MR. JOHN HART JR & ANR. Vs MR. MUKUL DEORA
CS(COMM) 38/2021 Page 1 of 25 $~35 (original side)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 38/2021 & IA 1167/2021 & 1168/2021
MR. JOHN HART JR. & ANR. ….. Plaintiffs
Through: Mr. Kapil Sankhla, with Ms.
Mohini Priya, Mr. Ashutosh Thakur, Ms.
Meghna Sankhla and Mr. Abhishek Pandey, Advs.
versus
MR. MUKUL DEORA & ORS. …. Defendants
Through: Mr Sandeep Sethi , Mr Sanjay
Gupta, Mr. Ajay Monga, Mr. Ateev Mathur,
Ms. Jagriti Ahuja and Ms. Varsha Kriplani
for Defendants Nos. 1,4,5,6 &7
Mr. Saikri shna Rajagopal, Mr. Sidharth
Chopra, Mr. Thomas George, Ms. Savni Endlaw, Mr. Yatinder Garg, Ms. Tanvi Sinha and Mr. Mudit Tayal, Advs. for D -2,
3, 8 and 9
CORAM:
HON’BLE MR. JUSTICE C. HARI SHANKAR
% 21JUDGEMENT (ORAL)
st
January, 2021
(Heard vir tually via Video-Conferencing)
CS(COMM) 38/2021 and IA 1168/2021 ( Under Order XI Rule 1(4)
of the Commercial Courts Act, r/w Section 151 of CPC ) in
CS(COMM) 38/2021
1. Issue summons in the suit and notice in the application.
2. Summons in the suit and notice i n the application are accepted,
2021:DHC:234
CS(COMM) 38/2021 Page 2 of 25 on behalf of Defendant Nos. 1, 4, 5, 6 & 7, by Mr. Sanjay Gupta ,
learned counsel, and on behalf of Defendant No s. 2, 3, 8 & 9, by Mr.
Sidharth Chopra, learned counsel.
3. Written statement to the plaint and reply to the inte rlocutory
application , if any, be filed by the defendants within a period of four
weeks from today accompanied by affidavit of admission/denial of
plaintiff s’ documents, with advance copy to learned counsel for the
plaintiff s. Replication /rejoinder thereto , if any, be filed within two
weeks thereof accompanied by affidavit of admission/denial of
defendants’ documents.
4. List before the Joint Registrar (Judicial) for admission/denial of
documents and marking of exhibits on 23rd
March, 2021.
5. The Joint Regist rar (Judicial) shall list the matter before the
Court at the appropriate stage.
IA 1167/2021 (under Order XXXIX Rules 1 & 2 CPC) in
CS(COMM) 38/2021
1. The plaintiffs, by this plaint, seek to injunct the release of “The
White Tiger” , a film produced by Def endant No. 1 , slated for release
at midnight today, on the Netflix internet platform.
2. An ad interim injunction, restraining the release of the film
during the pendency of the present suit, is also sought.
2021:DHC:234
CS(COMM) 38/2021 Page 3 of 25
3. Mr. Kapil Sankhla, learned Senior Counsel appea ring for the
plaintiffs, submits that Plaintiff No. 1 was, by virtue of a Literary
Option/Purchase Agreement dated 4th March, 2009, vested with
exclusive copyright to make a movie adaptation of the book “The
White Tiger” authored by Mr. Aravind Adiga. He submits that the
right, which devolved on Plaintiff No. 1 by virtue of the aforesaid
Literary Option/Purchase Agreement dated 4th March, 2009, continues
till date and is unchallenged. According to him, Plaintiff No. 1, who
is the producer of several reput ed films, wanted “The White Tiger” to
be an Oscar -worthy production, to be released in Hollywood. Mr.
Sankhla has drawn my attention to the various creditable achievements of Plaintiff No. 1 in the past and submits that, were the
plaintiffs’ right emanating from the aforesaid Literary Option/Purchase Agreement dated 4
th
March, 2009 not infringed by
the defendants, the film would have been produced in Hollywood, on a much larger scale, and would have gone on to win laurel s. He
submits that Plaintiff No. 1 had allowed Plaintiff No. 2 to engage
herself in producing the film based on the aforesaid book, but that no such right had ever devolved on Defendant No. 1.
4. Mr. Sankhla further asserts that it was only in October, 2019
that the plaintiffs came to know that Netflix was in the process of
making and releasing the subject film on its online platform. This, he
points out, resulted in a legal notice, dated 4
th October , 2019, being
sent by Plaintiff No. 2 to Defendant No. 1 as well as to Netflix, call ing
on them to cease and desist from any such act. Mr. Sankhla further
2021:DHC:234
CS(COMM) 38/2021 Page 4 of 25 submits that his clients were never given the impression that any
shooting of the film was taking place even during 2020, when ,
internationally, such activities were placed on hold, following the
COVID pandemic.
