Recently, the Delhi High Court in RDB & Co. HUF vs. Harper Collins, summarily rejected the Plaintiff’s prayer to restrain the Defendant, i.e. Harper Collins, from novelising the screenplay of the popular Bengali film ‘Nayak’, which was written and directed by Satyajit Ray. Placing reliance on Section 13(4) of the Copyright Act, 1957, the Court held that the Plaintiff’s copyright in a cinematograph film would not extend to the underlying works forming part of the film, such as the screenplay. This article analyses the Court’s findings in the case and highlights its potential implications on the film industry at large.
Brief Facts:
The Plaintiff, RDB and Co. HUF filed the suit seeking, inter alia, a permanent injunction to restrain the Defendant from novelising the screenplay of the cinematograph film ‘Nayak’. The Plaintiff claimed to be the successor in title of the producer of the film, Mr. RD Bansal, who had commissioned Satyajit Ray to write the screenplay of, and direct, the film. The film released theatrically in 1966. In 2018, one Mr. Bhaskar Chatopadhyay novelised the screenplay of the film, and the novel itself was published by Harper Collins in 2018. The Plaintiff, however, filed the suit alleging that the Defendant had novelised the screenplay of the film without obtaining the Plaintiff’s permission.
Plaintiff’s case:
The Plaintiff claimed that by virtue of being the producer of the film, it owned the copyright in all underlying works in the film, including the screenplay. In this regard, it relied upon Section 17(b) of the Act, which stipulates, inter alia, that the copyright in a cinematograph film that is made for valuable consideration shall vest in the person at whose instance it is made, i.e. the producer. On account of being the producer of the film and having invested substantial sums of money towards its creation and production, the Plaintiff asserted that it was the owner of copyright in not only the final physical form of the film, but also all underlying works thereto. It therefore alleged that the unauthorised novelisation of the screenplay by the Defendant infringed its copyright within the meaning of Section 51 of the Copyright Act, 1957.
In support of its argument, the Plaintiff also relied upon the decision of the Supreme Court in Indian Performing Rights Society vs. Easten India Motion Pictures (1977) 2 SCC 829 (“IPRS”), and the interpretation of Section 17(b) by the Court therein. In IPRS, the Supreme Court held that a producer of a cinematograph film, who commissions a composer of a musical work or a lyricist, would be the owner of copyright in the resultant work and that no copyright would subsist with such composer or lyricist. By this logic, the Plaintiff contented, that Section 17(b) would also vest in it the copyright in the screenplay of the film ‘Nayak’.
Defendant’s response:
The Defendant refuted the Plaintiff’s claims and contented that the right of a producer to a film is restricted to the physical form of the film, and does not extend to underlying works such as still photographs from the film and the screenplay / script of the film, in the absence of an agreement to the contrary. It placed reliance on Section 13(4) of the Act, which stipulates that the copyright in a cinematograph film does not affect the separate copyright in any work in respect of which it is made, such as the screenplay. It contented that Satyajit Ray was the author of the screenplay and therefore the owner of copyright in the screenplay, particularly when Satyajit Ray had not assigned the copyright in the screenplay to the Plaintiff by way of an independent agreement. Upon his death, the copyright in the screenplay devolved to Ray’s son, Sandip Ray, and the Society for Preservation of Satyajit Ray Archives (SRSRA), of which Sandip Ray was a member. The Defendant claimed that it had obtained a license to novelise the screenplay from Sandip Ray and SPSRA, which fact was not disputed by the Plaintiff. The Defendant also filed an application under Order XIII-A of the Code of Civil Procedure, 1908 (as amended by the Commercial Courts Act, 2015), seeking a summary dismissal of the suit.
Court’s findings and analysis:
The question that arose for consideration was whether the Plaintiff, on account of being owner of copyright in the film, could assert an independent right in the screenplay. In this regard, the Court rejected the Plaintiff’s argument that Section 17(b) of the Act automatically vested in it the copyright in all derivative and underlying works of the film. Relying upon Section 13(4) of the Act, the Court held that the copyright in a cinematograph film does not affect the separate copyright in the works in respect of which the film is made, thus recognising the statutory distinction between copyright in the physical form of a cinematograph film, and its underlying works. The Court was therefore of the view that Sandip Ray and the SPSRA (consequent upon Satyajit Ray’s death) are rightful owners of copyright in the screenplay, and that a license to novelise the screenplay can only be granted by them, and not the Plaintiff.
Notably, a perusal of Section 13(4) of the Act reflects that the statute recognises that the underlying works of a film are entitled to independent copyright protection. Section 13(4) reads as follows:
“(4) The copyright in a cinematograph film or a sound recording shall not affect the separate copyright in any work in respect of which or a substantial part of which, the film, or as the case may be the, the sound recording, is made.”
On the other hand, all that Section 17(b) stipulates that is that the copyright in a cinematograph film shall vest in such person at whose instance it is made. The provision, however, does not state that the copyright in a cinematograph film also extends to the underlying works of the film. Thus, the Court has rightly held that Section 17(b) would not ipso facto entitle the Plaintiff to assert copyright in the screenplay of the film ‘Nayak’. Interpreting the provision otherwise would have run contrary to the intention of the legislature, which has excluded underlying works from the ambit of Section 17(b).
