Madras High Court
Galatta Media Private Limited vs Nian Media Private Limited on 19 October, 2024
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2024:MHC:3597
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Order reserved on 30.09.2024
Order pronounced on 19.10.2024
The Hon'ble Mr. Justice SENTHILKUMAR RAMAMOORTHY
CORAM:
O.A.No.451 of 2024 & A.No.3665 of 2024
in
C.S.(Comm. Div) No.115 of 2024
O.A.No. 451 of 2024
Galatta Media Private Limited,
having its registered office at
7th Floor, Sigma Wing, Raheja Towers,
177, Anna Salai, Chennai, Tamil Nadu, India-600 002
Represented by its authorized representative
Mr.Vasanth Pyarilal R ... Applicant /Plaintiff
vs.
Nian Media Private Limited
having its registered office at
No.118-E, Building-B, Velachery Main Road,
Guindy, Chennai-600 032. ... Respondent/Defendant
A.No.3665 of 2024
Nian Media Private Limited
having its registered office at
No.118-E, Building-B, Velachery Main Road,
Guindy, Chennai-600 032. ... Applicant/Defendant
1/19
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
vs.
Galatta Media Private Limited,
having its registered office at
7th Floor, Sigma Wing, Raheja Towers,
177, Anna Salai, Chennai, Tamil nadu, India-600 002
Represented by its authorized representative ... Respondent/Plaintiff
Prayer in O.A.No.451of 2024 in C.S.(Comm Div) No.115 of 2024: This
original application has been filed under Order XIV Rule 8 of Original Side
Rules, 1994 r/w. Order XXXIX Rule 1 & 2 of the Code of Civil Procedure
seeking to grant an order of INTERIM INJUNCTION restraining the
Respondent/Defendant by themselves or their directors, proprietors,
subsidiaries, affiliates, franchisees, officers, men, partners, servants, agents,
successors in interest, licensees, assignees, representatives or under any
them, from in any manner, directly or indirectly infringing the Applicant's
Copyrights detailed in plaint Schedule A, pending disposal of the suit.
Prayer in A.No.3665 of 2024 in C.S.(Comm. Div) No.115 of 2024: This
application has been filed under Order XIV Rule 8 of Original Side Rules,
High Court Madras r/w. Order XXXIX Rule 4 of Civil Procedure Code
seeking to vacate the order dated 08.07.2024 passed in O.A.No.451 of 2024
in C.S.(Comm. Div.) No.115 of 2024.
In O.A.No.451 of 2024:
For Applicant/Plaintiff : M/s.M.S.Bharath &
Mr.Navod Prasannan
2/19
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
For Respondent/Defendant : Mr.S.R.Raghunathan for
M/s.P.S.Deepika
In A.No.3665 of 2024
For Applicant/Defendant : Mr.S.R.Raghunathan for
M/s.P.S.Deepika
For Respondent/Plaintiff : M/s.M.S.Bharath &
Mr.Navod Prasannan
COMMON ORDER
In a suit seeking relief in respect of alleged infringement of plaintiff's
copyright in the photographs and videographs described in Schedule A of
the plaint by displaying / exhibiting the same through the links specified in
Schedule B thereof, the plaintiff presented O.A.No.451 of 2024 seeking
interim relief to restrain such alleged infringment. By order dated
08.07.2024, an ad-interim injunction was granted until 23.07.2024. Such
order was extended from time to time and remains in force as on date. By
A.No.3665 of 2024, the defendant seeks to vacate the above mentioned
interim order. Both these applications are disposed of by this common order.
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
2. Oral arguments were advanced first by learned counsel for the
defendant, Mr.S.R.Raghunathan. His first contention was that the plaintiff
has failed to establish ownership of copyright in the works detailed in
Schedule A to the plaint. By way of substantiation, learned counsel
submitted that the plaintiff asserts that copyright in some of the works
detailed in Schedule A were earlier vested in Mrs. Aruna Radhakrishnan,
Proprietrix, Ritz Magazine, and that Ritz magazine was later operated and
run by Abaddon Media Private Limited (Abaddon). After pointing out that
Abaddon was incorporated only in the year 2018, learned counsel
contended that the assignment deed for the alleged assignment of copyright
by Mrs. Aruna Radhakrishnan to Abaddon is not available. Similarly, he
submitted that the plaintiff asserts that some of the works detailed in
Schedule A were created by or for the South Scope magazine. While the
plaintiff claims that South Scope was acquired by Black Buck Entertainment
Private Limited (Black Buck), proof of acquisition of South Scope by Black
Buck and proof of assignment of copyright by South Scope to Black Buck is
not on record.