5. That apart, submits Mr. Sankhla , in the United States, a
copyright holder has no reason to apprehend infringement of her/his
copyright, and that any studio, which was endeavouring to make a
film based on a novel, exclusive rights in whi ch respect vested in
another , would contact the rightful copyright holder, authorized to
make such a film, in the interest s of due diligence. Plaintiff No. 1,
submits Mr Sankhla, had no reason to believe that his copyright would
be violated and that a fil m, based on “The White Tiger”, would be
made w ithout following due diligence. No prospective film maker or
producer having ever contacted his client, Mr Sankhla submits that
Plaintiff No. 1 had no reason to believe that the subject film was being made , or would be released.
6. Mr. Sankhla further submits that several misrepresentations
were made by the defendants, to which Plaintiff No.1 succumbed.
7. Mr. Sankhla has also invited my attention to various covenants
of the Literary Option/Purchase Agreement dat ed 4
th
March, 2009,
including, inter alia , Clause 10 thereof, which read s thus:
“Approvals : Purchaser shall have all approvals and controls
and the right to initiate action at any time and in any
connection with respect to the Picture. Notwithstanding the
2021:DHC:234
CS(COMM) 38/2021 Page 5 of 25 foregoing, provided Owner is not in default hereunder, Owner
and Purchaser shall mutually approve (i) any screenplay
writer and/or director for the Picture, (ii) any replacement of
John Hart as a producer of the Picture, provided that in the
event of a conflict Purchaser’s decision shall control. Further,
the parties agree that Sooni Taraporevala shall not be
considered as a screenplay writer, and neither Mira Nair nor
Deepa Mehta shall be considered as directors, for the
Picture.”
8. According to Mr. Sa nkhla, Plaintiff No. 1 was planning to
release the movie, based on Ar avind Adiga’s “The White Tiger” on a
grand scale since 2008, and had expended considerable labour on the
enterprise. Allowing the defendants’ movie to be released on the
Netflix platform tonight, he submits, would result in irreparable injury
to the plaintiffs, both financial and emotional. He submits that it
would result in the dreams of the plaintiff being shattered and his desire, to make and release a magnum opus, based on the aforesa id
novel, being reduced to naught.
9. As against this, submits Mr. Sankhla, if the release of the film is
postponed by a few days, it would not result in any serious financial consequences for the defendants, as the movie is not being released in theatre s. In this context, Mr Sankhla sought to draw a distinction
between “OTT releases”, i.e. releases on internet platform s, vis-a -vis
theatre releases, which the financial and infrastructural ramifications
of an injunction being negligible in the latter . What t he defendants are
indulging in, submits Mr. Sankhla, is the height of piracy, and if
allowed to go uncheck ed, would result in complete evisceration of the
plaintiffs’ right, emanating from the Literary Option/Purchase
Agreement dated 4
th March, 2009 supra .
2021:DHC:234
CS(COMM) 38/2021 Page 6 of 25
10. To a query from the Bench in that regard, Mr. Sankhla submits
that though there has been some delay in plaintiffs’ approaching the
Court, that delay was unavoidable. He submits that the defendants
effectively led the plaintiffs up the garden path, with out ever making
the plaintiffs aware of the fact that they were shooting the film and planning to release it on the Netflix platform. As such, he submits, the
prejudice that would result to the plaintiffs being far in excess of that
which would be suffere d by the defendants, were injunction not to be
granted, a clear case for grant of ad interim injunction exists .
11. Mr. Sandeep Sethi, learned Senior Counsel appearing for the
Defendant Nos. 1, 4, 5, 6 and 7, draws my attention to para 121 of the
plaint, to a ssert that admittedly, the cause of action, for the plaintiffs to
approach the Court accrued as far back as in October, 2019. He
submits that there is no justification, whatsoever, for the plaintiffs moving the Court seeking to stall the release of the su bject film less
than 24 hours prior to its scheduled release . He has placed reliance, in
this context, on the judgments of this Court in Kanungo Media (P)
Ltd. v. RGV Film Factory
1, Biswaroop Roy Choudhary v. Karan
Johar2, Warner Bros. v. Harinder Kohli & Ors.3 and Vinay Vats v.
Fox Star Studios India Pvt. Ltd. & Ors.4
, of which the last was
authored by me.
