreement ("Development Work").

For the avoidance of doubt, the Development Work shall be the sole and exclusive property of Zee including all rights, title and interest not

limited to the results and proceeds of the Development Work thereof in perpetuity for the Territory.

5. Assignment of Rights

5.1 The Development Work shall include any other copyrightable works created in connection with the Development Work and in the process of production of the Development Work, any and all parts and

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portions thereof, constituent elements therein and results and proceeds, tangible

and/or intangible, in connection with the Development Work.

             5.2 The      Production     house    hereby
             exclusively,         irrevocably        and

unconditionally grants, assigns, sells,

conveys and transfers to Zee solely and absolutely (including without limitation, by way of present grant and assignment of future copyright) all rights, title and

interest in and to the results and proceeds

of Developed Concept, Services and all constituent elements thereto resulting in whatever stages of completion as may exist

from time to time and all elements therein (collectively, "the Works") in perpetuity and in all languages in each country and area and space throughout the universe

(collectively, the "Rights") Such Rights in

and to the Works shall include, but shall not be limited to all copyrights as vested and to the results and proceeds of Production House's services and all

constituent elements thereto including literary works, musical works, dramatic works and/or artistic works as defined in the Copyright Act,1957 (as amended from

time to time) as well as copyright statutes or law subsisting in any other parts of the Universe The Production house hereby confirms, represents and warrants that the ownership of the Rights in and to the Works shall vest with Zee, free of all encumbrances with effects from the moment

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of conceptualization, development or creations of such Works. Production House

shall have no rights in or to, or to use, copy or otherwise dealt with,the Works in

any manner.

             5.8 The Production House hereby further
             acknowledges       and      agrees     that




                                                     
             notwithstanding the     provisions  of  the
             Indian   Copyright    Act  1957,   and  the

amendments thereof, all assignments granted or to be procured under this agreement

shall not lapse or revert to Production

House, even if Zee and/or its Assignees do not exercise any of the rights assigned under this Production House acknowledges

and agrees that Zee is not obligated to use the Works or any part thereof or otherwise exploit the Works in any manner whatsoever or continue to do any of the

foregoing.

The obligations set out in the clause shall survive the termination of the Agreement.

6. Process of Development Work

6.1 ...

6.6 Upon expiry of the Term or failure of the Parties to agree on the terms for

production of the Series, the Production House shall have the right to exploit the initial Concept at its discretion after expiry of a period of six (6) months.

10. Termination

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10.1.1 ...

10.3 On termination pursuant to this Clause 10.3 or otherwise:

* The Production House shall return all Zee Elements to Zee and agrees to follow Zee's instructions with regard

to such return (including location, time of delivery, manner);

* All of the rights and benefits

assigned to Zee pursuant to this Agreement shall remain vested in Zee.

16. Schedule 1 to this Agreement is important. It includes not

only Zee's standardized release form but also a copy of the concept note in which the Plaintiff (and Ms. Kothari) claim copyright. For now, I will assume that this concept note is the same as the one for

which Ms. Kothari obtained copyright registration. Clause 2 says there is an assignment of the "Development Work" in perpetuity.

That clause itself makes it clear that the "Development Work" is the outcome or result of further work done on or services rendered by the Plaintiff on the "Developed Concept", as defined in Clause

1.4; and the "Developed Concept" is not something entirely new or different but is based on and includes the "Initial Concept". This is as it must be; and indeed, this is the Plaintiff's case in paragraph 25

of the Plaint. The "Developed Concept" and the "Development Work" are, therefore, evolutions or further iterations of the "Initial Concept". All of this is assigned irrevocably and in perpetuity to Zee. Clause 10.3 also says that these rights survive any termination of that Agreement. The Plaintiff's case is that Zee abandoned the

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project when it learnt of the Defendant's show and that immediately

on that abandonment by Zee, there was a reversion of the copyright assignment to the Plaintiff. Mr. Daver bases this submission on

Clause 6.6 of the Agreement. I do not think this is at all correct. All that Clause 6.6 says is that there will be a sort of 'cooling off' period of six months following the expiry of the Agreement or on failure of

the parties to agree on the terms of the production. After that period, the Plaintiff was to have 'the right to exploit the Initial Concept'. This is, at best, a limited right. It is not in any sense a re-

assignment of the "Initial Concept". Given that there is before me nothing to show a formal termination of the Plaintiff's Agreement

with Zee except for a mere pleading, it is impossible to accept that there is, as of the date of the suit, any copyright that though once

assigned to Zee has now reverted to, and vests in, the Plaintiff. To maintain this suit, the Plaintiff would need to have in its hands, at a minimum, a formal termination by Zee, and a re-assignment of the

copyright in the Initial Concept.

17. A suit such as this one can only be brought by the "owner of copyright". This is defined in Section 54 of the Copyright Act, and

the civil remedies of such an owner are set out in Section 55. The former says that the owner of a copyright includes an exclusive licensee. That would appear to be Zee, absent any re-assignment to the Plaintiff: even if Ms. Kothari was "the first owner" of

copyright, there is today an exclusive license to Zee. That assignment to Zee, being complete, exclusive and in perpetuity, occludes Ms. Kothari's rights as the first owner; and, consequently, the Plaintiff's rights as an assignee from Ms. Kothari, both of which preceded the assignment to Zee.

