D.Y. Chandrachud, J.
1. This order will govern the Plaintiff's Notice of Motion. By consent and at the request of Learned Counsel , the Motion has been taken up for hearing and final disposal.
2. The First Plaintiff is a proprietary concern and claims a sole and exclusive copyright in respect of nine feature films which form the subject matter of the suit. The Second Plaintiff is a Company incorporated under the Companies' Act, 1956 to which the First Plaintiff has granted a licence inter alia in respect of the suit films. Defendants 1 to 4 are the producers of the films; Defendant 5 claims copyrights in the films; and Defendant Nos. 6 and 7 are Companies through whom Defendant No. 5 claims the alleged rights.
3. A chart has been submitted before the Court in respect of the nine suit films containing: (i) The name of the film; (ii) The name of the producer; (iii) The date of the agreement; and (iv) The territory over which sole and exclusive rights are claimed by the Plaintiff. To facilitate brevity, it would be appropriate to extract the chart herein:
Sr.No.
Film
Producer
Date of Agreement
Territory
1
Inkaar
M/s.Uttam Chitra (Defendant No. 1)
05/09/76
U. S. A., Canada, Fiji
2
Koshish
Uttam Chitra (Defendant No. 1)
18-7-1972
Complete Overseas Circuit i.e. EntireWorld incl. Aden, High Seas and AIR but excl. India, Pakistan, Burma,Indonesia and North Africa.
3
Mere Apne
Uttam Chitra (Defendant No. 1)
15-11-1971
Arabian Gulf Comp. Bahrain, Kuwait,Qatar, Dubai, Doha, Sharjah, Oman, Jeddha, Turican States.
4
Mere Apne
Uttam Chitra (Defendant No. 1)
25-11-1971
West Indies, Comp. of Trinidad, Tobago,St. Vincent, Surinam, St. Luca Jamaica, British, French, & Dutch Guyana,U.S.A. Canada
5
Prar Ki Pyas
Anupam Chitra (Defendant No. 2) Plaintiffshave purchased from Overseas Film Corporation (Defendant No. 2A)
16-4-1976
Arabian Gulf, Behrain, Kuwait, Qatar,Dubai, Doha, Sharjah, Saudi Arabia, Oman & Trucial States.
6
Diwana
Anupam Chitra (Defendant No. 2)
03/05/69
Mauritius Re Union Islands Persian Gulf
7.
Bawarchi
Rupam Chitra (Defendant No. 2
27-11-1971
Complete Overseas Circuit i.e. EntireWorld incl. Aden, High Seas and Afghanistan, but excluding India, Pakistanand Burma.
8
Achanak
Rupam Pictures P. Ltd. (Defendant No. 4)Plaintiffs have purchased from Famous Features Syn. and Rupam Chitra hasconfirmed the said Agreement and signed the same at the foot thereof.
03/10/73
EAST AFRICA: Kenya, Uganda, Tanzania,Malavi, Burundi, Congo, Somalia, Ethiopia, Zambia, Mozambique Seychelles WESTINDIES: Trinidad, St.Lucia, St. Vincent, Jamaica, Tobago, Surinam, British,Fench & Dutch Guianas, Panama, U.S. A. and Canada European Countries
Ashirvad
Film Enterprises (Defendant
21-9-1970
U.S.A., & Canada
9
No. 3)
10
Do Ladke Done Kadke
M/s. Film Enterprises (Defendant No. 3)
09/09/76
U.S.A. & Canada, Fiji Persian Gulf
Exhibits 'A' to 'J' to the Plaint are Agreements of Assignment under which the First Plaintiff claims a sole, exclusive and perpetual copyright of exploiting, distributing and exhibiting the nine suit films. The payment of the full amount of consideration under each of the agreements is pleaded. Since the agreements are materially similar, a reference has been made by Counsel for all the contesting parties to an agreement dated 5th September 1976 (Exh.A to the Plaint). Clauses 1 and 4 of the agreement are to the following effect:
1. The Assignor hereby agree to the Assignees and the Assignees hereby agree to take on assignment from the Assignors the sole, exclusive and perpetual copyrights of exploitation, distribution and exhibition, commercial as well as non-commercial, in respect of the said picture in 35 mm as well as any reduced size or sizes, including the rights of Television, High Seas, Air and all other rights attached to such exploitation, distribution and exhibition of the said picture at or for the price of Rs.1,84,000/-(Rupees One Lac Eighty Four Thousand only) payable as mentioned below for the territories of complete Overseas circuit (comprising the areas specified in Clause No. 2 hereof) which territories are hereinafter referred to as the 'Contracted Territory'.