1 2007 SCC OnLine Del 314
2 2006 SCC OnLine Del 828
3 2008 SCC OnLine Del 1081
4 MANU/DE/1488/2020
2021:DHC:234
CS(COMM) 38/2021 Page 7 of 25 12. Mr. Sethi also submits that Mr. Sankhla has only portrayed one
side of the story. He submits that, on receipt of the legal notice, dated
4th October , 2019, addressed by Plaintiff No. 2 to the defendants, the
defendants responded on 11th October, 2019 , denying the assertions, of
Plaintiff No. 1, that he was the sole and exclusive copyright holder,
entitled to film “The White Tiger”. According to Mr. S andeep Sethi ,
there was a subsequent assignment of the right to film the novel by
way of an agreement dated 30th August, 2013, between certain
companies of Plaintiff No. 1’s subsidiaries and M/s Particle Media
Pvt. Ltd (hereinafter referred to as “PMPL”), which was a company of
Defendant No. 1. He further submits that a legal dispute had been
raised, by Plaintiff No. 2, in January, 2014, regarding the rights to film
“The White Tiger”, which resulted in a settlement vide agreement
dated 3rd
January, 2014 be tween the Plaintiff No. 2 and M/s Particle
Media Pvt. Ltd., whereunder ₹ 53 la khs was paid to Plaintiff No. 2,
consequent to which Plaintiff No. 2 waived all claims against PMPL
qua “The White Tiger” and the present project. Mr. Sethi submits that
all these documents have been concealed by the plaintiffs and that, based on a one-sided story put forth in the plaint, no injunction can be
granted in the plaintiffs’ favour.
13. Mr. Sethi has also raised certain formal objections to the plaint,
pointing out that the plaint and the statement of truth are unsigned, and
that therefore , there is no proper plaint before this Court.
14. Mr. Sethi also draws attention to the fact that a Special Power of
Attorney was executed by Plaintiff No. 1 in favour of Plaintiff No. 2,
2021:DHC:234
CS(COMM) 38/2021 Page 8 of 25 on 9th
December, 2020, to initiate legal action and that therefore, there
is no explanation as to why the present suit has been filed less than 24
hours before the film is to be released.
15. Mr. Sethi also refutes the submission of Mr. Sankhla that the
stakes of the plaintiffs, in the present case, are much higher than those of the defendants. He submits that making of a film and its release is a
protracted and laborious exercise , in which huge finances are
involved. The failure of the plaintiffs, to release the subject film on the date when it is scheduled and advertised for release, he submits, is
bound to result in irreparable loss of goodwill and reputation to the
defendants , which cannot be assuaged by monetary recompense .
16. No case, therefore, according to Mr. Sethi, is made out for grant
of ad interim injunction.
17. Mr. Saikrishna Rajgopal, learned counsel appearing for
Defendant Nos. 2, 3, 8 and 9, while adopting, largely, the submissions
of Mr. Sethi, submits that the distinction, being sought to be brought by Mr. Sankhla, between OTT and cinema hall releases, is far divorced from reality. He submits that OTT releases are as serious a
matter as cinema hall releases, and also involves huge finances as well as goodwill which cannot be compromised. He echoes the submission
of Mr. Sethi that, in the response dated 11
th October, 2019, the
defendants disputed the plaintiffs’ rights as exclusive copyright
holders entitled to film “The White Tiger” and had, in fact, taken a stand that the rights were waived by Plaintiff No. 2, pursuant to the
2021:DHC:234
CS(COMM) 38/2021 Page 9 of 25 settlement arrived in 2014.
18. He submits that his client had entered into an agreement with
Defendant No. 7 which was a subsidiary of a company owned by
Defendant No. 1. In any event, submits Mr. Saikrishna Rajagopal, the
dispute is highly contested and it is not possible to take any prima
facie view at this stage, one way or the other. At worst, he submits, the
loss to the plaintiff would be monetary, and no case for grant of
injunction exists.
19. Mr. Saikrishna Rajagopal has also drawn my attention to the
averments in the plaint, whic h admit the fact that promotional activity,
prior to the release of subject of film commenced as far back as in
December, 2019. He also submits that the film has in fact been
released in theatre s in the United States on 11th
January, 2021.
20. Mr. Sankhla, ar guing in rejoinder, submits that the legal notice,
dated 4th October, 2019, had been sent on behalf of Plaintiff No.2 and
not on behalf of Plaintiff No. 1. He also denies the submission that PMPL was owned by Defendant No. 1 and submits, on instructions,
that it was, in fact, owned by one Raj Lakhani and was one of several
shell companies which had been created by the defendants in order to
rotate funds. To quote the exact words used by Mr. Sankhla, “once
the corporate veil is lifted it would be apparent that the defendants had
no right in the book” . He has drawn my attention to paras 37 to 42 of
the plaint, in order to establish that there had been no assignment of
rights, as would entitle Defendant No.1 to produce or release the
subject film on Netflix. In fact, he submits, there was a breach of the
2021:DHC:234
CS(COMM) 38/2021 Page 10 of 25 understanding between plaintiffs and Defendant No. 1.
21. I have heard learned counsel for the parties at length and
applied myself to the arguments advanced at the Bar .
