IN THE HIGH COURT OF DELHI

IA No. 5575/2005 in CS(OS) No. 1010/2005

Da te of decision: September 20, 2007

M/s Jorden Electronics & Another ... Plaintiff through Mr. K. Singhal, Advocate

VERSUS

Bombino Video (P) Ltd. .... Defendants through Mr. Ravi Kumar Aggarwal, Advocate

CORAM: HON'BLE MS. JUSTICE GITA MITTAL.

1. Whether reporters of local papers may be allowed to see the Judgment? Yes 2. To be referred to the Reporter or not? Yes 3. Whether the judgment should be reported in the Digest? Yes

GITA MITTAL, J.

1. This application under Order 39 Rules 1 & 2 Code of Civil

Procedure has been filed by the plaintiff in its suit for mandatory and permanent injunction, declaration, rendition of accounts, damages and delivery of infringing material urging infringement of the plaintiff's copyrights in respect of 23 Hindi films. The plaintiff has asserted exclusive rights based on purported assignments of copyright in favour of the plaintiff by producers and alleged copyright holders therein.

2. The claim of the plaintiff is vehemently disputed by the defendant who has taken a strong objection even to the

1 maintainability of the lis, as the suit has been filed without joining the producers of the films. The defendant has also set up a claim of having exclusive copyright in five of the films relying on agreements in its favour.

3. I have heard learned counsel for the parties at great length and considered the material on record. In order to adjudicate on the respective contentions and the merits of the present application, it would be useful to consider the respective claims and contentions based on the rights claimed in the individual films.

4. The suit has been filed claiming copyright in respect of the 23

Hindi films which are titled as follows :-

(i) Arth, (ii) Jeete Hai Shaan Se, (iii) Mirch Masala, (iv)

Sharara, (v) Kalakaar, (vi) Raani Aur Maharani, (vii) Basanti Tanke

Wali, (viii) Ramwati, (ix) Phoolan Haseena Ramkali, (x) Ganga

Jamna Ki Lalkar, (xi) , (xii) , (xiii) Baaton

Baaton Main, (xiv) , (xv) Zevar, (xvi) ,

(xvii) Pasand Apni Apni, (xviii) Bhabhi, (xix) Ghar Ghar Ki Kahani,

(xx) Pyar Mohabbat, (xxi) Ek Haseena Thi, (xxii) Betaj Badshah,

(xxiii) Zid

By way of the present application the plaintiff has sought an interim injunction prohibiting the defendant from manufacturing, selling, circulating, distributing or giving on hire etc any video cassettes, VCD's, DVD's, LCD's in relation to any and/or all of these

2 films; an order to deliver the entire infringing material in relation to any and/or all of the 23 films, and to submit a detailed account of profits illegally earned by the defendants on sale of the infringing material and in respect of the total value of the video cassettes,

VCD's, DVD's, LCD's sold, circulated, distributed or given on hire etc in relation to any and/or all of the twenty three films.

5. This application had come up for hearing on 3rd of August,

2005. By an exparte order passed on that date, the court had restrained from manufacturing, selling, supplying the copies of these twenty three films. The order has continued to operate till date except the variation with regard to one film.

6. I find that the defendant is claiming subsisting and exclusive video rights in respect of only five films which are titled Arth, Jeete

Hain Shaan Se, Sharara, Kalakaar and Ek Haseena Thi. The defendant is not claiming any rights in respect of the remaining eighteen films. It has also been stated that the defendant has not conducted any business in respect of these eighteen films.

Consequently so far as the remaining eighteen films are concerned, the plaintiff has no cause of action against the defendant and the application and suit in respect thereof. With regard to the five films in which the defendant is claiming rights, Mr. Ravi Aggarwal, learned counsel for the defendant has urged that the plaintiff has no rights therein and for this reason the application merits dismissal.

3 7. For reasons of convenience, the respective claims of the parties are considered film wise hereafter :

Title of Film : Arth 8. The defendant has relied on an agreement dated 1st January,

2000 which is also executed by M/s Anu Arts as the exclusive right holder of the cinematographic film Arth and assigns exclusive rights in the film in favour of the defendant for a period up to 31st

December , 2007. The agreement in favour of the defendant is signed by the producer Kuljit Pal who has been reflected as also the proprietors/partners of M/s Anu Arts in the agreement and the schedule annexed thereto.

