'Copyright Owners Have Right To Dub Cinema' : Delhi High Court Vacates Stay On Hindi Dub Of Telugu Movie "Bheemla Nayak"

The Delhi High Court recently vacated its earlier ex-parte injunction order against M/s Sithara Entertainment which barred it from releasing the Hindi-dubbed version of its Telugu remake of the Malayalam film "Ayyappanum Koshiyum". A single judge bench of Justice Jyoti Singh, while vacating the earlier order, held that the owners of copyright in a cinematographic work will have the right to both sub-title and dub their work.

"...by the operation of law, Defendant No. 1 in its own right as a copyright owner has a right to dub the Telugu film in any language including Hindi and Plaintiff cannot assert any right to restrain Defendant No. 1 from dubbing the Telugu film in Hindi", the Court observed.

The plaintiff JA Entertainment Pvt Ltd, in this suit, had sought for permanent injunction restraining defendants from dubbing the Telugu film "Bheemla Nayak" in Hindi as the plaintiffs have the right for Hindi remake of the Malayalam original.

Plaintiff's claim

The plaintiff claimed that its creative team came across a Malayalam film 'Ayyappanum Koshiyum', which was a huge success commercially. Plaintiff decided to remake the film in Hindi language and approached the producer of the film (Defendant 3) and sought assignment of Hindi Remake Rights in the Malayalam film. Pursuant to negotiations, an Assignment Agreement was executed under which Hindi Remake Rights in the Malayalam film were assigned to the Plaintiff. As per the said Agreement, Plaintiff was assigned the exclusive, perpetual and irrevocable 'Remake and Dubbing' rights, to be exercised in all modes, mediums and formats.

The rights assigned, to the extent relevant for the present case included: (a) the sole right to make a new cinematograph film based on the Malayalam film in Hindi language; (b) right to dub the Malayalam film as well as the Hindi remake in any or all languages; and (c) right to subtitle in any language for any purpose through any media.

Accordingly, the Plaintiff commenced pre-production of the Hindi Remake. Later, the Plaintiff came across a trailer of a Telugu film on YouTube, titled 'Bheemla Nayak' (suit film) dubbed in Hindi, though its release date was not announced. Since this indicated a potential infringement of Plaintiff's rights, Plaintiff enquired from Defendants the nature of rights assigned to the producer of Bheemla Nayak. It was clarified that only limited rights had been as signed to Defendant No. 1 (producer of Bheemla Nayak) to remake the Malayalam film in Telugu language. However, on learning that exploitation rights of the suit film had been assigned to one Goldmine Telefilms Pvt. Ltd., Plaintiff sent a Legal Notice highlighting its rights and called upon Defendant No. 1 to cease and desist from releasing the suit film in theatres or through any other mode or medium, as that would amount to infringement. On receiving a reply to the Notice from Defendant No. 1 stating that by virtue of being the producer of the Telugu remake suit film, Defendant No. 1 was the copyright owner.

Issue before the Court

The question before the court was whether dubbing the Telugu film in Hindi by Defendant No. 1 constitutes infringement of Plaintiff's rights under the Copyright Act (Act). In order to do so, the court stated that it was imperative to understand who the 'author' under the provisions of the Act was.

The court opined that from a conjoint reading of Sections 17, 2(d)(v) and 2(uu) of the Act, the author of a work is the first owner of the copyright and in relation to a cinematograph film, the producer is the author and thus the first owner of the copyright. Under the provisions of Section14(a)(iv), the author of a work has a right to make a cinematograph film and Section 14(d) provides the rights that the author would have the right to communicate the film to the public. Here, the court relied upon the judgement of Thiagarajan Kumararaja v. Capital Film Works (India) Pvt. Ltd. and Another, 2017 SCC OnLine Mad 37588 to elaborate upon the phrase 'communication to the public'. In this case, the Division Bench of the Madras High Court held that dubbing would fall within the ambit of the expression 'communicating to the public' while interpreting the expression 'otherwise enjoyed' in Section 2(ff) of the Act. It stated that-

"The use of the expression "otherwise enjoys" after the words seen or heard enlarges the scope of how communication with the public has to be made...The Legislature it seems consciously has enlarged the scope of the expression "communication to the public" by bringing in the aspect of enjoyment. Dubbing would, thus, in our view, fall within the ambit of the expression communicating to the public...In short, the principle being that the owners of copyright in a cinematographic work will, inter alia, have the right to both sub-title and dub their work."