22. No case, in my view, for grant of any interlocutory injunction,
as sought by the plaintiffs, exists, for the following reasons:
i) The plaintiffs were aware of the possibility of the subject
film being released on the Netflix platform at least as far back
as on 4th
October, 2019. There is not a sc intilla of material
produced on record to justify the plaintiffs approaching this
Court less than 24 hours prior to the release of the subject film,
seeking stay thereof. Mr. Sethi has rightly drawn my attention
to paragraph 121 of the plaint, which may, for ready reference,
be reproduced thus:
“The cause of action to institute the present suit
has been continuing one and it arose in the following events:
a. The cause of action arose when the
shooting of the film “The White Tiger” was first announced in around October, 2019 as
the Defendant No. 1 had secretly, without
fulfilling the Condition Precedent Producing Agreement s with Plaintiff No. 1 and 2, had
entered into a contract with Defendant No. 2
and 3 for the production of the movie “The
White Tiger”, wh ich is an adaptation of the
book by the same name. The copyright in the film “The White Tiger” was never transferred from Rooster Coop to Particle
2021:DHC:234
CS(COMM) 38/2021 Page 11 of 25 Media as the Condition Precedent Producing
deals of the Plaintiffs was never fulfilled. Also, Plaintiff No.1 had separate from Patrick and was therefore the sole holder of
the said copyright alongwith Plaintiff No.2.
b. The cause of action further arose
when the principal photography of the motion picture “The White Tiger” was commenced by the Defendant No. 1,
Defendant No.2 and Defendant No.3
without having legitimate title over the
motion rights of the book “The White Tiger” in pursuance of the non-execution of the Condition Precedent Producing Agreement
between Plaintiff No.1, Plaintiff No.2 and Defendant No.1 a nd in complete disregard
to the right of the Plaintiffs as Copyright holders and Producers / Authors of the
picture.
c. The cause of action further arose
when the Plaintiff No. 2 after becoming
aware that the film “The White Tiger” was
scheduled to be made i llegitimately and
shooting was taking place in New Delhi, had
addressed a legal notice to Defendant No.2
and 3 on 4
th
October, 2019. The cause of
action further arose when upon the receipt of
the said legal notice, the Defendant No.2
and 3 instead of prote cting the rights of the
Plaintiffs, upon malafide got the copyright of the Film illegally registered on the same date, i.e. 04.10.2019, a at the US Copyright
Office in the name of Defendant No. 8 and 9
for “ dramatic, music or choreography”
based on the Pla intiffs book rights of “The
White Tiger”.
d. The cause of action also arose on
11.10.2019 when Defendant No. 2 and 3
2021:DHC:234
CS(COMM) 38/2021 Page 12 of 25 addressed a reply of the legal notice dated
04.10.2019 to Plaintiff No. 2 and blatantly
denied the claim of the Plaintiff No. 2 over
motion picture copyright and
Producing/Authorship rights of “The White
Tiger” and instead relied upon a Void
Document of Smiling Tree which did not even
hold any rights on 03.01.2013 to justify its making of the Film, without doing any
background research or due diligence and
declined to redress the cause of the Plaintiffs.
e. That the cause of action further arose on
12.11.2019 when the Plaintiff No. 2 addressed
an email to the Chief Executive Officer of
Defendant No.2, 3, 8 and 9, namely Reed
Hastings, requesting to intervene and stop the
illegal act for profit and to the liquidators of Smiling Tree, Particle and Transatlantic
(Particle’s owner) informing them of the web of
shell companies being formed and subsequently
liquidated by Defendant No. 1 in an attempt to
defraud the Plaintiffs of their legitimate rights
in the motion picture adaptation of “The White
Tiger” and Reed Hastings chose to ignore the
same and did not tender any response to the
email or take any action in pursuance of the
same.
f. The cause of action further arose when
Defendant No. 1 denied all the Plaintiffs claims
despite the fact that it was Defendant No. 1 who
had defrauded the Plaintiffs and is now
producing the film in complete disregard of the
condition precedent producing deals of the
Plaintiffs and the fact that legitimate copyrights
vested with the Plaintiffs and not Defendant
No.1, 2 3, 6, 7, 8, and 9.
g. The cause of action further arose when
the trailer of the movie was released by the Defendant No.2 and Defendant No.3 on various
platforms in December, 2019. The movie has
2021:DHC:234
CS(COMM) 38/2021 Page 13 of 25 been announced to be releasing on 22.01.2021
on the OTT platform of Netflix.”
A reading of para 121 of the plaint makes it apparent that, since
October, 2019, the plaintiffs have been acutely aware of the
possibili ty of release of the film, of which injunction is sought
in the present plaint/application. It is no answer , to the delay in
moving this Court, to say that, owing to intervention of COVID
pandemic, the plaintiffs were under the impression that no shooting would take place or that the film would not be
released. Neither can it be the stand of the plaintiffs, in the wake
of the aforesaid legal notice, that they expected due diligence on
the part of any person seeking to produce a film based on “The
White Tige r” and to be informed of any such proposal, prior
thereto. There are several authorities for the proposition that a
plaintiff who approaches the court at the eleventh hour, seeking
interlocutory injunction against the release of a cinematographic
film, is disentitled to any such rel ief. The relevant passages,
from Biswaroop Roy Choudhary
2, Kanungo Media (P) Ltd.1,
Warner Bros. Entertainment Inc.3 and Vinay Vats4
may, in this
context, be reproduce d:
“13. Delay in approaching the Court, so far as grant of
equitable relief is concerned, is always fatal. If the plaintiff is
a serious producer of film, he ought not to have ignored
gossip within his trade, whether it was in the form of Press
reports or exchange of communication to the Guild or
Association claiming the same title. At this present moment I
am unable to find any plausible reason for not filing the
present case at least upon the defendants performing its
Mahoorat. The plaintiff has waited for the defendants to
2021:DHC:234
CS(COMM) 38/2021 Page 14 of 25 expend large sums of money and energy in the completion of
the film with the same title, thereby shifting the balance of
convenience in favour of the defendant. The situation that is
arrived at is that the likelihood of passing off is almost wholly
eradicated. The subsisting claim may, at th e highest, be the
use of a title which the plaintiff has itself failed to use. The
right as well as the loss can only be determined after the
Trial.”