4. The Assignors hereby agree and undertake that the said Picture shall not be exploited or distributed or exhibited commercially, non-commercially or in any other manner whatsoever, in the Contracted Territory either by themselves, their servants or agents or otherwise and hereby agree to indemnify and keep indemnified the Assignees against such unauthorized distribution or exploitation or exhibition of the said picture in the Contracted Territory.
By virtue of Clause (1), the assignor (the First Defendant) has granted to the assignee, 'the sole, exclusive and perpetual copyright of exploitation, distribution and exhibition, commercial as well as noncommercial, in respect of the said pictures in 35 mm as well as in reduced size or sizes...' for the territories spelt out therein. Exploitation is an act or process of exploiting, making use of or working up; a process of utilization by the application of industry (Black's Law Dictionary, 5th Edition page 519. P.Ramanatha Aiyar, Law Lexicon, Vol.II, page724). The provisions of Clause (1) must prima facie be juxtaposed together with Clause (4) under which the assignors have agreed and undertaken that the films shall not be exploited or distributed or exhibited commercially, non-commercially or in any manner whatsoever in the contracted territory. The positive act of assignment in Clause (1) is coupled with the negative obligation precluding the assignors from exploiting the films in the contracted territories.
4. The right which has been assigned is to exploit, distribute and exhibit the film in 35 mm as well as in reduced size or sizes, including all the rights of Television, High Seas, Air 'and all other rights attached to such exploitation, distribution and exhibition'. The assignment of these rights is prima facie absolute.
5. Prima facie, at the ad-interim stage, the interpretation of Clause (1) of the Agreement of assignment in the present case is not res integra. A similar clause came up for interpretation before S.S. Nijjar, J (as the Learned Chief Justice then was), in a judgment dated 17th August 1999 in Maganlal Savani v. Khosla Enterprises (Notice of Motion 863 of 1999 in Suit 925 of 1999). It was urged on behalf of the Defendants that at the time when the agreement was executed in 1971-72, there was no occasion to assign copyrights in Video, satellite transmission and DVD since such media was unknown on the date of the agreement and only rights for exhibiting of the film were assigned together with terrestrial television. The Learned Single Judge, while rejecting the submission, held as follows:
A perusal of Clause (1) of the agreement shows that the Plaintiff has been granted the sole exclusive and perpetual copyrights of exploitation, distribution and exhibition, commercial as well as non-commercial, in respect of the said pictures in 35 mm as well as any reduced size or sizes. This includes the rights of television and all other rights attached to such exploitation.... In my view, the most natural meaning to be given to the aforesaid clause is that Plaintiff has been given perpetual copyrights of exploitation, distribution and exhibition of films. These rights include the rights of television and all other rights attached to such exploitation. The phrase all other rights attached to such exploitation cannot be read to mean that the other rights referred only to television rights.
One of the submissions which was urged before the Learned Single Judge was that the reference in Clause (1) to a 35 mm or reduced size of film would show that Video Cassettes and DVDs were excluded. Rejecting the submission, the Learned Single Judge, while upholding the case of the Plaintiff, held thus:
The size of the pictures viz., 35 mm. as well as any reduced size or sizes cannot be read to mean that all other rights where the film is exhibited through the medium of video cassettes and DVD has been excluded. Ultimately what was assigned to the Plaintiff was the right to exploit and exhibit the films through different sizes of the film and by the medium of television. Video cassette, VCD and DVD are only improved versions of exhibiting the film. What was earlier done by the spool containing the film, is now being done by video cassettes and DVDs. Satellite broadcasting can also not be said to be excluded from the television rights which had been granted to the Plaintiff. By using the satellite channels the Plaintiff is still exhibiting the films on television. In fact the clause clearly indicates that all rights for exploiting the film had been assigned to the Plaintiff.... Prima facie, I am of the view that no restrictions can be placed on the enjoyment of the copyright of the film which is vested in the Plaintiff only on the ground that the mode of exhibition of the film had not been invented at the time when the agreement had been entered into.