Another question raised by the court was whether Remake and Dubbing rights that were assigned to the Plaintiff included making a new cinematograph film and the underlying works thereof in Hindi language with the right to dub the Malayalam film as well as the New Film in any and all languages known or coming into existence in the near future. Admittedly, the Plaintiff was not assigned the right to remake the Malayalam film in Telugu language. The court also held that it is not the case of the Plaintiff that Defendant No. 1 is dubbing the Malayalam film in Hindi. Thus, the Plaintiff has no grievance with regards remaking of the Malayalam film in Telugu. Defendant No. 1, even according to the Plaintiff, is dubbing the remade Telugu film in Hindi, which has triggered the present suit.

Under Section 51 of the Act, a grievance with respect to infringement of a copyright can arise only if the exclusive right to do an act conferred upon the copyright owner is infringed. The court further opined that –

"Perusal of the ex parte ad interim injunction granted by this Court shows that the considerations that weighed with the Court while granting the injunction were the contentions of the Plaintiff that: (a) the right to remake the Malayalam film in Hindi language was exclusively vested in the Plaintiff, which was infringed by Defendant No. 1 under Section 51 of the Act; (b) Defendant No. 1 was not assigned the right by Defendant No. 3 to dub the Malayalam film or its remake in Hindi language; and (c) Plaintiff has invested considerable amount of money in the pre-production stage of its proposed Hindi remake of the Malayalam film and if the suit film is allowed to be released, commercial viability of Plaintiff's proposed film shall be considerably damaged."

Here, the court found that none of the contentions raised by the Plaintiff at the time of grant of ex parte ad interim injunction hold water in law. The court also held that –

"Plaintiff, no doubt, has a right to remake the Malayalam film in Hindi language as well as dub the same or the New Film in any language, however, Defendant No. 1 has admittedly dubbed the remade Telugu film (suit film) in Hindi, which does not infringe the Plaintiff's right, applying the provisions of Section 51 of the Act. As far as the commercial viability of the proposed film of the Plaintiff is concerned, this is a factor which is wholly irrelevant to the issue of alleged violations of the provisions of the Copyright Act, under which an action for infringement can only be predicated on existence of a copyright."

The Court also found merit in the contention of Defendant No. 1 that the ownership of the copyright in the Telugu film vests in Defendant No. 1. As brought out above, under Section 2(uu) of the Act 'producer' in relation to a cinematograph film means a person who takes initiative and responsibility for making the 'work' and the producer is the 'author' under Section 2(d)(v). The court held that Section 17 clearly provides that the author of a work shall be the first owner of the copyright therein and therefore, Defendant No. 1 is the owner of the copyright in the Telugu film. For all the aforesaid reasons, the ex parte ad-interim injunction granted was thus vacated.

Appearances for plaintiff :Mr. Dayan Krishnan, Senior Advocate with Mr. Achuthan Sreekumar, Mr.Ameet Naik, Ms. Madhu Gadodia, Ms. Megh a Chandra, Mr. Rohil Bansal and Mr. Sujoy Mukherjee, Advocates.

Appearances for defendants : Mr. Amit Sibal, Senior Advocate with Mr. Aurup Das Gupta, Mr. Rohan Thawani, Mr. Vinay P. Tripathi, Mr. Saksham Dhingra andMr. Mayank Bhargava, Advocates for D-1. Mr. Jayant Mehta, Senior Advocate with. Mr. Dhiraj Mhetre, Mr. Sanampreet Singh,Mr. P.D.V. Sikar and Ms. Sonali Mehta,Advocates for D-2. Mr. Achyuth Ajithkumar, Advocate for D-3 and 4.

CASE TITLE: JA ENTERTAINMENT PVT LTD v. MS SITHARA ENTERTAINMENT & ORS.

Citation: 2022 LiveLaw (Del) 640

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