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18. Then there is the question of the marked difference between

the literary work in which copyright is claimed, annexed as Exhibit "A" to the Plaint,18 and the document at Schedule 1 to the

Agreement with Zee. The two are materially different in structure, language, composition and presentation. Yet it is the Plaintiff's case, as indeed it must be, that the two are the same, and what was

registered to copyright by Ms. Kothari was the document at Exhibit "A" and that this work was assigned to the Plaintiff and then by the Plaintiff to Zee. If the two works are different, then the

abandonment by Zee furnishes no cause of action to the Plaintiff. If they are supposedly the same, the differences remain unexplained.

We know that Mr. Tyagi worked on the material in September 2012. This was before Ms. Kothari obtained her copyright registration on

8th November 2013. It was also before Ms. Kothari even applied for that registration on 21st November 2012 with the Copyright Board and before she registered it with the Film Writers' Association.

There is also now material to indicate that during the interval when

Ms. Kothari worked with Baba Arts, yet another person, Mr. Nitin Keswani, too worked on this material; and in paragraph 30 of the Plaint, the Plaintiff says that Ms. Kothari engaged another writer,

suggested by Zee, to work on additional material. No particulars of this are disclosed.

19. I mention this because in the written submissions, the

Plaintiffs' suggestion is that the suit is in respect of what is described as the "Initial Concept" in the Zee Agreement, and that the copyright in this "Initial Concept" was never assigned to Zee but always remained with the Plaintiff. That cannot be true. If it

Plaint, pp. 35-51.

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were true, and that what was given to Zee was entirely independent

of the copyright work that is the subject matter of this suit, there would have been no need to mention Zee at all. Besides, nothing in

the Agreement with Zee suggests this kind of division of copyright. Had any portion of the copyright been retained by the Plaintiff, the Agreement with Zee would surely have said so. On the contrary,

that Agreement clearly suggests that what is assigned to Zee is a work that incorporates and builds on the 'Literary Work' in which the Plaintiff claims copyright. Indeed, the entire case proceeds, as I

imagine it must, on the basis that what Ms. Kothari disclosed to the Defendants was incorporated in what she assigned to the Plaintiff

and what the Plaintiff in turn assigned to Zee.

20. I must note, in passing, that there is in paragraphs 23 to 25 of the Plaint a material misdirection. In paragraph 23, the Plaintiff says that Ms. Kothari ceased to work with Baba Arts. In paragraph 24,

the Plaintiff then says that she and her husband, Mr. Vipul Kothari,

formed the Plaintiff. There then follows this statement:

"and Ms. Nandita Kothari assigned several

literary works including the said Literary Work and all its related works and materials to the Plaintiff company thereby making the Plaintiff Company the owner of the same."

This clearly suggests that the assignment to the Plaintiff was some time in 2013 or 2014. Any doubt about what is being averred is disspelled by the opening words of the succeeding paragraph 25:

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25. Pursuant to the above, in February 2014, Ms. Nandita Kothari approached Ms.

Atmaja Unny representative for Zee to discuss the concept and storyline titled

"Yeh Tera Ghar Yeh Mera Ghar" and thereafter after receiving an approval for the same verbally, presented the concept and the storyline to Zee. Annexed hereto

and marked as "Exhibit M" is a copy of the email dated 19th February 2014.

This clearly suggests that the copyright assignment by Ms. Kothari to the Plaintiff was before February 2014. That document (the

assignment to the Plaintiff ) was of 9th June 2015, over a year later. A copy of it was also not produced with the Plaint, a matter I find to

be decidedly odd given the circumstances in which the suit is brought, but came only in the Affidavit in Rejoinder as Exhibit F.19 It may be possible to say that this is immaterial so long as the

assignment from Ms. Kothari to the Plaintiff preceded the

assignment from the Plaintiff to Zee, and it matters not when that happened, but I think there is something more fundamental at issue here. One expects accuracy and candour in a pleading, and where a

plaintiff is as slipshod as this in matters relating to its own title, then a Court will look askance at other assertions too, and justifiably seek material that even prima facie supports those. This is not so much a question of falsus in uno, falsus in omnibus as it is a question of

credibility. Statements such as those I have set out earlier, read in isolation, might indeed be innocuous. Read with assertions of sole authorship, also found to be at the very least dubious, this casts a cloud over the entire action.

Motion paperbook, pp. 254-256.

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21. But more importantly for our purposes, this completely puts

to rest any remaining doubt about the Plaintiff retaining copyright in the "Initial Work" as its written submissions now claim. In this

context, Mr. Kadam's submission for the 2nd Defendant must be accepted: so long as the agreement with Zee is not formally terminated, and without a proper re-assignment of the copyright to

the Plaintiff, Zee was at least a necessary party to this action: Section 61 of the Copyright Act requires this.

THE DISCLOSURE IN CONFIDENCE

22.

There is a very great deal of controversy about an aspect that I expected would be clear-cut. Ms. Kothari and the Plaintiff claim that

there was a disclosure of the 'Literary Work' in which Ms. Kothari held copyright to the 1st Defendant. In 2013, Ms. Kothari was a Creative Consultant to or a Creative Director with Baba Arts. The

meeting with the 1st Defendant, Star India, is said to have been

arranged on 11th December 2013. In paragraph 20 of the Plaint, the suggestion is clearly that Ms. Kothari "along with some others" met representatives of Star India and narrated the 'Literary Work' in

question. A Power-Point presentation was also made, and the slides of this presentation show Ms. Kothari as the owner of the copyright. What the Plaint does not disclose is that one Nikhil Tanwani signed a Release Form of that date 20 on behalf of Baba Arts. This is not the

only such form he signed. There is a previous one of 30th August 2013 in respect of another proposal as well. 21 Across the Bar and in its written submissions, the Plaintiff took a very strange tack: it

Motion paperbook, pp. 190-193.