(Emphasis supplied)
(from Biswaroop Roy Choudhary2
)
“34. In International Film Service Co. Ltd. v. Associated
producers Inc. 273 F. 585 (D.C.N.Y. 1921) ,it was held that
“The plaintiff succeeds as soon as he shows an audience
educated to understand that the title means his play”. I am
conscious of the argument of the learned counsel for the
plaintiff that only because the plaintiff is a small time
producer and, therefore, could not commercially release the
film earlier, though he intends to do it now, title of his film should not be hijacked by those who consider themselves
mighty and have reach in the film industry. There is a lot of
substance in this argument. However, it is stated at the cost of
repetition that such an argument would have been worth its
weight had the plaintiff approached the court earlier and
taken action to nip in the bud the attempt of the defendants in
choosing this title for their film. In fact, knowing his
limitations viz. if he allows the defendants to publicise their
film with title ‘Nishabd’ he would lose out, should have made
him more vigilant in promptly approaching the court. By
delay it has allowed the damage to be caused to itself
inasmuch as, today overwhelming section of public associate
this title with the defendants’ film.
35. In this context, it would be apt to quote from the
judgment of the Supreme Court in the case of Ramdev Food
Products (P) Ltd. v. Arvindbhai Rambhai Patel (2006) 8
SCC 726 where it is held as under: —
“103. Acquiescence is a facet of delay. The principle of
acquiescence would apply where: (i) sitting by or
allowing another to invade the rights and spending
money on it; (ii) it is a course of conduct inconsistent
with the claim for exclusive rights for trade mark, trade
name, etc.”
2021:DHC:234
CS(COMM) 38/2021 Page 15 of 25
****
37. Learned counsel for the plaintiff had referred to the
judgment of the Supreme Court in the case of Midas Hygiene
Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90 and of
this court in Glaxo Group Ltd. v. Vipin Gupta, (2006) 7 AD
(Delhi) 688 to contend that injunction could not be refused
only on the ground of delay and laches. It has to be borne in
mind, in the first place, that it would be a principle applicable
in the case of registered trade mark. Secondly and more
important, is the distinction between the cases of passing off
action in goods/trading and passing off action in literary
works. In the form er case one product is competing with the
other and there are two competitors. However, as far as
literary work is concerned, as has been pointed out above, it is
a specific, separate and unique commercial item and not as
one product among many competing products. Each book,
movie, play or record is an economic market in and of itself,
not in competition with other similar literary works. Thus, in
fact, this is the genesis for the adoption of the test of
secondary meaning of title of a literary work. Theref ore, it
would be difficult to hold that delay is not fatal in such cases.
38. Consequently, I am therefore, of the view that
injunction of the nature pressed by the plaintiff cannot be
granted to the plaintiff at this stage when it approached the
court barely 10 days before the proposed release of the
defendants’ film with the same title. This injunction
application is, therefore, dismissed. It is made clear that entire
discussion in the order is on the prima facie view of the mater
and observations made in this order are only tentative.”
(Emphasis supplied)
(from Kanungo Media (P) Ltd.1
)
“34. Viewed from any angle, the plaintiffs have failed to
establish a prima facie case for the grant of an ad interim
injunction in their favour. The balance of convenience also
tilts heavily in favour of the defendants, who have invested
huge sums of money, apart from entering into copious
agreements and business tie ups with various third parties,
including Britania, McDonalds, etc. In a manner of speaking,
the plaintiffs have sat on the garden fence and allowed the
2021:DHC:234
CS(COMM) 38/2021 Page 16 of 25 defendants to traverse the whole of the garden path, before
attempting to throw a spanner in the release of the film at the
eleventh hour. If the plaintiffs were so keen and so wary of
protecting their right s, it was incumbent upon them to
vigilantly guard the same. This, the plaintiffs have failed to do
and, as a matter of fact, the conclusion to the contrary clearly
emerges from a reading of the documentary evidence on
record. The plaintiffs have equally failed to establish that any irreparable loss or injury will result to them on the release of
the film”
(Emphasis supplied)
(from Warner Bros. Entertainment Inc.3
)
“20. There is yet another reason, as to why I am not inclined
to accede to the prayer of the plaintiff for grant of ad interim
injunction. Mr. Aggarwal has acknowledged that, at the very
least, the trailer of the film “Lootcase” was released on 16th
July, 2020. I may note, in this context, that Mr. Neeraj Kishan
Kaul contests this statement and submits that the promos of
his client’s film “Lootcase” had been in the public domain
since June, 2019. Either which way, there is no justification
for the plaintiff having approached this Court on the eve of
the release of the film “Lootcase”, which is slated to be
released tomorrow, i.e. 31st July, 2020 and seeking injunction
against such release. It is further submitted, by Mr. Kaul, that
the story of the film has been covered in the print as well as
electronic media since September, 2019.