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
3. The next contention of learned counsel was that the display or
exhibition of allegedly infringing material was incidental and transient in
the cinematographic films of the defendant. Learned counsel contended that
Section 16 of the Copyright Act, 1957 (the Copyright Act) delineates the
total scope of protection of a copyright holder. He further contended that
exceptions have been carved out in Section 52 of the said enactment. By
relying on sub-clause [iii] of clause (a) of sub-section (1) of Section 52,
learned counsel contended that the use of photographs while reporting
current events or current affairs relating to a personality/celebrity, whose
photograph was displayed / exhibited in order to identify the subject of such
cinematographic film, falls within the exception carved out in the above
mentioned provision. By also relying on sub-clause [ii] of clause (u) of sub-
section (1) of Section 52, learned counsel submitted that the inclusion of
photographs by way of background or incidentally in the context of the
principal subject of the film does not constitute infringement of copyright. In
this connection, he contended that the photographs were exhibited fleetingly,
i.e. for a few seconds.
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
4. In support of these contentions, learned counsel referred to and
relied upon the following judgments:
(i) Kelly v. Arriba Soft Corporation, United States Court of Appeals,
9th circuit, judgment dated 06.02.2002 (Kelly), for the proposition that the
use of images over which copyright is owned by another person as
thumbnails qualifies as fair use when such photographs are meant to be
viewed by the public for information purposes.
(ii) Suneet Varma Design Pvt. Ltd. and another v. Jas Kirat Singh
Narula and another, 2006 SCC Online Delhi 1889 (Suneet Varma),
particularly paragraph 18 thereof, for the proposition that the use of
copyrighted material by way of background or incidental material for the
principal subject matter would fall within the scope of Section 52(1)(u)(ii) of
the Copyright Act.
(iii) Fraser-Woodward Limited v. British Broadcasting Corporation
Brighter Pictures Limited, [2005] EWHC 472(Ch) (Fraser-Woodward),
particularly paragraphs 79 to 86 thereof, with regard to incidental use of
photographs.
(iv) Power Control Appliances and others v. Sumeet Machines Pvt.
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
Ltd. (1994) 2 SCC 448 with regard to acquiescence as a defence in respect
of the alleged infringement of intellectual property rights.
5. Mr.M.S.Bharath, learned counsel, made submissions in response
and to the contrary. His first submission was that the Ritz magazine was
launched in the year 2004-05 as a proprietory concern of Mrs. Aruna
Radhakrishnan. Subsequently, Mrs.Aruna Radhakrishnan and
Mr.Muthukrishnan Sivaramakrishnan incorporated Abaddon. Pursuant
thereto, the Ritz magazine was transferred to and operated by Abaddon. He
also submitted that Abaddon also operates the website www.ritzmagazine.in,
and that videos are hosted in the above mentioned website by Abaddon
under the title 'Ritz TV'.
6. Similarly, he submitted that the South Scope magazine was intially
started by Mrs. Aruna Radhakrishnan, who was the Managing Editor
thereof. After the incorporation of Black Buck in 2012, South Scope was
acquired by Black Buck. Later, the intellectual property of all these entitites
was consolidated in the plaintiff pursuant to assignments. As a result, he
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
submitted that the plaintiff is the current owner of the copyright in all the
works detailed in Schedule A.
7. The next contention of Mr.Bharath was that the display of
infringing photographs by the defendant was not incidental to the
cinematographic films. By way of substantiation, he contended that these
photographs are used, in most cases, for the entire duration of the film. By
referring to paragraph 5 of the counter affidavit, he submitted that the
defendant has admittedly put the photographs to commercial use.
Consequently, he contended that the fair use exception in Section 52 of the
Copyright Act is not applicable. In this connection, he distinguished the
judgments relied upon by learned counsel for the defendant. As regards
Fraser-Woodward, he pointed out that the judgment dealt with a
programme critiquing tabloid news. Likewise, he pointed out that Kelly
pertained to a search engine and that the thumbnail photographs therein
could only be viewed properly if the viewer accessed the copyright owner's
website. In that context, he submitted that the use by Arriba was considered
as transformative/ fair use. As regards Suneet Varma, he pointed out that the
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
Court concluded that a trial is necessary to decide whether use is incidental
and, therefore, within the exception under Section 52(1)(u)(ii) of the
Copyright Act.
