Masakali 2.0: Unconsented Song Remakes and Ownership of Copyright

We’re pleased to bring to you a guest post by Akshat Agrawal, discussing the issues relating to first ownership of copyright in musical works in light of the recent Masakali 2.0 remake controversy. He offers a detailed analysis on whether producers, in absence of an assignment, have a right to remake or authorize a remake of songs without the consent of the composers.

Akshat is a 5th year student at the Jindal Global Law School, Sonipat. He’s written a guest post for earlier as well, which can be viewed here.

Masakali 2.0: Unconsented Song Remakes and Ownership of Copyright

Akshat Agrawal

Immanuel Kant once said, “Commercial intermediaries between authors and audiences provide only the mute instruments for delivering the author’s speech to the public; they cannot assume the capacity to dictate or distort this speech.” The recent release of Masakali 2.0 renders this statement irrelevant and meaningless. To contextualise this, the Masakali 2.0 remake has been produced by T-Series, the same record label which produced the original Masakali. A.R. Rahman, composer/author of the original song, had condemned this remake in his tweet here, which affirms my assumption that this was unconsented and he had no say, either because his rights had already been extinguished contractually (which is most likely to be the case) or he was not considered to own any rights in the first place due to the flawed interpretation of law on first ownership of copyright in musical works incorporated in films, in favour of the producers.

In light of this issue, I discuss in this post the issues relating to first ownership of copyright in compositions of songs and whether producers, in absence of an assignment, have a right to remake or authorize a remake of these songs without the consent of the composers. As regards the validity of the assignment of the right to create derivative works in respect of musical works to the producers and the application of composers’ moral rights vis-à-vis remakes, I intend to discuss these issues in another piece later.

First owner of copyright in a musical work – composer or producer?

As per Section 17 of the Act, the composer, being the author of a musical work, is the first owner of copyright in it, unless certain conditions exist. As per proviso (c) to the section, if a work is made in the course of employment under a contract of service and there is no agreement to the contrary, it is the employer who would be the first owner and not the author. So, in case of a musical work made under a contract of service with a producer, the producer would be the first owner of copyright in the composition and not the composer (unless agreed otherwise).

Further, even though proviso (b), which deals with commissioned works, does not refer to musical works, as per its flawed interpretation by the Supreme Court in 1977 in IPRS v. EIMPAA, even if a composition is commissioned by the producer for a film (and not created under a contract of service), the film producer would be the first owner and not the composer (unless agreed otherwise).The decision has been relied upon to argue (for example, see here) that producers are first owners of copyright in literary or musical works incorporated in a film­­­­ irrespective of whether they are commissioned or created under a contract of service. 

The position has remained uncertain despite the 2012 amendment to the Act which inserted a second proviso to Section 17 (in effect) providing that authors of works incorporated in a film would be the first owners of copyright in those works. The power dynamic and inequality in bargaining power in the music industry, as explored in various decisions in the West, as well as the dominance of around five major music labels in Bollywood, leaves composers with little choice to retain copyright as remaining independent follows little chance of commercial success.

In my opinion, for the reasons discussed below, it is only the composers who are the first owners of copyright in the compositions incorporated in a sound recording or a film, whether created before the 2012 amendment or after that.

Application of proviso (b) on commissioned works to musical works

Proviso (b) provides that in the case of a cinematograph film made, for valuable consideration at the instance of any person, such person, in the absence of a contract to the contrary, will be the first owner of copyright. It does not mention musical works. Although it does speak of a cinematographic film made for valuable consideration at an instance of another person, that reference is to a film as a whole and not the individual works incorporated within the film. However, in IPRS, the Court held that even a musical work created for valuable consideration to be incorporated in a film, shall be firstly owned by the producer. This, as argued in earlier posts here and here (and in detailed pieces here and here), is a flawed interpretation of the provision.

As far as the question of applicability of IPRS in the case of Masakali (it being a song made prior to the 2012 Amendment Act) is concerned, I have argued elsewhere that IPRS does not hold any binding value, due to it being rendered per incuriam and mindless of the various precedents of the co-ordinate bench of the SC in the case of Dharangdhara Chemical Works Ltd. v. State of Saurashtra as well as Silver Jubilee tailoring house v. Chief Inspector of shops (contrary view expressed in a comment to a previous post on the blog here).  Hence, if Masakali was a commissioned work, in my opinion, Rahman is the first copyright owner of the work.