21. This case, therefore, appears, prima facie, to constitute yet
another example of the misuse of the judicial process, regarding which Patel, J., has so trenchantly commented, in the following passages from Dashrath D. Rathore v. Fox
Star Studios India MANU/MH/0490/2017 , on which Mr.
Kaul places reliance:
“6. Let me outline what granting such an
application involves. If allowed, there will be an urgent hearing two days from now, on Thursday at the earliest, the day before the defendants’ film releases.
That hearing will take the better part of the day; most
certainly a couple of hours. Both sides will want to
argue the matter fully. Then I must dictate a judgment
in Court. This must be transcribed that very evening.
My staff, which work long hours — some commute two
2021:DHC:234
CS(COMM) 38/2021 Page 17 of 25 hours in one direction — must work late into the night
to complete the transcription to deliver it to me for
correction. Assuming I carry out those corrections in
soft copy myself, as is my usual practice, that will take
another several hours. All this only so that these
plaintiffs, who chose to come late though they could
have come earlier, can have in their hands by 11:00 am
on Friday morning a judgment complete in all respects. As I said, in a given case, with demonstrated urgency,
yes, we do this, and we do. But to allow this in a case
where the plaintiffs have 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 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.
****
28. Dr Tulzapurkar for the 1st defendant points out
that, apart from the obvious differences, the delay in
bringing suit cannot be accidental. On their own
showing, the plaintiffs knew about the defendants’ film
since 24th February, 2017. They knew of the release
date of 24th March, 2017. From that date of
knowledge, i.e., for the last four weeks, they have
chosen to wait, and have not come to Court until a
mere three days before the release of the film. They
have only served a copy of the plaint and Notice of
Motion on the defendants only at 7.00 p.m. last
evening and have sought this morning urgent
circulation. By this time 800 theatres countrywide have
been booked for release. Distribution rights have been
created. Third party rights have intervened. There
cannot be any question of irreparable injury to the
plaintiffs in a situation such as this or of the balance of
convenience favouring the plaintiffs even assuming
that a prima facie case is made out, which in his
submission, it is not. He submits that it is not enough to
2021:DHC:234
CS(COMM) 38/2021 Page 18 of 25 make out some prima facie case; to get an injunction of
this kind, the plaintiffs must make out so
overwhelming a prima facie case that all other
considerations pale into insignificance. Unless I
conclude that the plaintiffs have indeed made out a
case of this strength, in his submission, no injunction
can or should follow.
29. I agree with Dr Tulzapurkar on all counts. I see
no vestige of a prima facie case for the grant of ad-interim relief. Certainly, the balance of convenience
can in no sense be said to be favour the plaintiffs. It is
clearly with the defendants. As to the question of
irretrievable injury, I notice that at no point did Mr.
Saboo or Mr. D’Costa offer or volunteer to provide
sufficient security — or indeed any kind of security —
should the plaintiffs’ Motion ultimately fail to secure
the defendants against loss.” ”
(Emphasis supplied)
(from
Vinay Vats4
)
Even on the sole ground of unconscionable delay in approaching this
Court, therefore, the plaintiffs stand disentitled from seeking any
interlocutory injunction against release of the film.
ii) Paragraphs 37 to 42 of the plaint, to which Mr. Sankhla
himself drew my attention, read s thus: –
“37. As per the mutual agreement of the 3 Producers that
fought for two years between September, 2011 and
November, 2013 against Patrick Milling Smith for the rights,
Plaintiff No. 1’s lead Producing deal would reflect his original
“irreplaceable against his will” position alongwith full
reimbursement of his legal costs for “The White Tiger” in his
separation with Patrick Milling Smith plus a generous
Producing Fee and Profit Participation that cannot be lesser
than the terms he already had originally (and/or the terms
Patrick Milling Smith was offering him to exit the picture),
and Plaintiff No. 2’s Producing deal would reflect Plaintiff
No. 2 and Defendant No. 1’s original 50/50 equity, profits,
2021:DHC:234
CS(COMM) 38/2021 Page 19 of 25 credit and control partnership entered into in October, 2010
based on which she allowed Defendant No. 1 participation on
her Hollywood project “The White Tiger”. This is clearly
outlined in Plaintiff No. 2’s email dated 16.02.2012 to her
attorney Paul Almond below when Plaintiff No. 1 and herself
and Archie Cox were m aking the deal between themselves
and she sent this email to Paul Almond to base an MOU to be
made with Patrick Milling Smith based on the Steps 1 through
6 outlined below:
“Archie! Just got off the phone with John. Can
John, Paul, you and I do a con call tomo
afternoon to put a number on what Story Fund and John and Ascension’s backend will be as a
% of the 100% of overflow (after all investors
have recovered their investment plus an 8%
return)?
