Bombay High Court: A suit was filed by the plaintiff that involved a dispute over the exploitation of musical works and songs from cinematographic films produced by Ralhan Productions. The plaintiff claimed that the defendants were exploiting these works without proper authorization after the expiry of the assignment agreements. A Single Judge Bench of Manish Pitale, J., clarified the scope of perpetual assignments of rights and held that a contractual stipulation permitting an assignee to exploit film songs “by any and every means whatsoever” covered digital mediums including exploitation of works in non-physical mediums.
Background:
The plaintiff’s father, O.P. Ralhan owned the Ralhan Productions, produced seven films between 1963 and 1983 and via agreements executed in relation to those films, assigned the rights in the works of songs and recordings forming part of those films to the predecessor of Defendant 2. In 1999, the plaintiff’s father died and left behind a Will bequeathing rights in properties including the said works in favour of the plaintiff.
In 2004 and 2005, the plaintiff submitted that she asked Defendant 2 for royalty statements and its payment under the aforesaid assignment agreements and in 2009 she acknowledged receiving Rs 50,000 towards part-payment of the royalty. In 2006, Defendant 2 proposed certain terms for sharing of revenue from non-physical alternative mediums of communication of the said works and sound recordings. The plaintiff responded stating that until execution of amendments to the agreements, the existing agreements should be subsisting and binding. But in 2010, the plaintiff sent a letter to Defendant 2 informing that none of the said agreements were valid and subsisting and asked for a complete statement of accounts for royalty payable along with 18 per cent interest payable on such pending royalty and further called upon him to cease and desist from dealing with the aforesaid rights. The plaintiff contended that the agreements were only in relation to the gramophone records and thus the sound recordings or digital medium being used by the defendants were not permitted as per the Copyright Act, 1957 (‘the Act’) and amounted to copyright infringement.
In 2011, the plaintiff noticed a commercial advertisement on television issued by Defendant 1-Adani Wilmer Ltd., wherein it had used a song from the film ‘Talash’, which formed part of the aforesaid seven films and asked it to refrain from using the said song, to which she was informed that it had obtained licence from Defendant 2 to use the said song. The plaintiff was also informed by Defendant 2 that it was the absolute owner of the copyright in sound recordings and the underlying musical and literary works of the film ‘Talash’ based on the agreement concerning the said film.
In 2012, the plaintiff filed a suit to restrain the defendants from infringing upon her copyright and claimed Rs 10 crore as damages along with true and faithful account of all the profits.
Analysis:
This Court vide judgment and order dated 20-3-2013, framed the following issues which were dealt with by the Court as under—
- Whether the plaintiff proved that the songs were from the cinematographic films produced by her father, being the owner of the copyright therein?The Court observed that there was no dispute as to the claim that the plaintiff’s father was the producer of the said films and therefore, he was the original owner and held copyright of the songs.
- Whether the defendants infringed the copyright of the plaintiff and whether Defendant 2 had the perpetual right to exploit the music in the music belonging to the plaintiff’s father in any format?The plaintiff, in her plaint, contended that after the period specified in the agreements, including the extended period, expired, Defendant 2 could not have exploited the aforesaid works. But, in the oral submissions made on behalf of the plaintiff, the entire emphasis was on the assignment of rights only in physical medium, and that exploitation of the same through non-physical medium or digital medium amounted to infringement of copyright. There was no reference to the expiry of the agreements and the effect on the rights assigned to Defendant 2 with the efflux of time. The Court found substance in the contention raised on behalf of the defendants that what was argued, was not pleaded, and what was pleaded, was not argued on behalf of the plaintiff. The Court agreed with the defendants that the assignment of rights in the subject works was in perpetuity and the restriction of time was only to indicate that such rights were perpetually assigned in the context of works that were created within the said time.The Court also perused the agreement dated 24-4-1967 and interpreted Clause 10 which recorded that the assignee would be entitled to the sole rights, inter alia, of use and performance (including broadcasting) throughout the world’s allotment of the records of the works. The Court was unable to read the limitation only to physical mediums as contended by the plaintiff and held that by using the term ‘by any and every means whatsoever’, it was demonstrated that the assignor assigned wide-ranging rights in favour of the assignee.
The contention by the plaintiff that expressions like ‘sound recording’ etc. that were added in the Act by subsequent amendments and were not mentioned when the agreement was executed, was rejected by the Court for the reason that the agreement itself assigned to the assignee, the sole right of using and broadcasting throughout the world by any means and every means whatsoever of the copyrightable work, created by the original owner.
The Court noted that the royalty payments made from time to time were accepted by the original owner as well as the plaintiff, and that the plaintiff conceded that royalty payments were received up to a certain point in time. The documents on record also referred to payments for non-physical exploitation of the works, which further indicated that the limitation of physical medium, being insisted upon by the plaintiff, was unacceptable, particularly considering the conduct of the plaintiff herself and her predecessor.
Consequently, the Court opined that the plaintiff failed to prove that the defendants infringed upon the copyright belonging to the estate of her father. It also held that Defendant 2 proved that it had perpetual rights to exploit the music and the songs belonging to the estate of the plaintiff’s father.
- Whether Defendant 2 had the perpetual right to grant licence to others for the use of the songs and whether Defendant 1 was a licensee in respect of the song used in the commercial advertisement?Since Defendant 2 had the perpetual right to use the music and songs, the Court opined that he also held the perpetual right to grant licence to others in respect of the said music and songs. The Court observed that Defendant 1 indeed had the licence in respect of the song forming part of the film ‘Talash’ as the copy of the licence agreement was placed on record and proved by it.
- Whether the defendants paid royalty to the plaintiff in a timely manner?
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The plaintiff alleged that royalty payments were not made but on the other hand the material-on-record showed crucial admissions made by the plaintiff. Even in cross-examination, the plaintiff admitted that certain amounts were received towards royalty payments. Thus, the Court held that royalty payments were made to the plaintiff by the defendants.Whether the plaintiff was entitled to accounts of profit as claimed in the suit?
In the interim judgement and order dated 8-5-2012 passed by this Court, a direction was issued to the defendants to maintain and render accounts by filing them twice a year in this Court. The Court opined that even Defendant 2 had conceded that as per the subject agreements, the plaintiff would be entitled to royalties and held that it would be open for the plaintiff and Defendant 2 to work out the aspect of payment of royalties based on the subject agreements.
The Court dismissed the suit and held that the plaintiff failed to make out a case for granting reliefs claimed by her, and further there was no question of payment of damages to the plaintiff.
[Rupali P. Shah v. Adani Wilmer Ltd., 2025 SCC OnLine Bom 2540, decided on 11-6-2025]
Advocates who appeared in this case :
For the Plaintiff: Ashish Kamat, Senior Advocate a/w. Rohan Kadam, Shirley Mody and Rucha Vaidya i/b. K. Ashar & Co.
For the Defendants: Naresh Thacker a/w. Shailendra Poria and Samarth Saxena i/b. Economic Laws Practice for Defendant 1; Veerendra Tulzapurkar, Senior Advocate a/w. Gaurav Mehta, Chakrapani Misra, Jigar Parmar and Pranali Vyas i/b. Khaitan & Co. for Defendant 2.