Application of proviso (c) on works created in course of employment to musical works

As provided by proviso (c) and confirmed in IPRS, if a work including a composition is made under a contract of service, the producer would indeed be the first owner of copyright in it. However, can the relationship of a composer and a producer really be said to be that of and employer and an employee? In my opinion and as also argued here and here, usually not. In Zee Entertainment v. Gajendra Singh and Ors., the Bombay High Court had noted that the term ‘contract of service’ as used in Copyright Act is to be interpreted using the same principles/tests as applicable under other laws. The Court highlighted the importance of the “principled employment and the organization test” as well as the “exclusivity” test, in conjunction with the all-important, but not exclusive, “control test” to determine the existence of a contract of service. The same was reiterated by the Bombay HC in Exegesis Infotech (India) v. Medimanage Insurance Broking. None of these factors of continuity of service, exclusivity, or principled employment, along with complete control and supervision, are fulfilled in case of the relationship between a composer and a producer. Hence, the assumption of an existence of an inherent contract of service as made by the Madras HC in the recent Ilaiyaraaja case (para 19, covered here on the blog) and consequent copyright ownership of producers is flawed. I have also discussed this argument in detail here.

Thus, the producers are not the first owners of copyright in Masakali under proviso (c) as well, in my opinion.

Effect of second proviso inserted by 2012 amendment : Can it be waived?

Even if IPRS’ position on first copyright ownership of producers is accepted to be correct, it was overruled by insertion of the second proviso to section 17 by the 2012 amendment. As per this proviso, even if a musical work is considered to be commissioned or created under a contract of service, the composer would be the first owner of copyright in the compositions included in a film. However, the legal position of first ownership of copyright in works created for incorporation in a sound recording (but not a film) remains unclear. There is a legislative need for this clarification.

It has been argued by some (for instance, see here) that despite the insertion of this proviso, the producer can be the first owner of copyright in a musical work if the agreement between the composer and the producer includes a clause to that effect, thereby waiving the application of this proviso. It is worth noting that within section 17 itself, various provisions specifically permit the parties to enter into ‘a contract to the contrary’; however, there is no such phrase used in this proviso. If the Legislature intended to allow the parties to contract out of this proviso as well, they would have expressly provided for the same. In absence of the same, a waiver of the application of this proviso would not be valid in my opinion (as also noted in this post here). Also, it would defeat the entire purpose of its insertion, which was primarily aimed at protecting the authors against the rampant exploitation of the producers, and addressing the inequality in bargaining power. Such provisions, as indicated by Prof. Basheer here, can be reflective of countervailing public policy. Thus, a contractual waiver of the proviso (much like a waiver of a beneficial provision under the rent control legislation in a case) can very well be argued to be opposed to public policy and therefore void under Section 23 of the Indian Contract Act. So, in the present case, if Rahman has contractually waived his rights as the author and first owner of copyright in the Masakali composition, such waiver is invalid in my opinion and he would still own copyright in it (unless he’s assigned it to the producer).

Further, the song being made prior to the 2012 amendments shall not change this position as, in my opinion, the second proviso to section 17 must be interpreted to have retrospective application. I have argued this in detail here. Briefly, as this proviso was incorporated recognising a prevailing injustice in the Act, and upon the recommendation of a change by the judiciary (Justice VR Krishna Iyer in IPRS), it acts as a legislative remedy (as also reflected by Prof. Basheer in his post here). And in light of the judgment of the SC in the case of BCCI v. Kochi Cricket (specifically paragraphs 45 and 46), it is an essential principle of statutory interpretation that a legislative provision brought in through an amendment to remedy a sheer injustice prevailing in the Act must be given a retrospective operation. This is because the legislature could not have intended to foster injustice in the first place.

Therefore, by virtue of retrospective application of the second proviso to section 17 (which cannot be waived in my opinion) also, Rahman is the first copyright owner of Masakali.

Does producers’ copyright in sound recording/film include the right to remake a song?

Some may also argue that even if composers own copyright in the musical work, the producer, being the copyright owner of the work incorporating it, has the right to make derivative works in respect of the underlying musical work. In the case of Mr. Thiagarajan Kumaraja v. M/S Capital Film Works (India) (covered on the blog here and here), the Madras HC held that the exclusive right of a film producer to make a copy of the film or communicate it to the public, as granted under section 14(d), includes the right to dub, but not a right to remake the film. This limited right is analogous in the case of sound recordings as well (under section 14(1)(e)), which indicates that both film or music producers do not have an inherent right to make or authorize the making of derivative works in respect of the works incorporated in their films or recordings, without the consent of the copyright owners of the underlying works.

Therefore, the producers of Masakali could not have remade the song by virtue of their copyright in the sound recording/film incorporating it, without obtaining Rahman’s consent.

Does even an assignment by composer give producers the right to remake the song?

So, in my opinion, it is Rahman who’s the first owner of copyright in the original Masakali composition. This is irrespective of whether it was commissioned by or considered to be made under a contract of service with the producers. Therefore, unless he’d assigned or licensed his copyright, the producers did not have a right to remake (or authorize another to remake) Masakali. That said, does even an assignment of copyright by composers give the producers the right to remake? Is an assignment of a right to remake valid under law? Further, do unauthorised remakes violate the moral rights of composers? I intend to look into all these questions in another piece, later.