Rdb & Company (Hindu Undivided ... vs Zee Entertainment Enterprises ...
2023 Latest Caselaw 2001 Cal/2

                       IN THE HIGH COURT AT CALCUTTA
                           SPECIAL JURISDICTION
                                ORIGINAL SIDE
                             [Commercial Division]


BEFORE:
The Hon'ble Justice Ravi Krishan Kapur


                               G.A. No. 1 of 2021
                              C.S. No. 135 of 2021

            RDB & COMPANY (HINDU UNDIVIDED FAMILY) & ORS.
                                        Vs
            ZEE ENTERTAINMENT ENTERPRISES LIMITED & ORS


For the petitioner                  : Mr. Ranjan Bachawat, Senior Advocate
                                      Mr. Debnath Ghosh, Advocate
                                      Mr. Arindam Guha, Advocate
                                      Mr. Subasish Sengupta, Advocate

For the respondent no.1             : Mr. S.N. Mookherjee, Senior Advocate

Mr. Shounak Mitra, Advocate Mr. Zulfiqar Ali al-Quaderi, Advocate Ms. Prerona Banerjee, Advocate

For the respondent nos.2, 3 & 4 : Mr. Krishnaraj Thaker, Advocate Mr. Z. Haque, Advocate Mr. A.K. Awasthi, Advocate

Reserved on : 07.08.2023

Judgment on : 11.08.2023

Ravi Krishan Kapur, J.:

1. This is a suit for infringement of copyright.

2. Briefly, the petitioners no 1 and 2 claim to be the owners of the

copyright in ten separate cinematographic films namely 'Nishijapon',

'Bibar', 'Tapasya', 'Achin Pakhi', 'Charulata', 'Mahanagar',

'Mahapurush', 'Joy Baba Felunath' and 'Nayak' (the films) which are

all immemorial Bengali films.

3. R.D. Bansal was a renowned film producer and had funded films

directed by Satyajit Ray. Six of the ten films which form the subject

matter of this suit were directed by Satyajit Ray and produced by R.D.

Bansal. The petitioner no.1 (HUF) is the producer and owner of the

copyright in the films. The petitioner no. 2 is also the legal heir of R.D.

Bansal and the Karta of the petitioner no. 1 (HUF). The petitioner no.2

is also the producer of the remaining four non Satyajit Ray Films.

4. By an agreement dated 4 July 2017, the petitioner no. 1 had granted

the petitioner no. 3 a license for telecasting the films for a period of

eight years through wire and wireless channels exclusively within the

territory of India only [excluding through Lok Sabha TV and the

national network of India (Doordarshan)]. Significantly, telecasting and

broadcasting of the films through the worldwide web was specifically

excluded and did not form the subject matter of the license

agreement.

5. Thereafter, by a non-exclusive license agreement dated 21 December

2017, the petitioner no. 3, sub-licensed exploitation rights in the films

to the respondent nos. 2 to 4. The agreement also restricted satellite

television broadcasting rights and digital rights (limiting the exercise

of the rights on the digital platform owned by the satellite channel)

only within the territory of India and did not include telecast through

"world wide web" or "internet rights".

6. In or about the last week of May 2021, the petitioners came to learn

that the licensed films were being broadcast through satellite

channels as well as the Over-The-Top (OTT) platform of the

respondent no.1 (Zee5), run, owned and controlled by the respondent

no.1 in Bangladesh. Thereafter, the petitioners also came to learn that

the respondent no. 2 had assigned their rights in the films to the

respondent no. 1. Diverse emails were exchanged between the parties,

whereby the petitioner no. 1 requested the respondents for a copy of

the assignment agreement executed by and between the respondent

no. 1 and the respondent no. 2. It is alleged that the broadcast of the

films on the digital platform outside the licensed jurisdiction

constitutes infringement and breach of the rights of the petitioners. It

is also contended that the respondent no. 2 could not have conveyed

rights which they never possessed nor had under the agreement dated

21 December 2017. In this connection, reliance is placed on

Pramatha Nath Talukdar v. Maharaja Probirendra M. Tagore, AIR 1966

Cal 405.

