Separate copyrights for a cinematograph film and the underlying work?

In a recent ruling regarding a remake of well-known Bollywood film Zanjeer, the Bombay High Court held that the copyright owner of a cinematograph film may not also be the owner of the underlying works (eg, the screenplay and story) unless such works have been assigned to it in a manner prescribed under Section 19 of the Copyright Act 1957.

Facts
In the early 1970s Prakash Mehra’s production house, Prakash Mehra Production (PMP), produced the film Zanjeer. In 2011 Prakash Mehra's son, Ajay Mehra, entered into a co-production agreement for a remake of the film with Flying Turtle Films (FTF). It was stated that the rights of the film were with the late Prakash Mehra. In 2012 Ajay Mehra accepted and recognised the rights of two other owners (two other sons of the late Prakash Mehra), who later entered into an agreement with Ajay Mehra Production Pvt Ltd (AMPL) granting the right to remake the film in Hindi and Telugu.

In April 2012 storywriters Salim Khan and Javed Akhtar issued a notice claiming moral rights in the film’s screenplay and contending that they had never authorised Amit Mehra, PMP or any other person to make a film based on their copyright possessed in the original screenplay and dialogue. They called on AMPL and PMP to procure the necessary licence from them before commencing production of the remake. The writers also alleged that any remake of Zanjeer would amount to infringement of the copyright vested in them.

Further, AMPL called on PMP to provide all the relevant documents to establish PMP’s ownership in the writers' original screenplay. PMP contested the writers' claim, asking them to provide documentary evidence to support it. In addition, owing to a default in the payment of consideration instalments by AMPL to PMP, PMP terminated the agreement, which was subject to opposition by AMPL.

PMP later invoked the arbitration clause of the agreement and filed a petition under Section 9 of the Arbitration and Conciliation Act 1996 seeking an interim injunction. The court appointed an arbitrator, who held that the balance of convenience was in favour of PMP and restrained AMPL from proceeding with the remake of the film. Disagreeing with this ruling, AMPL filed a petition under Section 37 of the Arbitration and Conciliation Act.

Underlying work to cinematograph film has separate copyright
The foremost question for consideration before the court was whether there was separate copyright for a cinematograph film and a literary work, and the effect of such copyright on the subject matter of this dispute. The court held that the definition of "cinematography film" under the Copyright Act indicates that it includes any work produced by any process analogous to cinematography. Further, the owner of the cinematograph film at the time of its completion is the author thereof. Section 13 of the act further establishes that there is separate copyright in respect of a cinematograph film and in relation to original literary, dramatic, musical and artistic works. The courts also relied on Sections 14(a) and (d) of the act, which deal with the meaning of "copyright" in relation to a literary work and a cinematograph film separately, thereby indicating that there is separate copyright for the film and the literary work.

Based on the definitions of "author" and "work", along with Sections 13 and 14, the court affirmed that the literary work underlying a cinematograph film is entitled to a separate copyright. Thus, simply having copyright in a cinematograph film without having copyright in the underlying work may not entitle the copyright owner of the film to assign "remake rights" (ie, rights to remake a new cinematograph film based on the story, storyline, script, screenplay or dialogue of the original film) to a third party.

Owner of cinematograph film can have copyright in underlying work
The court further held that Sections 17 to 19 of the Copyright Act make it clear that in the absence of a contract of service, employment or apprenticeship by the first owner of the copyright therein in favour of a third party, the author continues to be the owner of the copyrights therein. Further, a reading of Section 19(1) of the Copyright Act indicates that an assignment of copyright in any work is valid only if it is in writing and duly signed by the assignor or its authorised agent. Thus, it is clear that a copyright owner can assign its rights to a third party in a mode and manner as prescribed in Section 19 of the Copyright Act.

Therefore, the court held that since the literary work underlying the film Zanjeer had separate copyright, the assignment of the copyright in the film in favour of the petitioner would not amount to assignment of the copyright in the underlying literary work as well.

In addition to the copyright issue, the court also discussed the issue pertaining to termination of the agreement by the respondents at length.

Finally, the court held that during the pendency of arbitration proceedings, AMPL would be at liberty to proceed with remaking the film and that the release of the film would be subject to the final outcome of the arbitration proceedings, since more than 80% of the film had been completed.