8. Learned counsel relied on the judgment of the Delhi High Court in
Super Cassettes Industries Ltd. v. Hamar Television Network Pvt. Ltd. and
Others, MANU/DE/1125/2010, with regard to the applicability of the
exceptions in Section 52 of the Copyright Act and, particularly, to
emphasise that the said exceptions are only intended to apply when
copyrighted material is used for criticism or review. By relying on the
judgment of the UK Court of Appeals in Associated Newspapers Group
PLC v. News Group Newspapers Limited and Others [1986] R.P.C. 515,
learned counsel submitted that it is necessary to consider the motive behind
the use of copyrighted material in order to determine whether such use is fair
use.
9. By way of rejoinder, Mr.Raghunathan reiterated that the flow of
title in respect of material over which the plaintiff claims copyright has not
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
been established. Since only a juristic entity with title can sue, he submitted
that the plaintiff has failed to place on record evidence with regard to the
acquisition of Ritz magazine by Abaddon as also the acquisition of South
Scope by Black Buck. After further submitting that fair use is not limited to
review or criticism, learned counsel contended that the plaintiff has failed to
establish that the balance of covenience is in its favour or that irreparable
hardship would be caused unless the interim injunction is extended.
Consequently, in conclusion, leraned counsel submitted that the interim
order is liable to be vacated.
10. The first question that falls for consideration, on the basis of rival
contentions, is whether the plaintiff has placed on record prima facie
evidence that it has title to the material detailed in Schedule A of the plaint.
In order to establish title, the plantiff has placed on record declarations dated
20.06.2024 and 26.06.2024 from Mr.M.Gurunath Prabhu and
Mr.Senthilkumar, respectively, declaring that specific photographs and
videos were shot by them on being commissioned to do so by Abaddon or
the plaintiff, as the case may be. Similarly, confirmatory email dated
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
26.06.2024 from Mr.Kunal Daswani and Mr.R.Sunder of
Sunderphotography have also been placed on record. In addition, the
plaintiff has filed the Copyright Assignment Deed dated 20.06.2024 from
Black Buck to the plaintiff and Copyright Assignment Deed dated
26.06.2024 from Abaddon to the plaintiff. When these documents are
examined, it appears prima facie that the plaintiff is the owner of the
copyright in the materials detailed and described in Schedule A of the
plaint. This leads to the question whether there is prima facie evidence that
the defendant committed infringement of the plaintiff's copyright in such
materials.
11. Both in the written statement and in the affidavit in support of
Application No.3665 of 2024, the defendant asserts that it created channels
such as BEHINDWOODS, BEHINDWOODS TV, BEHINDWOODS O2,
BEHINDWOODS AIR, BEHINDWOODS HITS and BEHINDWOODS
MAX. The defendant also states that these channels have a very large
subscriber base, which is as large as 1.64 crore subscribers as regards
BEHINDWOODS TV. Thus, the defendant asserts that it is one of the
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
biggest online media channels available on platforms like YouTube,
facebook and Instagram. The defendant also points out that the allegedly
infringing data is not currently available on any of these platforms.
12. The defendant further states that the plaintiff made 35 strikes
against the defendant's videos between 27.06.2024 and 28.06.2024 with the
ulterior motive of targetting the sponsor of the defendant's events
"Behindwoods Gold Icon 2024".
13. From the narration in the written statement and counter affidavit,
it appears prima facie that the defendant does not deny the use of material
detailed in Schedule A of the plaint. Instead, the contention of the defendant
is that the defendant's use of such material falls within the exceptions
provided in Section 52 of the Copyright Act and that the plaintiff has
acquiesced in such use. The defendant further asserts that the balance of
convenience is in favour of the defendant and that the plaintiff has failed to
establish irreparable hardship.
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
14. The Copyright Act stipulates that certain acts would not constitute
an infringement of copyright. Such acts are set out in Section 52 of the
Copyright Act. The defendant relied upon Section 52(1)(a)(iii) and Section
52(1)(u)(ii). The said provisions are set out below:
"(1) The following acts shall not constitute an
infringement of copyright, namely,--
[(a) a fair dealing with any work, not being a
computer programme, for the purposes of--
(iii) the reporting of current events and current
affairs, including the reporting of a lecture
delivered in public;
Explanation.-- The storing of any work in any
electronic medium for the purposes mentioned in
this clause, including the incidental storage of any
computer programme which is not itself an
infringing copy for the said purposes, shall not
constitute infringement of copyright.]