9. On the other hand the agreement dated 16th September, 2004 relied upon by the plaintiff has not been signed by Mr. Kuljit Pal nor does the agreement indicate the particulars or the authority of the person who has signed the agreement in favour of the plaintiff.

Undoubtedly, the defendant had the prior agreement in respect of the film Arth with its producer. There is nothing to evidence the particulars of the producer of this film from the agreement dated 16th

September, 2004. The plaintiff has relied on this agreement which has been purportedly executed in its favour by M/s Anu Arts whereby it has assigned all rights in this film in favour of the plaintiff for a period of three years which expires on 30th September, 2007.

10. Perusal of the agreement relied upon by the plaintiff shows that

4 this agreement mentions the assignment of rights on 1st January,

2000 in favour of the defendant and adverts to a termination thereof by the assignor on the ground that the defendant had made false representation. The assertion in this behalf is vague and is not supported by even a date of termination being mentioned let alone any communication of such termination to the defendant. Inasmuch as the defendant has repudiated any termination of the agreement with it, prima facie, it is not possible to hold that the agreement dated

1st January, 2000 was ever terminated. There is also substance in the defendant's contentions that so far as the agreement dated 1st

January, 2000 relied upon by the plaintiff is concerned, there is nothing to support the contention that the same has been executed by or on behalf of the producer of the film, who was the only person who would have the right to assign copyright.

11. The plaintiff has placed before this court copies of letters dated

2nd April, 2003, 23rd September, 2003 and 1st September, 2004 purportedly addressed by M/s Anu Arts to the defendant. By the communication dated 2nd April, 2003, Mr. Kuljit Pal for Anu Arts has purportedly terminated the agreement dated 3rd August, 2003 and 1st January, 2000 in respect of the film Arth which were assigned to the defendant. The other two communications were in furtherance of this termination. The defendant has disputed any such termination and these letters which were filed during the course of

5 arguments.

12. Be that as it may, the plaintiff has not been able to support that the agreement dated 16th September, 2004 was executed and the rights assigned in its favour by any authorised person on behalf of the producer. It is well settled that in order to be entitled to an injunction, the plaintiff has to establish a prima facie legal right to the same. In the absence of primafacie establishing that the agreement dated 16th September, 2004 in its favour had been executed by any person on behalf of the producer, the plaintiff would not be entitled to any injunction against the defendant even if the agreement in favour of the defendant stood cancelled.

13. The defendant has relied on a criminal complaint dated 25th

April, 2005 lodged by it with the senior inspector of police of the police station Santa Cruz. In this complaint, the defendant has stated that "there is ample apprehension that Mr. Kuljit Pal might have assigned the rights of the film Arth in favour of M/s Jorden

Electronics on the basis of the cancellation letter dated 20th

December, 1999 by concealing and hiding the next agreement dated

1st January, 2000 which needs the thorough investigation." The plaintiff has asserted that in this complaint, the defendant admits the termination of the agreement in favour of the plaintiff by the producer. In my view, this submission is incorrect. On the other hand, this complaint only lends credence to the defendant's

6 contention that the agreement dated 1st January, 2000 with it was not terminated. This complaint corroborates the defendant's contention that no termination letter in respect of the agreement dated 1st January, 2000 was issued to it. Further more as noticed above, there is nothing to indicate that the agreement dated 16th

September, 2004 relied upon by the plaintiff has been executed by or on behalf of the producer Mr. Kuljit Pal which could create any rights in the film in favour of the plaintiff.

14. Title of film : Jeete Hai Shaan Se From the documents placed by the parties before this court, it would appear that Mr. P. Subba Rao, proprietor of M/s PSR Pictures was the producer of the film Jeete Hai Shaan Se and hence the copyright holder. M/s PSR Pictures entered into a deed of assignment of World Negative Rights dated 18th May, 2000 whereby it assigned all rights in the film to M/s Hansa Pictures Pvt. Ltd. with effect from 30th July, 2016 in respect of India Video and Cable TV.

