“Do I own any rights in the works I create?”, “Who owns the copyright in the underlying works of a film?” – These are a few questions that cross any author’s mind when they author/create works. The Hon’ble Delhi High Court in RDB and Co.HUF vs Harper Collins Publishers India Private Limited[1] has considered these questions.
Late Mr. Satyajit Ray (“Author”) was commissioned by RDB Co.HUF (“RDB”) to write a screenplay and direct the film, ‘Nayak’ (1966) (“Film”). Mr. Bhaskar Chattopadhyay, novelized the screenplay of the Film, and Harper Collins Publication ( collectively “Defendants”) published the novel in 2018. The Defendants obtained novelization rights from Society of Preservation of Satyajit Ray Archives (“SPSRA”), of which Mr. Sandip Ray (the Author’s legal heir) is a member. RDB claimed that the Film and copyright in the screenplay of the Film vested with RDB, and accordingly alleged that the novel was infringing RDB’s rights. The Defendants asserted that the copyright vested with the Author as he wrote the screenplay, which copyright was inherited by Mr. Sandip Ray after the Author’s demise. Therefore, the Defendants contended that the novel is not infringing.
The Court, through an interplay of Sections 2(o), 13(1), 13(4), 17(a), 17(b), and 17(c) of the Copyright Act, 1957 (“Act”) held that: (i) the screenplay of the Film is an original literary work; (ii) cinematographic films are a separate class of work and have separate copyright; (iii) the copyright in cinematographic film and the literary works included in the film are separate and can co-exist; (iv) author is the first owner of the literary work unless covered under the provisos of Section 17 of the Act which provides for change in ownership only in case of a ‘contract of service’; and (v) ‘contract for service’ and ‘contract of service’ are different. The Court evaluated the agreement that was executed between the Author and RDB and found it to be a contract for service, wherein RDB engaged the Author to write the Film in consideration of certain fees. Since the Act doesn’t expressly provide for copyright ownership under ‘contract for service’, and the agreement had no assignment of copyright in favour of RDB, the Court held that the Author is the copyright owner of the screenplay of the Film. Therefore, the novel published by the Defendants is not infringing.
It is noteworthy that while the Court did take into account the fees that have been paid by RDB to the Author under their agreement, for the creation of the screenplay of the Film, the Court applied a narrow construction to Section 17(b) of the Act, which does not provide for “literary works” as part of the copyrightable works that can be commissioned for valuable consideration. However, “cinematograph film” has been included. It can certainly be argued that in commissioning a cinematograph film, commissioning screenplays and other works is inevitable. Therefore, screenplays commissioned for films, by extension, should fall into the scope of Section 17(b).
Ultimately, the Court recognized the Author’s ownership of copyright in the screenplay only because the Act does not provide enough clarity on ‘contract for service’/ ‘commissioned works’. This lacunae in the Act could leave producers in a precarious position if an express assignment of works does not form a part of their agreements with the authors. The producer could be barred from exploiting the underlying works beyond the film, which could expose the producer to losses due to its incapacity to recoup the huge investments it has made for the film. The film could also face competition, and even potential devaluation, due to the simultaneous exploitation of the copyrights in the underlying works in question by third parties.
This clear movement towards protection of creators can also be evidenced in the Copyright Act (Amendment) Bill, 2010 which proposed joint ownership between the principal director (as an author, due to intellectual contribution) and the producer of a film. The Standing Committee however, received oppositions from various industry stakeholders highlighting the need to recognize the producer’s efforts, risks and investments towards the creation and monetization of a film, and accordingly, the need for the producers to be sole owners of films.
Elaborating on the above, the works are also created basis the producer’s requirements and requirements and therefore, it is equitable, for the producer to own the copyrights not just in the film but also in all underlying works, against the payment of valuable consideration. It is time that the Act is amended to provide clarity on copyright ownership for underlying works that are ‘works-made for hire’ or ‘commissioned works’, in a manner that has been recognized internationally. Needless to state, the authors’ right to receive royalties from the exploitation of their works can remain unaffected, making it beneficial to the producer and authors.
Author: Ms. Anushree Yewale, Associate Partner.
Footnotes
[1] 9516/2021 in CS(COMM) 246/2021 (2023:DHC:3551)