(u) the inclusion in a cinematograph film of--
(ii) any other artistic work, if such inclusion is
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
only by way of background or is otherwise
incidental to the principal matters represented in
the film;
15. The question to be determined is whether the use of the material
detailed in Schedule A of the plaint by the defendant falls prima facie within
either of the two exceptions referred to above. The exception in Section
52(1)(a)(iii) is for the fair use of a work inter alia for reporting of current
events and current affairs. By way of illustration, although the copyright for
broadcast of a cricket match may be vested in a particular television channel,
a news reporter who reports on such cricket match would be protected under
this provision. Similar protection would be extended to a news report in
respect of an award ceremony for cinema although the copyright for
broadcasting such award ceremony may be vested in a particular entity.
16. In the case at hand, the defendant admits that it has created online
channels which are hosted on online platforms like YouTube, facebook and
Instagram. It also admits that it is a competitor of the plaintiff and that it has
a very large viewership. Prima facie, the material on record does not
indicate that the material was used to report on current news or current
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
affairs but rather was used for discussing the career of personalities
concerned. Therefore, the defendant's use of copyrighted material does not
prima facie fall within the fair use exception under Section 52(1)(a)(iii) of
the Copyright Act.
17. Sub-clause (ii) of clause (u) of sub-section (1) of the Copyright
Act carves out an exception in respect of the inclusion in cinematographic
films of any other artistic work, if such inclusion is only by way of
background or is otherwise incidental to the principal matters represented in
the film. In order to fall within this exception, it becomes necessary for the
person raising the defence to establish that the inclusion is by way of
background or is otherwise incidental. While learned counsel for the plaintiff
contended that the photographs were exhibited fleetingly, this contention is
denied by learned counsel for the plaintiff, who contends that, in most
cases, the photographs are displayed for the entire duration of the film. If the
subject of the film is a particular celebrity and copyrighted photographs of
such celebrity are used in the film, the use may not be incidental. On the
contrary, if the subject of the film is wildlife protection and a photograph of
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
a celebrity in a forest is shown, the use of the photograph may qualify as
incidental. Thus, it becomes necessary to examine evidence carefully in
order to decide whether the use of copyrighted material is incidental or by
way of background. In view of the conflicting positions taken by the
contesting parties, such determination cannot be made at this juncture. The
ratio of the decisions in Suneet Varma and Fraser Woodward also indicate
that such determination can only be made after examining the evidence
adduced by the adversaries in this regard. Hence, it follows that the
exception cannot be pressed into service at this juncture.
18. The next aspect to be considered is whether the balance of
convenience is in favour of the defendant on account of the channels being
operational for a considerable period of time and, more importantly, on
account of the relevant videos having been uploaded much earlier. Both in
the written statement and in the affidavit in support of Application No.3665
of 2024, the defendant has provided the dates on which the relevant videos
were uploaded. The defendant has also set out details of the number of
subscribers of the different channels of the defendant. The data placed on
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
record by the defendant indicates prima facie that the defendant's viewership
is substantial. The plaintiff asserts that it became aware of the infringing use
by the defendant in or about June 2024 and that it immediately initiated
strikes through facebook and other platforms. Therefore, it appears prima
facie that there is no acquiescence.
19. As discussed earlier, the defendant asserts that the use of the
photographs is by way of background or is otherwise incidental. If the
defendant were to be taken at its word, the deletion of the infringing material
from the videos / cinematographic films should not detract from the object,
purpose and value, including commercial value, of such videos. In effect, the
balance of convenience is in favour of deletion of the infringing material
since continued infringement until final disposal would cause irreparable
hardship especially in view of the wide viewership claimed by the
defendant. On the other hand, subject to removing the prima facie infringing
material, the defendant would still be in a position to exhibit the videos.
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
20. For reasons aforesaid, O.A.No.451 of 2024 is allowed by making
the order of interim injunction absolute. As a corollary, A.No.3665 of 2024
is dismissed without any order as to costs.
19.10.2024
Index : Yes/No
Internet : Yes/No
Neutral Citation: Yes/No
kal
SENTHILKUMAR RAMAMOORTHY J.
kal
https://www.mhc.tn.gov.in/judis
O.A.No.451 of 2024 & A.No.3665 of 2024 in
C.S.(Comm. Div) No.115 of 2024
Pre-delivery order made in
O.A.No.451 of 2024 & A.No.3665 of 2024
in
C.S.(Comm. Div) No.115 of 2024
19.10.2024
https://www.mhc.tn.gov.in/judis