Once we agree on the above numbers over the
call then we can sign an LOI the same day or
next day stating our verbal agreement based
upon which AFTER Smuggler
assigns all rights
to us under Step 1 below, we can go after either
extending or exercising the option right away while the lawyers are working on all the other
following 2- 6 steps/agreements as outlined in
our LOI in order to save time:
1. Smugglers assignment of all current agreements to watchtower
2. Todd Field’s script assignment and pay or play and backend waiver to watchtower
3. John’s producing deal with watchtower
4. Story Fund’s investment deal with
watchtower
5. Ascension’s deal with watchtower
6. Mukul and my producing deals with
watchtower.
Let me know what you think and look forward
to speaking with you and resolving this one last
issue tomo!”
(Plaintiff no 2 to Archie Cox, Paul Almond and Plaintiff no 1 in email dated 16.02.2012.)
2021:DHC:234
CS(COMM) 38/2021 Page 20 of 25
38. As can be seen from the above, the 3 Producer’s
Condition Precedent Producer deals are clearly outlined and were the only ones remaining post the
November, 2013 Patrick Milling Smith Separation
Agreements for the transfer of rights to actually take
place, before Defendant No. 1 got the wrong
impression that he can get away by not fulfilling the
Condition Precedent Producing deals of Plaintiff No. 1
and Plaintiff No. 2 and still have a competed
transaction.
39. The Story Fund Release to release John Hart
from his Non-Compete from Producing “The White
Tiger” with Plaintiff No. 2 and Defendant No. 1 was
an essential Condition Precedent of the Separation
Agreements fro m Patrick Milling Smith under the
Paragraph (i)Patrick Milling Smith Assignment and Assumption Agreement, proves that Plaintiff No. 1’s
Condition Precedent Producing Deal was to follow as
the next step, post the first set of Agreements executed
with Patric k Milling Smith in November, 2013:
“A fully executed release by Story Fund of any
non-compete agreement with John Hart, also
acknowledging that Hart is under no obligation
to Story Fund that would prohibit him from
acting as a producer on the Picture (or any
sequel, remake or subsequent production) or
otherwise providing services relating to the
Property, in form and substance satisfactory to
all parties hereto; and (ii) a fully executed
release by Story Fund Management Company,
LLC (and its affiliates) of any non-compete
agreement with Hart, also acknowledging that
Hart is under no obligation to Story Fund
Management Company, LLC (or related or
affiliated entities or persons) that would
prohibit him from acting as a producer on the
Picture (or any sequel, remake or subsequent
production) or otherwise providing services relating to the Property, in form and substance
satisfactory to all parties hereto (the “Hart
Release”)
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CS(COMM) 38/2021 Page 21 of 25
40. Defendant No.4’s email dated 12.04.13 to
Plaintiff No. 2 asking if the Condition P recedent of
John being released from the Non-Compete and
allowed to Produce “The White Tiger” with Plaintiff
No.2 and Defendant No. I after his separation from
Patrick Milling Smith (proves Plaintiff No.1’s Condition Precedent Producing deal was to follow,
apart from the requirement to satisfy and not be in
breach of Clause 10 of the Literary Option
Agreement):
“Dear Sonia, Please refer to Point no. 3 of your
trailing mail and let us know whether the
“Released” has been obtained or not? Thanks,
Sharad”
46.(sic) In this manner not executing Plaintiff
No. 1’s Condition Precedent Producing deal for the
motion picture adaptation of the “White Tiger” does
not allow the motion picture adaptation rights to be
assigned to Particle in two different ways, one it is in
direct breach of the Chain of Title Literary Option
Purchase Agreement of 03.04.2009 which protects and
locks in Plaintiff No.1 from being replaced as a
Producer against his own will and second he was
promised his Producing deal is a Condition Precedent
to any such rights transfer into any new entity, post his
separation from Patrick Milling Smith, by Plaintiff
No.2 and her 50/50 equity partner and development
financier, Defendant No.1, and that Condition
Precedent has not been met till date.
