No stay on OTT Release of film ‘83’: Bom HC | Netflix and Star India already have antecedent rights, both digital and satellite for 10 years

Bombay High Court

Bombay High Court: While refusing to restrain Star India and Netflix from streaming the film ‘83’ on their respective broadcasting portals, R.I. Chagla, J., observed that, prospective owner of copyright in a future work may also assign to any person the copyright in the future work.

Mad Man productions had filed a suit against Reliance Entertainment Studios Pvt. Ltd, Phantom Films Pvt. Ltd., Star India Pvt. Ltd., Netflix Global LLC, and others seeking a stay against the digital release of the film 83 for alleged copyright infringement.

Senior Counsel, Virag Tulzapurkar had applied for ad-interim relief seeking an order of injunction restraining the defendants 1 to 5 from releasing, broadcasting, telecasting and/or exploiting or using any of the elements of the cinematograph film through satellite, digital or like media.

In the present suit it was stated that the cause of action arose on 10th February, 2022 when the plaintiff learnt of unauthorized delivery of the subject film vide an email and that the cause of action was continuing one.

It was submitted that the plaintiff’s consent was required for delivery of the subject film for exploitation on satellite and/or digital media by defendants’ 4 and 5. Plaintiff had been vested 37.5% of intellectual property rights in the subject film such that the plaintiff, defendants 1 to 6 would hold intellectual property rights.

Under Clause 22 of the Consent Terms, it was provided that the exploitation rights of the subject film shall immediately vest exclusively and absolutely in the Plaintiff for the period after the ‘First Cycle’ as defined in what is referred to as the ‘83 Agreement’.

The OTT platforms argued that they had been granted rights through agreements which were not under challenge, way before the consent terms between Mad Man and Reliance. They also contended that Mad Man’s contractual rights would begin only after 10 years, till then Reliance had exclusive rights over the film.

High Court noted that the third-party rights which included the respective Satellite and Digital Rights of defendants 4 to 5 were already created in respect of the subject film “83”. Further, it was observed that all intellectual Property Rights and exploitation rights shall immediately vest in the company, i.e. defendant 3 subject to following rights already granted to third parties as on the date of award.

Bench opined that there was no dispute insofar as the agreements respectively assigning and licensing the Satellite and Digital Rights in favour of defendants 4 and 5.

In Court’s prima facie view, a reading of sub-clauses as well as clause 31 which provided for obtaining any and all necessary third party approvals in whose favor any right or interest created in respect of the Film “33”, makes it clear that these clauses would necessarily apply to future agreements entered into between the Defendant No. 1 and third parties for exploitation of Digital and/or Satellite Rights of the subject film.

Hence High Court held that prima facie, the plaintiff cannot claim any right to intellectual property over and above such antecedent rights already created in favor of defendant 4 and 5.

Defendant No. 4 and Defendant No. 5 having antecedent Satellite Broadcasting Rights and Digital Rights respectively for the period of 10 years defined as the ‘First Cycle’ cannot be restrained from exercising such rights. The Plaintiff is vested with the exploitation rights in the subject film only after the period of the First Cycle.

It is provided that the owner of copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copyright either wholly or partially and either generally or subject to limitations and either for the whole of the copyright or any part thereof.

In Court’s prima facie view, the Plaintiff is not entitled to be granted ad-interim injunction restraining either the Defendant No. 1 and/or Defendants 4 and 5 from exploiting or using any elements of the subject film through satellite and/or digital media without prior written consent of the Plaintiff. [Mad Man Film Ventures (P) Ltd. v. Reliance Entertainment Studios (P) Ltd., 2022 SCC OnLine Bom 625, decided on 16-3-2022]


Advocates before the Court:

Mr. Virag Tulzapurkar, Senior Counsel with Mr. Sameer Pandit and Anuj Jain i/b. Wadia Ghandy & Co. for the Applicant / Plaintiff.

Mr. Venkatesh Dhond, Senior Advocate with Mr. Prasad Shenoy, Mr. Saket Mone, Mr. Abhishek Salian and Mr. Devansh Shah i/b. Vidhii Partners for Defendant No.1.

Mr. Sharan Jagtiani, Senior Advocate with Mr. Thomas George, Ms. Tanvi Sinha, Mr. Mudit Tayal, Mr. Priyank, Ms. Aishwarya Parameshwaran i/b. Saikrishna & Associates for Defendant No.4.

Mr. Ashish Kamath, with Mr. Thomas George, Ms. Tanvi Sinha, Mr. Mudit Tayal, Mr. Vismay Malkan, i/b. Saikrishna & Associates for Defendant No.5.

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