Case analysis - Zee Entertainment Enterprises vs Ameya Vinod Khopkar

By Sameera Arif

Bench: B.P. Colabawalla

The controversy in this suit had risen out of the production of the movie De Dhakka-2 by the defendants. The plaintiff claimed that the film in question was apparently a sequel of the film titled "De Dhakka", an intellectual property over which it had sole, absolute and exclusive rights. The case deals with a claim of infringement of copyright concerning the film De Dhakka where the plaintiff had sought a permanent as well as an ad-interim injunction restraining the Defendants from producing a sequel of the film under the title ‘De Dhakka 2. The grant of an ad-interim injunction was refused by the court as the Assignment Deed between the respondents and the plaintiff did not prima facie vest any rights to produce a sequel in the latter.

Facts of the case

The plaintiff, Zee Entertainment Enterprises Limited (ZEE) approached the Bombay High Court seeking a permanent and an ad-interim injunction

against four defendants ,Ameya Vinod Khopar and another producer (defendants No. 1 and No.2) and Satya Films (defendant No. 4, owned by defendant No. 3) from releasing "De Dhakka- 2"claiming that it was evidently a sequel to De Dhakka, the original film they had exclusive rights over. The plaintiff claimed that the defendants who were the original producers of the film have assigned all their rights over the film to the plaintiff through an Assignment Deed. The plaintiff also claimed that the rights over the title of the film were transferred from the defendant to the plaintiff through the assignment deed and therefore the defendants could not use the same to make their film. The plaintiff sought a permanent injunction against the defendants claiming copyright in the underlying literary work including title, characters, script and dialogues in De Dhaka. There was a phrase “Negative rights or any other rights that may be discovered or come in the future” mentioned in the deed relying on which the plaintiff made a claim over all rights concerning the film and future works and therefore, over De Dhakka-2

Key arguments by the Plaintiff

• That the impugned film is a sequel of "De Dhakka".

• That the assignment deed when read as a whole and in its entirety assigns not only the film De Dhakka but also all the other rights including that of the title in favour of the plaintiff.

• That as per the Deed of Assignment, the right to make a sequel to the Original Film "De Dhakka", is vested in the Plaintiff and the Defendants could not produce a sequel without the plaintiff’s authorization.

• That by using the title "De Dhakka-2" for the disputed film, the

  Plaintiff has a cause of action against the Defendants for passing off.

Key arguments by the Defendant

• That the plaintiff has no copyright in respect of the title of the movie "De Dhakka" or in respect of the production of a sequel to the said movie

• That the Negative Rights granted to the Plaintiff under the Deed of Assignment do not include any right over the title "De Dhakka" or the right to produce a sequel of the said Original Film.

• That the impugned film has an entirely different script, different dialogues, different concept, a different character, different locations as well as different music. That it is neither a remake nor a copy or in any manner similar to the original movie "De Dhakka".

Ratio Decidendi

To resolve the dispute, Justice Colabawalla assessed the Assignment Deed in corroboration with the precedent set in Narendra Hirawat & Co. v. M/s Alumbra Entertainment & Media Pvt. Ltd & Ors. In the said precedent, the conspicuous absence of the term sequel in relation with the film Sarkar in its assignment deed led to the conclusion that a sequel does not fall under the ambit of the assigned right to remake. Similarly, De Dhakka’s assignment deed does not make any mention of a sequel therefore, the plaintiff does not have any right over the sequel of De Dhakka as it was not assigned to them in the first place. On reading the Deed of Assignment as a whole ,it could not be found that the parties intended to assign the plaintiff any other right apart from what is explicitly mentioned in the deed, namely the right over the film De Dhakka and its exploitation thereof on all platforms whether existing or to be discovered or developed in the future.

As for claim over the title of the film, the court elucidated upon Section 13 (1) of the Copyright Act according to which the works in which copyright subsist does not include the title of work as, by itself a title is in the nature of the name of a work and is not complete without the work.

For the claim against passing of, the court relied on the affidavit produced by the defendants stating that there is no similarity between the character, music or dialogues of the two movies and "De Dhakka-2" is neither a re- make nor a copy in any manner similar to the Original Film therefore the argument of passing off was of no avail to the plaintiff.