Miss Kajal Agarwal vs. The Managing Director, M/s V.V.D. & Sons Pvt. Ltd.

5th October, 2018 - 12:03 pm Categories: Legal Issues 0 Comments

FACTS

The Appellant is a well-known South Indian actress. The Respondent – Company entered into a advertisement agreement with the Appellant. It was contended that the parties have mutually agreed to the terms of the agreement and it was also agreed, in the written agreement which the appellant didn’t sign, that all the promotion/ advertisement material can be used by the Respondents only for the period of one (1) year from 29/12/2008 to 28/12/2009. The Appellant contended that the Respondent continued to use the promotion/ advertisement material in violation of the terms and agreement and the agreement did not incorporate the changes suggested by the Appellant. Consequent to such violation, the Appellant issued a legal notice to the Respondent on 12/09/2011, despite which Respondent continued to use such advertisement material.

The Respondent contended that the advertisements are being used in compliance of the agreement and the Appellant has been given the decided remuneration as per the terms of the agreement, for such advertisement. The Respondent further asserted that it holds Copyrights over the advertisement film, which falls under the category of ‘cinematography’, therefore, being the first owner of the ad-film the Respondent can exploit such work for the period of 60 years, as per the Act. Since the Appellant has been duly compensated for the ad-film, now the Respondent cannot be denied copyright over their original work.

ISSUES RAISED

5 issues were framed by the Hon’ble Court for consideration, which are as follows:

1. Where the Copyright Act gives the first owner of the copyright of the cinematograph film a term of 60 years to exploit the work under section 26 of the Act, whether the same could be restricted by the parties by way of a contract for a lesser period?
2. Whether in a cinematograph film more particularly in an advertisement film, where apart from the appellant as performer it also involves various other players like the cameraman, music director, director of the advertisement film etc., and the respondent as a producer and the first owner of the copyright of the film can be restricted to exploit his production for a lesser period than the one conferred by the Copyright Act based on an agreement entered into by him with one of the performers?
3. What is the scope of proviso (c) to Section 17  and Section 38 – A of the Copyright Act?
4. Whether the exploitation of the cinematograph film by the respondent beyond the period stipulated by the agreement will restrict/prevent the appellant from endorsing or acting in the advertisement film of the competitors or other persons who deal with similar products?

HELD

It has been held that, the Appellant falls within the definition of a ‘Performer’ and the Respondent being the producer of the cinematograph film falls under the category of ‘author’ and the cinematograph film falls within the category of ‘work’. It is also an admitted fact that the appellant by virtue of Clause 4 of the agreement has acknowledged the specific condition that the cinematograph film and the other promotional materials in any medium developed between both the parties will be the copyright of the respondent. By virtue of this condition, the respondent who is the author of the work shall be the first owner of the copy right. As the first owner of the copy right, the respondent will have the exclusive right to communicate the cinematograph film to the public by virtue of Section 14 (i) (d) (iii). Once the respondent becomes the first owner of the copy right, the right shall subsist for a period of 60 years as provided under Section 26 of the Copyright Act[1].

It was further held that since the Appellant has agreed to give the copyright to the Respondent, as per the agreement, there was no clause/ agreement to the contrary, taking away the copyright of the Respondent, therefore proviso of Section 17 (c) will not be applicable.

It was held that since the Respondent has been proven to be the ‘first owner’ of the ‘work’, therefore, Respondent was entitled to exploit the work for the entire term, as mentioned in Section 26 of the Act i.e. 60 years and the same is not restricted to one year by the agreement.

With respect to the individual rights of the Performer under Section 38-A of the Act, it was held that “once a performer by a written agreement consents to incorporate that performance in a cinematograph film, the performer thereafter cannot object to the producer’s right in the cinematograph film, unless there is a contract to the contrary. In the present case the appellant having consented to incorporate her performance as an actor in the cinematograph film produced by the respondent who is the author of it, the appellant cannot stop the respondent from enjoying their producer’s right. There is no contract to the contrary in this case and even the agreement dated 29.12.2008 does not contain any Clause preventing the respondent from exercising his absolute right as the producer of the cinematograph film”.[2] For above reasons, the Madras HC dismissed the OSA, in favour of the Respondents.

Author: Ms. Vatsala Singh, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at vatsala@khuranaandkhurana.com.

References:

[1] Para 17 of O.S.A. No.269 of 2017

[2] Para 33 of O.S.A. No.269 of 2017