Tamil film industry aka Kollywood
The Nayanthara Dhanush copyright battle is escalating. Arguments are scheduled for the 26th and it is bound to be an interesting showdown. There have been two important developments after the parties filed their respective pleadings before the Madras High Court on the issue of copyright infringement involving the alleged unauthorized use of behind-the-scenes clips. First, the Madras High Court clarified that it has the necessary jurisdiction and that pre-suit mediation was not required in this case (see pdf). In this, there seems to be some interesting mixing of IP concepts, that this post will look into a bit later. Secondly, it seems from news reports (see here and here) that Wunderbaar has expanded their argument – from claiming copyright over the performance rights, they are also now arguing that they own the copyright over the characters and costumes.
The issue of Jurisdiction:
The question of jurisdiction in this case was simple: Did the cause of action arise within the jurisdiction of the Madras High Court to entertain the suit? As a quick reminder, cause of action can be seen as a set of actionable facts which, when proved by the plaintiff, would give way to relief from the Court (as held by SC in ABC Laminart v AP Agencies 1989).
Likewise, the question of jurisdiction is slightly different in the context of Chartered High Courts like Madras. As the Order explains, “Clause 12 of the Letters Patent of the High Court gives the High Court the power to hear certain suits.” The Letters Patent Act (LPA), a pre-independence era legislation, established the High Court of Madras. It enables the HC to hear certain suits in the exercise of its ordinary original civil jurisdiction (in other words, to hear the matter at the first instance) when the cause of action arose completely or with the Court’s permission if it arose partially within the Court’s jurisdiction. After surveying the plaint, the Court concluded that the majority of the cause of action arose within the Court’s jurisdiction as the artist agreement was signed within the Court’s jurisdiction. Additionally, the trailer and the Netflix Documentary were telecasted all around the globe, including Chennai, and all the parties other than Netflix have their offices within the MHC’s jurisdiction.
Pre-suit mediation or Urgent interim relief?
Netflix also sought rejection of plaint on the ground that Wunderbar was skipping the requirement to undergo pre-institution mediation as mandated under Section 12A of the Commercial Courts Act. On this, the Court stated that there was an urgent necessity to hear the suit and decide the issue of interim relief. To be clear, as per the existing case laws, earlier discussed by Samridhi and Shravya, pre-institution mediation under the Commercial Courts is mandatory unless one can show that their plaint and other documents “contemplate an urgent interim relief”. The Court is at liberty to determine the existence of this urgency, however there is no hard and fast rule as to how this urgency standard applies. The Court in this case does give some statements in this regard – notably that the cause of action is continuing – but some of the reasoning appears to be confusing and/or weak.
When it discusses whether the suit contemplates any urgent interim relief, the Court, at two places in the judgement, borrows language and factors from Trademark law to justify the need for urgent interim relief in a suit involving Copyright infringement. In para 27 of the order, the Court says, “suit has been filed on an urgent basis since every day the infringed footage is being broadcasted, which has resulted in a loss to the first respondent/plaintiff and a delusion of its copyright.” I’m not sure what ‘delusion’ can mean in this context, and furthermore, I cannot think of any copyright related concept that might be connected to the standard word ‘delusion’. I believe the Court may have been referring to dilution and not delusion – but dilution is a trademark concept.
In para 29, wherein the Court states the propositions derived from previous decisions, it also states that it agrees with Wunderbar’s submissions and that the “Court must be cautious and circumspect in intellectual property suits in rejecting the plaint for non-compliance of Section 12A of the Commercial Courts Act since in intellectual property rights matter not only the first respondent’s/plaintiff’s economic interest but also public interest of safeguarding the members of the public from deception and confusion are required to be considered;”
It’s unclear where this comes from though. One place I could trace this proposition to is Novenco Building & Industry vs Xero Energy Engineering Solutions, a case discussed by Samridhi previously in the blog. However here, the Court was simply summarizing Noveco’s arguments and would go on to decide the issue on other grounds. See this para below which was taken from Novenco.
“According to him, in intellectual property right matters, it is not only the plaintiff’s economic interest but it is the public interest i.e. involved, as they need to be safeguarded but also public interest where the members of the public need to be safeguarded from deception and confusion of the product.”
This brings us to an interesting situation. The adoption of this line of reasoning becomes confusing as it states trademark law, in a copyright matter, when presumably borrowing a legal argument that uses trademark language, in a patent and design matter (!). Regardless, if one replaces the trademark language with a general understanding of equity in IP matters, the proposition does hold weight. That is to say, in IP matters, it is not only about the plaintiff’s economic interests, but also public interest is involved.
Copyright in Fictional Characters and Costumes:
As discussed in the previous post, it was argued that Nayanthara had assigned all her performance rights to Wunderbar in relation to the movie. In addition to these arguments, there have been claims made per news reports (here and here) that the production house has copyright over both the fictional characters and the costume. I wish to point out that there is some slight confusion in the news reports on this, and it is slightly unclear whether copyright over fictional characters is being claimed. One might get more accurate details as the case itself moves forward. Hence, I will touch on the question of characters, costumes and their copyrightability.
Copyright in fictional characters has been extensively discussed in the blog. Interestingly, they have also been subject to protection under personality rights. Copyright protection for characters relies mostly on US case law, and Indian case laws give ambiguous signals about their existence (see here).
In Arun Kumar, for instance, the Punjab & Haryana HC adopted a strict interpretation limiting ‘works’ to those listed in Section 13 (read with Section 16); seen in that light, it is questionable as to whether these characters and costumes would receive protection. Nevertheless, even in the hypothetical – which is not an easy one to assume – that it is successfully argued to receive protection, would the usage of the clip be considered copyright infringement? Questions of fair dealing and more importantly, de-minimis discussed previously need to be looked at again for this claim too. The factual questions around the actual length of the clip also become more relevant here ( Nayanthara and her husband say 3 seconds, Netizens and possibly Wunderbaar say 37 seconds, and when I sat and watched the whole documentary, I found it to be 10 seconds!)
With the arguments slated to start in the last week of February regarding the grant of interim relief, hopefully, the Court will address these issues in the interim relief hearing that is coming up soon.
I wish to thank Swaraj, Praharsh and Gayathri for their valuable input on the post