The judgment of Mr.Justice Nijjar was carried in appeal and a Division Bench of this Court in its order dated 10th January 2000 (Khosla Enterprises v. Maganlal Savani, Appeal 1246 of 1999) held thus:
Having heard Learned Counsel for the parties and read various clauses of the Agreement dated 21st October, 1970, in particular Clause 1 thereof, we find no infirmity in the prima facie opinion expressed by the Learned Single Judge that the phrase 'all other rights attached to such exploitation' cannot be read to mean that the other rights referred only to television rights and the clause shows that the Plaintiff is the sole, exclusive and perpetual copyright holder for exploitation of the films in question.
The Division Bench, however, directed the Plaintiff to the suit to maintain accounts in respect of the exploitation of the films. The same view of the Learned Single Judge has been reiterated in a judgment of T.K. Chadrashekhara Das,J. dated 20th June 2000 in Maganlal Savani v. Rupam Pictures (P) Ltd. (Notice of Motion 1481 of 2000 in Suit 1806 of 2000. A judgment of another Learned Single Judge, S.U. Kamdar, J. in Shemaroo Video P. Ltd. v. Movie Tee Vee Enterprises, 2006(1) All MR 37, adopts the same line of reasoning. An Appeal against the judgment of Kamdar J. is stated to be pending. The judgment of S.S. Nijjar, J., as noted earlier, has been approved by the Division Bench.
6. Consequently, both on a prima facie interpretation of the terms of the Agreement of Assignment and on the basis of judicial interpretation by Learned Single Judges of this Court, as confirmed in the order of the Division Bench, a prima facie case has been made out by the Plaintiffs.
7. One of the submissions which has been urged on behalf of Defendant No. 5 is that the rights granted to the Plaintiffs are for the exhibition of films for communication to the public as defined by Section 2(ff) of the Copyright Act. On the other hand, it has been urged that the rights granted to the Fifth Defendant are to replicate the films on media for private entertainment, namely, through Video Replication Rights. The submission of the Fifth Defendant cannot, prima facie, be accepted. The right conferred upon the First Plaintiff under the Agreement of Assignment cannot be restricted only to communication to the public. Clause (1) of the Agreements which entitles the Plaintiffs to exploit the films is not restricted to communication to the public. On the other hand, Section 14(1)(d) of the Copyright Act would prima facie indicate that the entire bundle of rights is subject to exploitation by the Plaintiffs.
8. It would be necessary, at this stage, to deal with the defences which have been urged before the Court by Counsel appearing on behalf of Defendant Nos. 1 to 4, 6 and 7. The first submission which has been urged is that there is a delay in the institution of the suit - DVD/VCDs were available in the open market from 1999 through other distributors. The Seventh Defendant claims that it had lodged an application for registration of Video copyrights for the entire world excluding India with the Indian Film Exporters' Association, including five out of the suit films. The Indian Film Exporters' Association had by a circular dated 2nd February 1999, requested its members to inform it of any objection or claim. It has been submitted that though the First Plaintiff is a member of the Association, it did not raise any claims or objections.
9. The submission based on delay cannot be accepted for more than one reason. Firstly, in Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Company, : AIR1997SC1398 , the Supreme Court noted that the cause of action for filing a second suit was that there was a continuous and recurring infringement of the Plaintiff's trade mark by the Defendants till the filing of the suit. A continuing act of infringement, the Supreme Court held, furnishes a recurring cause of action on each occasion of infringement. The Supreme Court held as follows:
It is obvious that thus the alleged infringement of plaintiff's trade mark 'DUCK BACK' and the alleged passing off action on the part of the Defendants in selling their goods by passing off their goods as if they were Plaintiff's goods has continued all throughout uninterrupted and in a recurring manner. It is obvious that such infringement of a registered trade mark carried on from time to time would give a recurring cause of action to the holder of the trade mark to make a grievance about the same and similarly such impugned passing off actions also would give a recurring cause of action to the Plaintiff to make a grievance about the same and to seek appropriate relief from the Court. It is now well settled that an action for passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach of infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved.
The Supreme Court held that an act of passing off is an act of deceit under the Law of Torts. The Plaintiffs would get a fresh cause of action on every occasion when a deceitful act is committed by the Defendants. The infringement of a registered trade mark would be a continuing wrong so long as an infringement continues. The judgment of the Supreme Court is a complete answer to the contention based on delay. A copyright is a right in property. Each infringement furnishes a distinct and separate cause of action.
