Del HC | Restrainment order passed against makers of movie ‘Dream Girl’ from using the song ‘Dhagala Lagli’ during pendency of copyright violation suit

Delhi High Court: Rajiv Sahai Endlaw, J. while addressing a suit filed in respect to exploitation of copyrighted works i.e. the sound recording and underlying musical and literary works in the song “Var Dhagala Lagli Kal” from the Marathi cinematograph film by its use in the song “Dhagala Lagli” to be released in the film “Dream Girl”, amounting to infringement and copyright works, stated that,

“Purport of laws relating to copyright and trademark is to prevent theft of intellectual property and a public element is also involved in preventing such thefts.”

In the present matter, plaintiff instituted the suit in respect to restraining the three defendants:

• Balaji Motion Pictures Limited
• ALT Digital Media Entertainment Limited
• Zee Entertainment Enterprises Limited;

from exploiting/using the plaintiff’s copyrighted works in the above-stated song.

Contentions in regard to the matter are as follows

The present suit appeared before the Court first on 06-09-2019 and senior counsel for the plaintiff pressed for ad-interim relief. Senior Counsels for defendants 1 and 2 contended that the impugned song in the forthcoming film was not even part of the film and constituted about 2 lines only in the song which played towards the end of the film with the end credits.

Plaintiff for the counsel contended that the defendants, till further hearing should not play the impugned song on the music/promotion channels of the forthcoming film, as they had been doing since August 21st  to 27th, 2019, but no such order was granted.

Plaintiff’s case is that the plaintiff had vide an agreement on 12-05-1979 acquired the rights over the sound recordings and underlying musical and literary works in the songs of the cinematograph film “Bot Lavin Tithe Gudgulya”, from the original producer of the said film i.e. Sadichha Chitra; said rights were assigned to the plaintiff in perpetuity and plaintiff continues to be the rightful owner of the songs in the said film including sound recording and underlying musical and literary works of the song “Var Dhagala Lagli Kal”.

In accordance to the said agreement, “Sadichha Chitra” agreed to assign in favour of plaintiff, in perpetuity, copyright and sound recording and underlying musical and literary works of songs of all cinematograph films to be produced during the tenure of the said agreement. Plaintiff’s name also appears on the in-lay cards of the subject film, as the owner/publisher of the sound recordings and underlying musical and literary works of the said cinematograph film and as per Section 55(2) of Copyright Act, 1957, plaintiff is presumed to be the owner of the copyright in the said works.

On August 27, 2019 it came to the knowledge of the plaintiff that the defendants had adopted, used and synchronized the song “Var Dhagala Lagli Kal” without seeking any licence or consent of the plaintiff, thus doing so amounts to infringement of copyright of the plaintiff, as defendants copied an integral part of the original song.

Further, a notice was issued to the defendants to cease and desist from so infringing the copyright of the plaintiff but till the institution of the suit on 05-09-2019, no response had been received from the defendants. Defendants’ intention of illegally exploiting the plaintiff’s copyrighted works is evident from the fact that a representative of defendant 1 had approached the representative of plaintiff for licensing certain song forming part of plaintiff’s repertoire, once plaintiff’s representative informed the terms and conditions that would be involved, including monetary terms and conditions defendant 1 stopped communicating with the plaintiff. Defendant 3 was well aware of plaintiff’s right over the subject song and is continuously paying licence fee to the plaintiff for the use of the same on its TV channels, since last 3 years under orders of this Court.

Counsel for defendant 3 argued that the owner of the copyright in the subject song was Dada Kondke and legal heir of Dada Kondke instituted a suit for declaration and injunction under Section 62 of the Copyright Act and one of the films Dada Kondke including the subject film “Bot Lavin Tithe Gudgulya” and restrained the defendant therein from infringing the said copyright.

Plaintiff claimed rights in perpetuity but in the Agreement dated 12^th May, 1979 there is no such provision. The stated agreement does not mention the subject film anywhere and thus the plaintiff could not have acquired any rights with respect to music.

Senior Counsel for defendants 1 and 2 argued that, the Court does not have territorial jurisdiction to entertain the suit, they also relied on the Supreme Court decision in Indian Performing Rights Society v. Sanjay Dalia, (2015) 10 SCC 161.

High Court enquired from the senior counsel for the defendants 1 and 2, how the loss suffered by the plaintiff from the defendants, not mentioning n the credits of the film, to be compensated.

Further, the Court stated that, the fulcrum of the arguments of the counsels for the defendants has been of disputing the copyright of the plaintiff, including on interpretation of the Agreement dated 12-05-1979 where under the plaintiff claims right, but need to adjudicate the respective contentions at this stage is not felt.

Adding to its view, the Court stated that once defendant 3 has so accepted the right and title of the plaintiff in the subject song, at least at this prima facie stage, principles of estoppels would apply and for the present purposes the said title has to be accepted.

High Court also stated that defendant 3 though paying a royalty to the plaintiff under orders of this Court for the subject song, while incorporating the said song or part thereof in the forthcoming film, did not choose to approach the plaintiff. Such conduct of the defendants itself is enough for interim order to be granted in favour of the plaintiff.

Court added that not only have neither counsel for the defendants in their arguments not controverted infringement of the subject song in the forthcoming film but the plaintiff has also filed before this Court the printout from YouTube where the defendants, while advertising their forthcoming film have stated “Relive Dhagala DREAM GIRL style” clearly admitting that the defendants are inciting interest in their forthcoming film ‘Dream Girl’ as well as in its music, by referring to the subject song in which the plaintiff claims rights.

Thus, defendants cannot be permitted to blow hot and cold, by, in the publicity of their forthcoming film and its music, referring to the original song subject matter of the present suit and in which the plaintiff claims right and here, contending otherwise. Defendants, though have not denied infringement of copyright, have not even whispered in their arguments, that they have any right or title to the song copyright wherein is infringed. In Court’s view on this ground alone the defendants are liable to be restrained.

Plaintiff thus is found to have a prima facie case. The elements of irreparable injury and balance of convenience are found in favour of the plaintiff.

Relying on the case of  Travellers Exchange Corpn. Ltd. v. Celebrities Management (P) Ltd., 2019 SCC OnLine Del 6943, Court stated that no merit is found in the dispute raised with respect to the territorial jurisdiction of this Court.

Therefore, the application is thus allowed. Defendants during the pendency of this suit, are restrained from exploiting/using the plaintiff’s copyrighted works.[Saregama India Ltd. v. Balaji Motion Pictures Ltd., 2019 SCC OnLine Del 10036, decided on 13-09-2019]