India: A Copyright Battle Between Sholay Media And Vodafone Essar – Delhi High Court

In Sholay Media & Entertainment Pvt. & Anr (Plaintiff) v Vodafone Essar Mobile Services Ltd. & Ors (Defendants); the copyright work of the film Sholay had been commercially exploited on mobile and digital platforms without obtaining any license or permission from the Plaintiffs. Therefore, the Plaintiffs sought for interim injunction against such infringement acts by the Defendants.

All the four Defendants to the suit contended to the interim injunction. The assignment of the rights were done in the following order:

• Predecessor of the Plaintiff - vide deed of assignment dated 7^th August, 1978, granted certain rights in the film Sholay to Polydor of India (now rights acquired by Universal Music India Pvt.Ltd- Defendant No.3)
• Universal has an agreement with Phonographic Performance Pvt.Ltd (PPL- Defendant No.4), a copyright society administering copyright in sound recordings for music companies.
• Vodafone Essar Mobile Services Ltd and Vodafone Essar Ltd (Defendants No. 1 and 2) were vide agreement dated 15^th September, 2006 granted all rights for exploitation of sound recording on mobile cellular service by PPL.

The Plaintiffs argued that the assignment extended to Universal pertained only to certain rights, i.e. (i) the right to make records for sale and distribution and (ii) the right to communicate the sound recordings by way of radio broadcast. The remaining rights were therefore still reserved by the Predecessor of the Plaintiff.

The main issue here was whether an absolute right to use the sound track including songs and music by way of ringtones, truetones, callback / caller tunes etc. (herein after referred to as "digital rights") were assigned to Polydor of India (Universal) vide Assignment Deed in the year 1978 or the right to use sound track on digital and mobile platform continued to rest in the Plaintiff company.

The Honorable Judge made the following observations:

• In determining as to whether the assignment of the copyright in the sound recording to Polydor of India extended wholly or partially as per Section 18 of the Copyright Act depended solely on the construction of the term of the Assignment Deed, and opined that the contract could be interpreted both ways.
• 'Record' was defined to include disc, tapes or any other device as embodied, so as to be capable of being produced therefrom and all such devices as were known to the parties at the time of the assignment or sounds which could thereafter be developed or known. The Plaintiffs contended that the general expression 'any other device' in clause 1(b)(ii) of the Assignment Deed had to be read ejusdem generis with the expression 'record'. It was observed that if this rule of ejusdem generis were applied it would mean, that the word 'record' would compromise physical device and not a digital device.
• Clause 8(a) of the Assignment Deed provided for the purpose of reckoning the royalty. It was observed that the Plaintiff company was duly accepting royalty from Universal in respect of digital media without any protest. Vodafone had been using the sound recordings of Sholay and did not dispute the right of the Plaintiff company to get royalty in terms of the agreement between the Plaintiffs and Polydor of India (Universal). It was observed that in these circumstances, the balance of convenience was in favour of allowing the Defendants to continue to use the sound recording through digital/ mobile media while simultaneously safeguarding the financial interest of the Plaintiff company.
• It was further observed that Clause 5 of the Assignment Deed provided that the assignee was the owner of the original plate (used for making copies) and any extensions or modifications thereof made under the provisions of the agreement. If the word 'device' used in clause 1(b)(i) of the Assignment Deed had been interpreted to include digital device considering that it was only another facet of physical device and therefore should be included in the definition of record as given in the deed, that would give right to the defendants to exploit the sound recording on digital as well as mobile platform. No specific right was retained by Sholay Media & Entertainment (the assignor) as far as sound recording of the film was concerned and, therefore, that the exclusive right to exploit the sound recording of the film in any manner came to be vested in Vodafone Essar Mobile Services Ltd (licensee) and therefore exploitation by use of scientific and technological device developed after the assignment could be done by the assignee and not the assignor. Thus, it was observed that the assignment not only did not restrict the right of Vodafone Essar Mobile Services Ltd (the assignee) to exploit the right by existing technology but also covered the exploitation by the technology, which could be developed in the future.

It was therefore in light of the aforementioned reasons that the Court did not grant the injunction and allowed Vodafone (Defendants No. 1 and 2) to continue using the sound recordings of the film Sholay through digital and mobile media, subject however to certain conditions.

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