So far as DVDs, LCDs and Overseas Video rights were concerned, the assignment would take effect from 15th December, 2019. This assignment in favour of M/s Hansa Pictures was supported by a letter dated 28th June, 2000 from Mr. P. Subba Rao as proprietor of M/s

PSR Pictures to the Prasad Film Laboratories notifying them about the said assignment and requesting them to transfer the negatives

(picture and sound) in favour of M/s Hansa Pictures Pvt. Ltd. The

7 Prasad Film Laboratories confirmed transfer of the World Negative

Rights and distribution, exhibition and exploitation rights in the film for a perpetual period in favour of M/s Hansa Pictures Pvt. Ltd. Mr.

P. Subba Rao has also executed a declaration dated 7th July, 1995 declaring that he is the producer of the film.

15. The defendant has urged exclusive propriety copyrights in this film by virtue of an agreement dated 12th September, 1990 executed between the defendant and M/s PSR Pictures which has been duly signed by Mr. P. Subba Rao and the defendant. By this agreement

Mr. P. Subba Rao assigned rights in the film in favour of the defendant for a period of 21 years which would lapse around 11th

September, 2011.

16. Clause 7 of this agreement dated 12th September, 1990 shows that the assignor M/s PSR Pictures agreed to deliver the first print or issue an irrevocable letter to the laboratory for delivery of print and trailer for video recording purpose at least 7 days before the release of the film. The submission is that thereby all rights in the film vested in the defendant.

17. On the other hand the plaintiff has relied on an agreement dated 25th January, 2001 purportedly executed in its favour by Shri

Bhagyalakshmi Movies represented by Mr. P. Subba Rao whereby rights in the film were assigned to the plaintiff for a period of 21 years which would end on or about the 24th January, 2003.

8 18. There is prima facie substance in the defendant's contention that on 25th January, 2001, the producer had no subsisting or assignable rights in the film Jeete Hai Shaan Se inasmuch as the rights therein had been assigned earlier to the plaintiff. Furthermore,

Shri Bhagyalakshmi Movies has no concern whatsoever with the production of the film. The agreement dated 25th January, 2001 is not by or on behalf of the owner of the copyright in the said film on the date the same has been executed. The defendant's prior agreement subsists and binds the parties. There was no cancellation of this agreement.

19. I find that there is also nothing on record to support the plaintiff's plea that the film has been produced by Smt. P. Bhagyan.

In the light of the foregoing discussion, in my view the plaintiff has failed to make out a prima facie case of rights in the film and is consequently disentitled to an interim injunction so far as this film is concerned.

20. Title of Film : Sharara

This film has been produced by one Shri R.J. Chakravarti who is also the sole proprietor of M/s Angel Films. The producer of the film leased rights in this film in favour of M/s B & B Video by an agreement dated 12th December, 1984. By virtue of clause 7 of the agreement dated 12th December, 1984, M/s B & B Video were entitled to sell, lease or let on hire from assigned rights in the film

9 Sharara. The defendant has relied upon an agreement dated 30th

September, 1986 executed between M/s B & B Video and the defendant who is also running on its business under the name and style of M/s Ruby Films whereby it acquired exclusive video copyright in this film.

21. The plaintiff has relied on a subsequent agreement dated 10th

September, 2003 executed in its favour by M/s Raj Enterprises who have claimed a sole and exclusive video rights in the film and have been described as "the legal assignors of the film." This agreement bears a stamp of 'Rajpal HUF as the assignor'. However, there is nothing in the agreement or any other document to establish the manner in which M/s Raj Enterprises or Rajpal HUF acquired any rights in this film from the producer. The agreement also does not indicate that M/s Raj Enterprises or Rajpal HUF acquired any legal rights in this film. In this view of the matter, in my view, the plaintiff has failed to establish acquisition of legal rights in this film from the producer or from any person who was assigned rights therein from a copyright holder.