7. In this background, the license agreement dated 21 December 2017,

was terminated on the ground of inter alia violation of clause 7 the

respondent no.2 having sub-licensed the same without any prior

intimation to the plaintiff no.1 and that the respondent no. 1 had

unauthorisedly broadcast the films over the digital platform outside

the territory of India which is beyond the scope of the license

agreement.

8. On behalf of the respondent no.1, it is contended that the agreement

dated 21 December 2017, permitted the respondent no. 2 exclusive

satellite television broadcasting rights for telecasting the films in

India. It is also alleged that by an agreement dated 27 December

2017, the respondent no. 2 had assigned the aforesaid rights in the

films to the respondent no. 1. Thus, the respondent no. 1 was

broadcasting the films in terms of the assignment agreement dated 27

December 2017. The respondent no.1 also alleges that the petitioners

were aware of the terms of the assignment agreement dated 27

December 2017.

9. The respondent nos. 2 to 4 disputes the ownership of the petitioner

nos. 1 and 2 in the copyright in the films. The respondent nos. 2 to 4

contend that the agreement dated 21 December 2017 was not

terminated and there could have been no deemed revocation since the

agreement did not stipulate any specified act on basis of which the

license could be revoked. Moreover, clause 9 of the agreement

contemplates non-payment of consideration as the only ground for

automatic termination. The respondent nos. 2 to 4 also contend that

broadcast by the respondent no. 1 in Bangladesh was not in breach of

the agreement and the agreement was only rendered voidable. In such

circumstances, there is no case of fundamental or repudiatory breach

and the petitioners are not entitled to any reliefs.

10. The relevant provisions of the Copyright Act, 1957 are set out

hereinbelow:

"2(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 any literary, dramatic, musical or artistic work which is computer-generated, the person who causes the work to be created;

14. Meaning of copyright.-- For the purposes of this Act, copyright means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely

(d):in the case of a cinematograph film,--

[(i) to make a copy of the film, including--

(A) a photograph of any image forming part thereof; or (B) storing of it in any medium by electronic or other means; [(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the film;

(iii) to communicate the film to the public;

17. First owner of copyright Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein:

Provided that--

(c): in the case of a work made in the course of the author's employment under a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;"

19. Mode of assignment.-

(2) The assignment of copyright in any work shall identify such work, and shall specify the rights assigned and the duration and territorial extent of such assignment.

(6) If the territorial extent of assignment of the rights is not speficied, it shall be presumed to extend within India.

55. Civil remedies for infringement of copyright.- (2) Where, in the case of a literary, dramatic, musical or artistic work, [or, subject to the provisions of sub-section (3) of section 13, a cinematograph film or sound recording, a name purporting to be that of the author, or the publisher, as the case may be, of that work, appears] on copies of the work published, or, in the case of an artistic work, appeared on the work, appeared on the work when it was made, the person whose name so appears or appeared shall, in any proceeding in respect of infringement of copyright in such work, be presumed, unless the contrary is proved, to be the author or the publisher of the work, as the case may be.

11. Under section 2(d)(v) of the Copyright Act 1957, the author of a

cinematograph film means the producer. Prima facie, the petitioners'

authorship in respect of the films is evidenced from the Censor Board

Certificates. The petitioner no. 2 is also the named producer in the

remaining films. The petitioner no. 1 also has the authorship rights in

the remaining films in terms of section 17(c) of the Act and is deemed

to be the first owner of copyright in such films. In any event, under

section 14(d) of the Act, the petitioner nos. 1 and 2 have the

authorship of all the rights subsisting in the films including, inter alia,

the right to sell or give on hire or offer for sale, any copy of the film, or

to communicate the film to the public. Under section 55(2) of the Act,

civil remedies against infringement of copyright have been provided to

authors and publishers of cinematographic films and sound

recordings whose names have been published on the work or have

appeared on the work when the same was made. In terms of the

section, the petitioners having their names published on the Censor

Board Certificates have absolute rights to seek civil remedies against

the respondents. Accordingly, at this prima facie stage there is no

merit in the contention that the petitioner nos. 1 and 2 are not the

owners of the copyright in the films. In any event, any right in respect

of the films which the respondents seek to exercise can only be traced

through the petitioners and the respondents are estopped from

contending otherwise.