47.(sic) It does not require a lot of intelligence or
common sense to guess from the author Aravinda
Adiga’s Clause 10 that he would not even approve
established Indian Hollywood Producers and Directors
like Mira Nair and Sooni Taraporevala to produce the
motion picture adaptation based on his Booker Prize
winning bestselling book as he wanted it to be at the prestige and scale of “Revolutionary Road” and
“Slumdog Millionaire”, so he would definitely not
agree in November, 2013 to mutually approve Raj
Lakhani, some one not from the film industry and never
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CS(COMM) 38/2021 Page 22 of 25 having produced any movie before, as a replacement
for Oscar winning movies’ Hollywood Producer
Plaintiff No. 1, and Plaintiff No. 1 would also not agree to go again (sic) his own interests and passion to
Produce “The White Tiger” and mutually agree with the Author, Aravinda Adiga to replace himself as a
Producer of his own motion picture adaptation rights of which he was the legitimate owner and single
largest and mutually controlling shareholder, after
fighting a 2 year battle with his partner Patrick Milling
Smith for the ownership and control of the same
rights.”
The afore -extracted paragraphs from the plaint indicate, prima
facie , that Defendant No.1 was not a stranger to the entire
transaction of producing the film based on “The White Tiger”.
There is, in fact, reference, in the afore -extracted passages, to
various agreements, including “producing deals” between
“Mukul”, i.e. Defendant No. 1 and “Watch Tower” which, Mr. Sankhla acknowledges, is a company of Pla intiff No. 2. None
of these documents are on record. Mr. Sankhla seeks to submit
that many of these documents are in the custody of various International Law firms, and that, given the constrain ts of time
under which his clients were operating, it was no t practically
feasible to place all the documents on record. Be that as it may,
the averments in the afore -extracted passages, even as contained
in the plaint, show that there is more to the case than meets the
eye. Without having, before it, the aforesaid agreement s and a
chance to peruse the covenants thereof, even a prima facie
finding, that the defendants in producing and releasing the
several films, have infringed the copyright of the plaintiffs
cannot be returned by the Court. Interestingly, Mr. Sankhla
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CS(COMM) 38/2021 Page 23 of 25 himself acknowledge s that “once the corporate veil was lifted”
it would become apparent that the defendants had no right over
the book. Lifting of the corporate veil is an involved exercise,
which necessitates incisive scrutiny of the facts. It is not
possible, on the material on record, for this Court, to come to any prima facie conclusion that, by producing or releasing the
subject film , the defendants have indulged in illegal copyright
infringement, or transgressed the right of Plaintiff No. 1, emanating from the Literary Option Agreement dated 4
th
March,
2009 supra .
iii) In a case such as this, it is also not possible to hold, prima
facie , that the prejudice that would result to the plaintiffs, were
interlocutory injunction, as sought, not granted, is greater than
that which would result to the defendants, were such injunction
to be granted. The financial stakes, on both sides, are
considerable. In case the defendants, as they assert, have been
acting on the basis of rights validly assigned to them, there can
obviously be no ground to injunct the release of the film. The release of a film is merely the culmination of a protracted
exercise involving production, promotion and publicity, and I
am, prima facie, inclined to agree with Mr. Sethi that if, at t his
point of time, release of the film is stayed, it will result in
serious and irreparable repercussions to the defendants.
iv) Further, it is a well- settled principle that, where the loss
occasioned to the plaintiff is capable of being adequately
compensated in monetary terms, an injunction, especially of
2021:DHC:234
CS(COMM) 38/2021 Page 24 of 25 release of a cinematographic film, ought not to be granted.5
Plaintiff No. 1 is, admittedly, not the original creator of the
artistic work “The White Tiger”. He, even as per his own
showing, claim to have been assigned the right to film the said
novel, under a Literary Option Agreement dated 4th
March,
2009. In view thereof, even if the defendants are allowed to release the film, and the plaintiffs ultimately succeed in the suit,
I am of the opinion that it would be possible to recompense
them monetarily, even in respect of the emotional trauma ,
which, according to Mr. Sankhla, Plaintiff No.1 would suffer , as
a result of his not being able to be the first to film “The White
Tiger”.
23. On a holistic considera tion of the facts , the extant legal position
and especially as the plaintiffs have chosen to move this Court less
than 24 hours before the release of the subject film, I am of the
opinion that the plaintiffs are not entitled to any interim injunction,
staying the release of the film. The prayer for interim injunction is,
therefore, rejected.
24. Having said that, the defendants, even while they would be
permitted to release the film, are directed to keep detailed accounts of
the earnings made from the film so that, at any later stage, were the
plaintiffs to succeed, award of damages or monetary compensation,
should the Court so deem, is facilitated.
5 Reliance Big Entertainment v. Percept Ltd. 2009 SCC OnLine Del 111 ; Gaurav Dayal v. Rabbi
Shergil , 2008 SCC OnLine Del 1284; Pooja Films Pvt. Ltd. v. Motion Pictures Association. 1995 SCC
OnLine Del 509
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CS(COMM) 38/2021 Page 25 of 25
25. As nothing survives for adjudication in this application, the
application is dismissed.
C. HARI SHANKAR, J
JANUARY 21, 2021
dsn/r.bararia
2021:DHC:234