10. Secondly, reliance has been placed in the reply of the First Defendant to a notice issued by the Indian Film Exporters' Association. At Exhibit 'F' to the rejoinder, is a notice addressed on behalf of the First Plaintiff on February 1999 by its Advocate, lodging an objection to the circular. The Plaintiffs have also annexed documentary material to the rejoinder indicating that the First Plaintiff had raised a dispute before the Disputes Settlement Committee of the Association. Proceedings were held before the Disputes Settlement Sub Committee and on 2nd August 2005, a decision was taken to the effect that the First and Fourth Defendants were not entitled to exploit the films in whatsoever manner in the overseas territories and were liable to pay the amount earned from such exploitation of the films to the First Plaintiff. The material which has been disclosed before the Court would, therefore, indicate that the Plaintiffs are not guilty of delay and latches and that due and necessary steps were taken for the protection of their rights. In any event, prima facie, the Plaintiffs would be entitled to an injunction prospectively in respect of any future act of infringement.
11. Clause 5 of the Agreement of Assignment is an additional provision rendering the assignor liable in damages. Section 55 of the Copyright Act indicates that the Plaintiffs in such a case would have more than one remedy for the espousal of its rights. The remedy of injunctive relief is not ousted.
12. The next defence which has been urged is that the Agreement of Assignment is with a partnership firm. The First Plaintiff is a sole proprietorship while the Second Plaintiff is a Private Limited Company. It is submitted that the suit has not been instituted by a partnership firm; there is no disclosure whether the partnership firm was registered and there is no agreement with the Second Plaintiff. Reliance has been placed on the averment in paragraph 13 of the rejoinder to the effect that the partnership had become a sole proprietorship, but the documents were not traceable.
13. In paragraph 13 of the rejoinder, it has been stated that M/s. International Film Distributors was originally a partnership firm and had undergone changes from time to time as a result whereof a deponent of the affidavit in rejoinder, Maganlal Savani, has become the sole proprietor. Thereby, it has been stated, he has acquired rights with respect to the said films and that after the change in constitution, the Second Plaintiff has been granted a licence. This has been reiterated in paragraph 14 of the rejoinder. In order to deal with the defence, the Plaintiffs have placed on the record a Deed of Dissolution dated 2nd August 1980 recording the dissolution of the business of the partnership firm under which Shri Maganlal Savani was assigned all the rights, title and interest in the partnership properties, credits and effects. At the ad-interim stage, the Plaintiffs have prima facie explained the flow of rights from the erstwhile partnership to the First Plaintiff as a proprietary concern. In fact, prima facie, the material before the Court would indicate that the Fifth Defendant has accepted the First Plaintiff as a proprietary concern as far back as in 2001.
14. The next defence is in respect of the verification of the Plaint. It is contended that the Power of Attorney dated 20th July 2006 extended to pending suits and that there is no seal of the Company, nor a resolution of the Board of Directors authorising the institution of the suit. The second Power of Attorney dated 31st July 2006, it is submitted, extends to pending suits whereas the present suit was instituted on 28th November 2007. Prima facie, at this stage, it emerges from the material on record that the plaint has been verified by Shri Sadanand Gupta, acting as the Constituted Attorney of Shri Maganlal Savani and of the Second Plaintiff. The Special Power of Attorney dated 31st July 2006 inter alia empowers Shri Gupta to sign plaints. Reading the Power of Attorney as a whole, it cannot prima facie be confined only to pending matters. Counsel appearing on behalf of the Plaintiffs has also placed on the record a copy of a Board Resolution dated 20th July 2006 constituting an authorisation to Shri Sadanand Gupta to affirm plaints, Written Statements and to sign affidavits for and on behalf of the Company in suits filed by and against the Company and generally. There is, therefore, no merit in the defence.
15. For all these reasons, I am of the view that the Plaintiffs have made out a prima facie case for the grant of interim relief. There is, prima facie, a valid and subsisting assignment of copyrights in favour of the Plaintiffs in respect of the suit films. The Notice of Motion is accordingly made absolute in terms of prayer Clauses (a) and (b). The Plaintiffs shall, however, maintain accounts.