12. Salient clauses of the license agreement dated 21 December, 2017 are

as follows:

"And whereas the License is engaged in the business of sourcing/supplying television programs & cinematographic films and interested to acquire the telecasting rights to telecast the said films in Bengali language only, through the media of Television and Satellite channels excluding the National Network of India [Doordarshan Channels] for the territory of India only for a period of six years & six months (6.5 years) only effective on & from the dates mentioned in Schedule A mentioned hereinabove,

hereinafter referred to as the 'Said Rights', the 'Said Territory' and 'Said Period'."

"4.That it is clearly understood that the said rights do not include telecast/broadcast via the world-wide web and/or 'internet rights' as known in the trade, for any part of the world and in any manner whatsoever, and the same are retained and exclusively held by the Licensor."

"9.That any breach of any of the covenants of this Agreement by the Licensee at any point of time shall render this Agreement null & void forthwith, and the Licensee shall not have any claim whatsoever against the Licensor."

13. Section 19 of the Act stipulates inter alia that an assignment

agreement should specify the rights assigned and also the territorial

extent of such assignment. Both the agreements dated 4 July, 2017

and 21 December, 2017 respectively specify the territorial jurisdiction

to be India. Under the agreement dated 21 December 2021, the

respondent nos. 2 to 4 have been given the rights to exploit the films

exclusively in the territory of India only in terms of the agreement.

Thus, the respondent nos. 2 to 4 could not have transferred any right

to respondent no. 1 which was not provided for in the agreements

dated 4 July, 2017 and 21 December, 2017. The respondent no.1

could not have been assigned rights in respect of "the entire world and

overseas territories" as stipulated in Schedule I of the agreement dated

27 December, 2017. Any broadcast outside the territory of India is

impermissible. In such circumstances, the respondent no.1 has

unauthorizedly broadcast the films through their digital platform in

Bangladesh.

14. Internet rights in the trade of broadcasting generally include an

information system where the contents identified by uniform resource

locators (URLs) are available on the search engine and can be viewed

or downloaded. Such rights were expressly withheld by the petitioner

no.1. No internet rights including telecast or broadcast via world-wide

web had been licensed by the petitioners. Clause 4 in both the

agreements dated 4 July, 2017 and 21 December, 2017 respectively

restrains broadcast on the world-wide web and on other internet

platforms. Accordingly, no corresponding right could have been

assigned in favour of the respondent no.1.

15. Clause 7 of the agreement of 21 December 2017 obliges the

respondent no. 2 to intimate to the petitioners prior to assignment of

the rights granted thereunder. From the e-mails dated 19 April 2018,

9 May 2018 and 30 October, 2018, exchanged between Kamal Bansal

on behalf of petitioner no. 2 and respondent nos. 2 and 4 it is prima

facie evident that the petitioners were aware of the sublicensing of the

rights by respondent no.2 to respondent no. 1 and that the petitioner

no. 2 had made restoration of the films to make them available to the

respondents. However, the details of the agreement dated 27

December 2017 were only made known to the petitioners after the

filing of the suit. In such circumstances, in permitting streaming

through the digital platform of the respondent no.1 outside the

territory of India, there has been breach of the agreement dated 21

December, 2017. This fact has been categorically mentioned in the

termination letter dated 1 June, 2021.

16. Prima facie, the respondent no. 2 has been unable to demonstrate that

they were authorised to assign the entirety of the rights in any of the

films alongwith the underlying works embodied therein under the

agreement dated 21 December, 2017. The contention of the

respondent no.1 being a bona fide assignee is also unsubstantiated. A

transfer by a person without title cannot give title to the transferee.

The respondent no. 2 could not have conveyed better title or rights

which they possessed under the agreement dated 21 December, 2017

(Pramatha Nath Talukdar v. Maharaja Probirendra M. Tagore, AIR 1966

Cal 405 at para 8). For the aforesaid reasons, there has been a breach

of the agreement dated 21 December 2017 and the same stands

lawfully terminated in terms of clause 9 thereof.

17. In view of the aforesaid, the petitioners have been able to make out a

strong prima facie case on merits. The balance of convenience and

irreparable injury is also in favour of orders being passed as prayed

for herein.

18. Accordingly, there shall be an order of injunction in terms of prayers

(a) and (e) of the Notice of Motion. With the aforesaid directions, G.A.

No. 1 of 2021 stands disposed of. There shall be no order as to costs.

(Ravi Krishan Kapur, J.)