The Last-Minute Injunction in IPR Matters – Can Urgency Itself Stymie the Release?
THE LAST-MINUTE INJUNCTION IN IPR MATTERS – CAN URGENCY ITSELF STYMIE THE RELEASE?
This Article Examines the Approach of Indian Courts to Nth Hour Applications Seeking Injunction Restraining Release of a Film
With the post-COVID world gradually moving back to crowded spaces, one hopes that the return of the Friday box-office release will not be far behind. If so, what will be fate of the filmmaker's pet peeve – last-minute injunction battles before courts on the eve of the release? The coveted and limited real estate of 'cinema screens' makes eleventh hour injunctions a particularly high-stakes risk for the producer, and the chance of a monetary settlement for an opportunistic litigant.
A producer's nightmare is the application, moved at the eleventh-hour, for an injunction restraining release of a film (which contains several intellectual property rights - including literary, dramatic, musical, artistic and cinematographic works, where copyright is vehemently protected and sought to be exploited). We examine here, the approach of Indian courts to these demands.
A recent trend has been an emotionally charged plaintiff rushing to court for an urgent injunction, on the cusp of big-ticket production – alleging that the plaintiff's copyright or other intellectual property rights, have been infringed, or more creatively, that it otherwise causes harm to the plaintiff's business or reputation, or even religious sentiment.
These applications and their timing could be genuine – as where the plaintiff genuinely becomes aware of the cause of action only just before the film's release. But not unusual is also the opportunistic plaintiff – who deliberately chooses to wait till the day before, in the hopes of drumming up urgency itself, as the basis for an injunction restraining the release. The opportunistic or mischievous plaintiff hopes that even with a frivolous case, the producer / studio will cave in with a generous monetary settlement. With tensions running high and millions in time-bound investment at stake in the form of contracts with exhibitors, satellite/ digital rights, holiday seasons, promotional event cycles etc., this is one nightmare that the producer keenly wishes away.
Given the overburdened Indian courts, civil actions, particularly in intellectual property matters are often won or lost at the interim stage, with the main suit on merits languishing pointlessly for years thereafter – something that was noted by India's Apex court over a decade ago.1
Indian courts are however known to act speedily and efficiently where interim relief is required, proving that they are alive to the commercial realities of a matter. Courts have approached these 'last-minute injunction' cases by applying recognized and long-standing principles of equity:
In establishing its entitlement to injunctive relief, the plaintiff must demonstrate:
• firstly, that it has a strong prima facie case, i.e. that on its pleaded case, it is likely to be successful on the merits;
• secondly, that the balance of convenience lies in its favor, i.e. that the non-grant of interim relief will cause more harm to the plaintiff, than the thereof would prejudice the defendant;
• thirdly, that should the injunction sought not be granted, the plaintiff would suffer irreparable / irretrievable harm.
In effect, the court must weigh one need against another and determine where the balance of convenience lies.2 If the plaintiff fails on any of the three limbs above, a Court will not ordinarily grant injunctive reliefs.
Additionally, the plaintiff must show urgency, something which is often the only real ground in a mischievous application for urgent ad-interim injunction; the argument being that the film's release should be stayed till the court has had a chance to hear the matter at length.
It is also a rule in equity, that a party seeking equitable interlocutory reliefs must come to court in a bona fide manner, with clean hands – also a facet of the doctrine of abuse of process, founded in public policy considerations. The court's discretion to grant interim relief has enabled a molding of this rule as an overarching smell-test (the burden lying on the defendant to show that the plaintiff's action is mala fide). Indian courts frequently apply these principles to question the timing of a last-minute application – particularly when the film has been publicized extensively prior to release.3
As such, the Bombay High Court noted that while a court will step up to secure a party's rights where there is "demonstrated urgency", to allow this in a case where the plaintiffs deliberately waited till the last minute, is grossly unfair not only to the court's infrastructure and hard-pressed staff but to other litigants waiting their turn. The Court observed that "The attempt is, clearly, to pressure the defendants into making a statement of some kind or, worse yet, to pressure the Court into passing some hurried pro tem order for want of time with little or no assessment on merits, a wholly unfair advantage. A plaintiff who waits till the last minute must face the consequences of a failed gambit of this kind."4
Where a plaintiff with full knowledge of facts, wasted time in correspondence and approached the court at the last-minute, seeking a stay on release of the film 'Mission Mangal', relief was refused. The court noted that the plaintiff had permitted the defendants to complete production of the film, create third-party rights and take all possible steps to release the film on a certain date, and as such, an injunction granted at that point, would result in serious prejudice to the defendant.5
Reliefs were denied where the plaintiff had sufficient notice and yet chose to move at the eleventh hour, making allowance or any adjustment. The Court noted that in such a case, "the plaintiff must be prepared to face the consequences.".6
The Delhi High Court refused to injunct release of the film "Hari Puttar" in a trademark infringement action, observing that the plaintiffs, after making half-hearted protests, thereafter squatted comfortably while the defendants took several steps towards a release of their film. The plaintiffs' conduct thus disentitled them to equitable relief.7
An injunction was also refused over an OTT release of the film "White Tiger" on a claim of copyright infringement.8 The Court found that the plaintiff had not brought any material on 9 to justify its nearly year-long delay in approaching the Court (choosing instead to move 24 hours before release), and observed that a blanket excuse invoking the COVID-19 pandemic would not suffice to unseat the significant financial stakes that the defendants had pinned on the release. The Court remarked that no matter how strong a plaintiff's case may be on merits, "any party approaching court at the end hour, seeking interlocutory indirection against the release of cinematographic film, is disentitled to any such relief."
Courts have however come to the aid of plaintiffs with genuine cases who may have had no option but to approach the Court at the last minute. A writer recently alleged copyright infringement and breach of confidence by Zee's imminent release of a show called "Baal Shiv". The Bombay High Court took the view that a prima facie case was made out to permit the writer to view the show and make submissions on alleged similarities, and so pushed the producer-broadcaster Zee Entertainment to make a statement undertaking to defer release, failing which it would grant the injunction sought. Needless to say, the statement was made. The Court remarked that promotions and expenses incurred by a producer / studio could not be used as excuses to avoid grant of reliefs to a plaintiff who appeared to have a genuine case.9
Clearly therefore, in addition to making out a prima facie case, balance of convenience and irreparable injury, a plaintiff must demonstrate bona fides and diligence in pursuing its case by promptly investigating public domain information that may suggest infringement of the plaintiff's rights.
Moving at the eleventh hour pre-release despite having notice (whether actual or deemed) at an early stage, is likely to be viewed as being unfair to the defendant who does not get a fair chance to have the application appreciated on merits. Also affected would be third-parties who may have made bona fide investments to secure valuable rights in the film. Courts have been cognizant not to allow plaintiffs to use blanket excuses such as the pandemic to lazily explain away long periods of delay without any real basis, while also being conscious to enable a genuine case to be heard and protective measures put in place if required, on an urgent basis.
Disclaimer – The views expressed in this article are the personal views of the author and are purely informative in nature.