Bombay High Court Says Perpetual Copyright Assignments Include Digital Rights

Bombay High Court Says Perpetual Copyright Assignments Include Digital Rights

Introduction

The Bombay High Court has delivered a significant judgment in the case of Rupali Shah v. Adani Wilmar Limited, ruling that copyright assignments made under decades-old agreements encompass exploitation through digital and non-physical mediums, even if such technologies were not contemplated at the time of signing.

Factual Background

The plaintiff, Rupali Shah, is the daughter of the late OP Ralhan, a film producer. Shah filed a suit seeking to restrain Saregama and Adani Wilmar from using musical works from films produced by her late father. The rights to these musical works had been assigned to Saregama in perpetuity, and Saregama had then licensed one of the songs to Adani Wilmar.

Procedural Background

The dispute arose after Shah objected to the use of the iconic song 'Meri Duniya Hai Maa Tere Aanchal Mein' from the film Talash in an advertisement by Adani Wilmar. Shah claimed that the rights in the underlying musical works had reverted to her following the expiry of the original agreements and could not be exploited through digital or non-physical mediums. Saregama countered that it had been assigned the rights in perpetuity and had lawfully licensed the use of the song to Adani Wilmar.

Issues Involved

1. Copyright Assignment: Whether the copyright assignments made under decades-old agreements encompass exploitation through digital and non-physical mediums.

2. Perpetual Assignment: Whether the assignment of rights was perpetual and included the right to exploit the works by all means.

3. Effect of Statutory Changes: Whether the statutory changes to the Copyright Act affected the rights that had already been lawfully assigned.

Contentions of the Parties

Plaintiff's Contentions: Shah contended that the rights in the underlying musical works had reverted to her following the expiry of the original agreements and could not be exploited through digital or non-physical mediums. Shah also argued that perpetual assignments could have expiry dates.

Defendant's Contentions: Saregama countered that it had been assigned the rights in perpetuity and had lawfully licensed the use of the song to Adani Wilmar. Saregama argued that the assignment of rights was perpetual and included the right to exploit the works by all means.

Reasoning & Analysis

The bench of Justice Manish Pitale observed the agreement between Ralhan and Saregama's predecessor and concluded that the assignee had the right to exploit the works by all means. The Court held that the use of the words "by any and every means whatsoever" in the agreement made it clear that the assignee had the right to exploit the works by all means.

The Court also held that the statutory changes to the Copyright Act did not retrospectively affect rights that had already been lawfully assigned. The Court rejected Shah's argument that perpetual assignments could have expiry dates, holding that the assignment of rights was perpetual and the restriction of time period was only to indicate that such rights were perpetually assigned in the context of works that were created within the said time period.

The Court identified multiple factors confirming the perpetual nature of the assignment, including the fact that the original producer OP Ralhan had included these rights as "property" in his will, suggesting that he believed that the assignments were indefinite. Additionally, both Ralhan and subsequently his daughter had accepted royalty payments over decades, including payments for digital exploitation, demonstrating consistent recognition of the defendants' ongoing rights across all platforms.

Final Judgment

The Court ruled that Saregama has perpetual rights to exploit the music and the songs belonging to the estate of OP Ralhan and also holds perpetual right to grant licence to others in respect of the said music and songs. The Court dismissed the suit, holding that parties cannot retroactively claim that digital or streaming rights were not included in perpetual assignments made before such technologies existed.

Final Order

The suit was dismissed, and the Court held that Saregama has the right to exploit the musical works in question.

Implications

This decision has significant implications for the music industry, particularly in the context of copyright assignments and exploitation of musical works through digital and non-physical mediums. The Court's decision clarifies that perpetual assignments of copyrights can include the right to exploit the works by all means, including digital and streaming platforms, even if such technologies were not contemplated at the time of signing.

In this case the plaintiff was represented by Mr. Ashish Kamat, Senior Advocate along with Mr. Rohan Kadam, Ms. Shirley Mody and Ms. Rucha Vaidya, Advocates.