Notably, it is also clear from a reading of the opening words of Section 17 that the provision is “subject to the provisions of the Act”, meaning thereby that Section 17 would necessarily have to be interpreted in a manner that conforms with the other provisions of the Act (in this case, Section 13(4)). In this regard, it would be useful to refer to the Supreme Court’s decision in Union of India & Ors. vs. Brigadier P.S. Gill (2012) 4 SCC 463, wherein the Court held that the expression “subject to” conveyed the idea of a provision yielding place to other provisions to which it is made subject.
Thus, Section 17(b) of the Act would necessarily have to yield to Section 13(4), which explicitly recognises that the underlying works of a cinematograph film would be entitled to independent copyright protection. Therefore, the Court has correctly held that the Plaintiff’s copyright in the film ‘Nayak’ will not entitle the Plaintiff to the copyright in the screenplay, in view of Section 13(4) of the Act.
While interpreting Section 13(4) and Section 17(b) of the Act, the Court has also distinguished the Supreme Court’s decision in IPRS. The question that arose for consideration in IPRS was whether an author of a musical work, having permitted the producer, to use a sound recording as part of the film, could subsequently injunct the producer from public demonstration of the film. Answering in the negative, the Supreme Court held that a harmonious construction of Sections 13(4), 14(1)(a)(iii) and 14(1)(c)(ii) (as they stood then) would reveal that once a lyricist or a music composer parts with a portion of his copyright by authorising a film producer to make a cinematograph film in respect of such a work, the latter would acquire exclusive copyright in such lyric or sound recordings.
The Delhi High Court in the present case, however, distinguished IPRS and refused to apply the Supreme Court’s interpretation of Section 17(b) therein, to the present case. The Court reasoned that the judgment in IPRS was rendered in a completely different context, as it concerned the ability of a lyricist / music composer to restrain the producer of a cinematograph film from communicating a film (which contained their works) to the public, which is evidently not the issue for consideration in the present case. The Court noted that the decision in IPRS was rendered specifically in the backdrop of Section 2(f) of the Act, which includes within the definition of a “cinematograph film”, the expression “the sound track, if any”. The Court, however, noted that the definition does not include a screenplay of a film, and thus found that the decision in IPRS would be inapplicable to the facts and circumstances of the present case.
It may also be relevant to note herein that while the Defendant asserted that Satyajit Ray (Sandip Ray and SPSRA consequently) was the owner of copyright in the still photographs from the film, the Court has not delved into this issue in the judgment. However, it is arguable that the Court’s finding that copyright in a cinematograph film will not extend to underlying works would also extend to still photographs in the film, as still photographs are, evidently, underlying works.
Interestingly, the Court also clarified that the novelization of a screenplay will not amount to an ‘adaptation’ under Section 2(a) of the Act. Section 2(a) defines adaptation in respect of literary works as being (i) the conversion into a dramatic work by way of a public performance, and (ii) abridgement of a literary work or any version of the work in which the story or action is conveyed wholly or mainly, by means of pictures. The Court was of the view that the novelization of the screenplay will not amount to adaptation under the Act, inasmuch as it does not involve either abridgement of a screenplay or converting it into a version in which the story or action is conveyed wholly or mainly by means of pictures. The Court held that novelization would, in essence, amount to “reproduction” of the screenplay. In this regard, the Court found that the right to reproduce the screenplay (being a literary work as per Section 2(o) of the Act) vests with Satyajit Ray, and that his heirs could, lawfully, assign this right to third-parties as per Section 18(1) of the Act.
Implications on the film industry:
This decision clarifies that film producers cannot automatically assert rights in underlying works, such as the screenplay, sans a specific agreement assigning rights in the underlying works in favour of the producers. Thus, film producers will now have to necessarily ensure that they specifically acquire rights in the screenplay by way of a separate assignment agreement, in the absence of which they will be unable to restrain its commercialisation by screenwriters.
In holding that all rights in underlying works of a cinematograph film do not automatically vest in the producers, this Judgment also provides authors of underlying works (such as screenwriters) with much needed leverage while negotiating terms with producers. This is particularly relevant in the backdrop of screenwriter protests demanding better incentives all over the world, including in India. Notably, a recent report by a media insights firm in India revealed that a sizeable section of Indian writers believe they are not compensated fairly.[1] This judgment could, therefore, mark a shift in the balance of power between film producers and screenwriters during negotiations.
Conclusion:
In holding that the Plaintiff’s copyright in the film ‘Nayak’ does not extend to underlying works, this judgment clarifies that Satyajit Ray’s (upon his death, Sandip Ray and the SPSRA) continue to be owners of copyright in the screenplay of the film. The judgment, therefore, effectively allows Sandip Ray and the SPSRA to license the rights in the screenplay or otherwise permit third-parties to novelise the screenplay, without the permission of the Plaintiff, who is the producer of the film. While its practical implications on the film industry remain to be seen, this decision clarifies that ownership of copyright in a cinematograph film does extend to underlying works thereto.
About Author: Sudarshan is an Intellectual Property, Media and Entertainment Lawyer based in Bangalore. Views expressed are personal.
Reference:
[1] Lata Jha, ‘Majority of indian Screenwriters unhappy with compensation and recognition’ – https://www.livemint.com/industry/media/majority-of-indian-screenwriters-unhappy-with-compensation-and-recognition-survey-11685683786627.html.
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