On July 03, 2024, the Delhi High Court issued an order in the case of Saregama India Limited vs Emami Limited (CS(COMM) 535/2024), which involves alleged copyright infringement related to the song “Udi Jab Jab Zulfein” from the film Naya Daur.
The plaintiff filed a suit to restrain the defendant from using the musical and literary works of the song “Udi Jab Jab Zulfein” to advertise its product, Emami Kesh King Anti Hairfall Shampoo, without any license from the plaintiff.
The plaintiff submitted that he was the assignee of all the works, including musical, literary and sound recording rights in the impugned song “Udi Jab Jab Zulfein” from the film ‘Naya Daur’ for the entire copyright term of sixteen years. It was submitted that the rights were assigned to the plaintiff by M/s BR Films, the original producer of the film ‘Naya Daur’, vide agreement dated October 17, 1955. The plaintiff submitted that the terms of the agreement above were initially for two years, which was renewed for one more year on July 22, 1957.
The plaintiff further submitted that the said producer also confirmed the rights in the sound recording as well as the literary and musical works assigned to the plaintiff vide letter of May 31, 2007. It was stated that the said fact was also confirmed by the Indian Performing Right Society Limited (“IPRS”), a registered society for musical and literary works, vide certificate dated November 09, 2023.
The plaintiff submitted that the defendant approached the plaintiff for a grant of license for the lyrics and musical composition of the song in question on October 26, 2023, and asked for copies of the documents showing the plaintiff’s ownership over the said works. The plaintiff responded to the said email on October 31, 2023, asking the defendant for the details of the advertisement so that the appropriate quote could be shared. The plaintiff submitted that the defendant was also informed that its ownership documents were confidential and could not be shared with the defendant at that stage.
The plaintiff submitted that instead of replying to the email, the defendant sent a letter on November 08, 2023, in which it sought to locate the legitimate owner of the copyright in the lyrics and music composition of the song in question and challenged the rights of the plaintiff.
The plaintiff responded to the said letter on November 10, 2023, wherein the plaintiff reiterated its rights on the said copyrighted works and also shared the certificate from the IPRS showing the plaintiff as the copyright owner. It was submitted that the defendant, vide letter dated November 24, 2023, disregarded the IPRS letter and also demanded that the plaintiff disclose its confidential documents. The plaintiff claimed the rights by citing Sections 22, 27, 51, and 55 of the Copyright Act of 1957.
The plaintiff further submitted that as per the Agreement dated October 17, 1955, between the plaintiff and the producer of the film ‘Naya Daur’, the plaintiff was assigned rights in works, which included literary, musical as well as sound recording. It was submitted that as per section 14(a) of the Copyright Act, 1957, the plaintiff had an exclusive right to reproduce or to make any sound recording in respect of the said works. Hence, the use of the song in the advertisement by the defendant amounted to infringement. The plaintiff learned about the advertisement in question in June 2024 and immediately approached this Court by filing the present case.
To this, the defendant submitted that the Agreement dated October 17, 1955, in favour of the plaintiff, assigned only sound recording rights in favour of the plaintiff, which had already expired. The defendant drew the attention of the Court to Sections 26 and 27 of the Copyright Act, 1957, to submit that any right the plaintiff had was only for a period of sixty years, beginning from August 15, 1957, when the movie in question was released. It was submitted that the plaintiff’s sound recording rights had already expired after the expiration of sixty years. Thus, it was claimed that the plaintiff had no right under the aforesaid Agreement dated October 17, 1955, as of now.
The defendant further submitted that the letter dated May 31, 2007, issued by BR Films Pvt. Limited was not an Assignment Agreement. Thus, they alleged that the plaintiff could claim to own the song in question. However, the defendant submitted that they were ready to deposit a sum of INR 10 lakh with the Court as a form of license fee to the actual owners of the song.
The Court issued several directives, including directing the defendant to deposit INR 10 lakhs with the Court’s Registry within two weeks. The Court clarified that the INR 10 lakh deposit by the Defendant was temporary, pending further consideration during the next hearing, where adjustments may be made based on arguments from both parties. The instructed the plaintiff to provide supporting documents and an affidavit detailing the fees charged for similar licenses. Additionally, the plaintiff was directed to submit documents concerning the granting of comparable licenses to third parties. The case will be next heard before the Joint Registrar (Judicial) on August 08, 2024.
The Delhi High Court’s order reflects a complex legal battle over copyright ownership and alleged infringement, highlighting procedural adherence and substantive legal arguments from both parties. The case highlights the significance of intellectual property rights protection in commercial disputes, particularly within the realm of music and advertising. The next hearing on September 19, 2024, will likely provide further clarity.
Authors: Manisha Singh and Kratika Patel
First Published by: Lexology here