22. Prima facie, the agreement with the defendant dated 30th

September, 1986 is prior to the agreement relied upon by the plaintiff. There has been no cancellation of the assignment of rights in favour of the defendant by any person competent to do so. In this view of the matter, prima facie, the plaintiff has failed to establish the

10 prima facie case so far as this film is concerned.

23. Title of Film : Kalakaar So far as this film is concerned, again the defendant has relied on an agreement dated 12th September, 1993 executed by M/s Anand

Laxmi Art Movies in its favour. M/s Anand Laxmi Art Movies has described itself as the producer/rights holder of the cinematograph film Kalakaar and another film. The agreement dated 12th

September, 1993 has also been signed by Mr. P. Subba Rao on behalf of M/s Anand Laxmi Art Movies.

The defendant has also relied upon a declaration dated 31st

March, 1995 executed by Mr. P. Subba Rao, a partner of M/s Anand

Laxmi Art Movies declaring that the producer is the sole and exclusive owner of all rights in the film which have been assigned and transferred only to the defendant and to no other person.

24. On the other hand, the plaintiff has relied on an agreement dated 27th January, 2003 executed in its favour by M/s Vaigai Cine

Arts. Perusal of the agreement dated 27th January, 2003 shows that

M/s Vaigai Cine Arts has asserted herein that it has been assigned

World Negative Rights in the film Kalakaar by the producer Anand

Laxmi Art Movies, Chennai by an agreement dated 14th November,

1995.

25. This assertion in the agreement has to be tested against the defendant's agreement dated 12th September, 2003 which has been

11 executed directly by M/s Anand Laxmi Art Movies in favour of the defendant assigning rights in the film in favour of the defendant.

There is nothing on record which could evidence that this agreement was terminated or lapsed in any manner whatsoever. Therefore, as on 14th November, 1995 when M/s Vaigai Cine Arts has claimed assignment of rights in the film, the assignor had no assignable rights therein, inasmuch as there was a prior agreement dated 12th

September, 1993 in favour of the defendant which was valid, binding and subsisting on this date. Furthermore, no assignment of rights has been placed in favour of M/s Vaigai on record and for this reason as well prima facie the plaintiff has not been able to make out a case that it has any legal rights which are required to be protected.

26. Title of Film : Ek Hasina Thi

The plaintiff had submitted that the agreement which was claimed by it in respect of the film 'Ek Haseena Thi' had expired by efflux of time and consequently the plaintiff is not claiming any rights thereof. Accordingly, by order dated 20th March, 2007, the interim order of 3rd August was modified to the extent that the same shall not bind the defendant as far as this film is concerned. Consequently no relief can be granted to the plaintiff so far as this film is concerned.

27. The defendant has repeatedly pointed out the failure of the plaintiff to comply with the mandate of Section 61 of the Copyright

Act, 1957 which requires that in every civil suit or other proceedings

12 regarding infringement of copyright instituted by an exclusive licensee, the owner of the copyright would have the right to dispute the claim of the exclusive licensee. The plaintiff has failed to take any steps for impleading the producers and the owners of the copyright as parties to the present suit and would therefore be not entitled to injunction for this reason as well.

28. The defendants have placed reliance on the pronouncement reported on AIR 1997 Calcutta 63 Gramophone Company of India

Limited v. Shanti Films Corporation & Ors. in support of its several contentions. This judgment also reiterates the principles which would guide the court while considering grant of injunction in respect of a contract entered into between parties whereby copyright was assigned in favour of one or the other party.

29. In the light of the foregoing discussion, in my view, the plaintiff has failed to make out a prima facie case for grant of interim protection so far as films Arth, Jeete Hai Shaan Se, Sharara, Kalakaar and Ek Hasina Thi are concerned, consequently requires to be rejected. The same therefore is hereby dismissed. So far as the remaining films are concerned, the defendant is not claiming any rights therein and therefore the apprehension of the plaintiff in respect thereof is misconceived.

This application is dismissed with costs which are quantified at

Rs.15,000/-

13 The order dated 3rd August, 2005 granting an injunction against the defendant from manufacturing, selling, supplying the copies of 23 films mentioned in para 37 of the present application cannot be maintained and is hereby vacated.

GITA MITTAL JUDGE September 20, 2007 kr

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