what is the remedy available with you as a producer of a movie if your movie is dubbed in a regional...

TEJASWINEE ROYCHOWDHURY 1

WHAT IS THE REMEDY AVAILABLE WITH

YOU AS A PRODUCER OF A MOVIE IF YOUR

MOVIE IS DUBBED IN A REGIONAL

LANGUAGE WITHOUT YOUR CONSENT?

By Tejaswinee Roychowdhury

B.A.LL.B. (Hons), Department of Law, University of Calcutta

Semester 1- M.A. in Business Laws (Intellectual Property and Cyber Laws),

WBNUJS

Written while pursuing the NUJS MA in Business Laws. A producer of a movie

is the one with whom the copyright of the movie rests. In legal copyright

terminology, a producer of a movie is the author of a cinematograph film and

so his consent or licence is mandatory for a third party to put his work into any

marketable / profitable use. So, what does a producer do when his movie is

dubbed in a regional language without his consent? It is an obvious copyright

infringement and the producer has legal remedies for his situation. But before

we venture into the aspect of the remedies, let us do a comprehensive study on

the matter.

http://startup.nujs.edu/


INTRODUCTION

The first question that arises is – What is Copyright? If the word ‘copyright’ is

to be explained in layman terms, it is the right a person has over the work he

creates. A man’s creative work can be one of literature or art or music or movies

and many more. Such a work is the man’s intellectual property and the principle

behind copyright law is very simple – one must have complete rights over one’s

property and may use it any way he pleases. Other’s cannot claim that property

to be their own and use them commercially as if it is their own. Copyright law

while protecting the rights of the author, prevents others from misusing the

intellectual property of another. In essence, it is more of a negative right than a

positive one. This is because it protects the right of one man while preventing

the rest of the world from abusing the right. It is a preventive right in nature. In

India, copyright law is governed by the Indian Copyright Act, 1957.

According to the World Intellectual Property Rights Organization (WIPO)

website, “Copyright (or author’s right) is a legal term used to describe the

rights that creators have over their literary and artistic works. Works covered

by copyright range from books, music, paintings, sculpture, and films, to

computer programs, databases, advertisements, maps, and technical drawings.”

[1]

There are numerous and varied reasons why copyright is essential. There are

multiple rights an author has surrounding his creation. These are mostly socio-

economic rights. We will discuss more of that later.

WHO IS THE PRODUCER OF A MOVIE?

It is a well-settled fact that a movie / a cinematograph film falls within the ambit

of copyright law. So a question in everyone’s mind is – who is the author of

such cinematograph film. A lot of people think that it’s the script-writer or the

director, but that’s a mistake. Let’s answer this question with the help of the

Indian Copyright Act, 1957. According to Section 2 (d) of the Act,

“author" means -

(i) in relation to a literary or dramatic work the author of the work;


(ii) in relation to a musical work the composer;

(iii) in relation to an artistic work other than a photograph, the artist;

(iv) in relation to a photograph the person taking the photograph;

(v) in relation to a cinematograph film or sound recording the producer; and

(vi) in relation to any literary dramatic musical or artistic work which is

computer-generated the person who causes the work to be created;

Therefore, the producer of a movie is the copyright holder of the movie.

COPYRIGHT OF A CINEMATOGRAPH FILM

The question is, how far does copyright law protect the use of a cinematograph

film by the public? Section 14 (d) of the Indian Copyright Act, 1957, states –

Section 14. Meaning of copyright. —For the purposes of this Act, “copyright”

means the exclusive right subject to the provisions of this Act, to do or authorise

the doing of any of the following acts in respect of a work or any substantial

part thereof, namely: —

(d) in the case of a cinematograph film, —

(i) to make a copy of the film including a photograph of any image forming part

thereof;

(ii) to sell or give on hire or offer for sale or hire, any copy of the film,

regardless of whether such copy has been sold or given on hire on earlier

occasions;

(iii) to communicate the film to the public;

On this point, let us make a reference to the judgment given by F.I. Rebello, J.

in the case Star India Private Limited vs Leo Burnett (India) Private, (2002)

to understand what constitutes a ‘copy’ of a work given the fact that the term

has not been defined by the Act. It states –

It will, therefore, the essential to find out as to the meaning of the word ‘copy’

in the absence of it being defined in the Act. Reference can be made to Copinger

and Skone James on copyright, Thirteenth Edition, at paragraph 3.29, some

portions of which may be reproduced: "......it has been stated that skill labour


and judgment merely in the process of copying cannot, confer originality and

the mere copyist cannot have protection of his copy. Particularly, therefore,

where the reproduction is in the same medium as the original, there must be

more than an exact reproduction to secure copyright; there must be some

element of material alteration or embellishment which suffices to make the

totality of the work an original work. If the original, in the case of a painting,

is used merely as a model to give the idea of the new work or, in the case of a

photograph, merely as a basis to be worked up by photographic process to

something different, then the net work may be entitled to protection; but, if the

result is simply a slavish copy, it will not be protected." [2] It can thus, be

understood in light of the highlighted portion that dubbing of a movie, in

essence, is not an exact copy as there is some material alteration in it. The

original language is translated to another language which may also alter the

meaning of the dialogues, thus altering the audiences’ perceptibility to some

extent.

Why does the copyright of a movie producer need protection?

Section 14 of the Copyright Act, 1957 protects the economic rights of the

copyright owner. This is because the exploitation of these rights may bring

economic benefit to the persons committing the exploitations. Only the author

has the exclusive right to exploit his own work. The Copyright Act also confers

moral rights upon the copyright owner through Section 57. They are – (i) droit

au respect de l’oeuvre – integrity right; (ii) droit de divulgation – divulgation

right; (iii) droit a la paternite – attribution rights; and (iv) droit de retrait –

retraction right. [3]

The rights of the copyright owner can also be understood in the light of the

WIPO Copyright Treaty (WCT) which is a special agreement under the

Berne Convention and deals with the digital protection of works and the rights

of their authors. As to the rights granted to authors, the Treaty grants: (i) the

right of distribution; (ii) the right of rental; and (iii) a broader right of

communication to the public. The right of distribution is the author’s right to

distribute his work by making their originals and copies available to the public.

The right of rental is the right to authorize commercial rental of originals and

copies to the public, for example, cinematographic works (but only in cases

where commercial rental has led to widespread copying of such works,


materially impairing the exclusive right of reproduction). The right of

communication to the public is the right to authorize any communication to

the public, by wire or wireless means, including "the making available to the

public of works in a way that the members of the public may access the work

from a place and at a time individually chosen by them". [4]

Dubbing a Cinematograph Film, The Right Way

It can thus be well understood that the copyright of a cinematograph film also

covers translating the work, for example – dubbing. This is because if someone

dubs a film without the consent of the producer or the license from the

producer, it is to be understood that the author’s work is being exploited. It is

only common sense that a person would want to dub a movie into a regional

language so as to exploit it commercially by making it more accessible to the

public who may have difficulty in following the original language used in the

movie. For example, a Hollywood movie may be dubbed in Bengali on a local

Bengali cable network so as to increase viewers and earn some cash while doing

so.

Now one might say that it is not always viable to think that everyone will be

well acquainted with a language that isn’t their mother-tongue. People releasing

such unauthorized dubbed versions may want to only help the audiences to

understand and there is no harm in making some extra cash while helping

people! – This is exactly the kind of attitude copyright law seeks to change.

There are legal and authorised ways to dub a film in a regional language and not

get sued over it or not infringe the producer’s copyright. Some of the globally

recognized ways are as follows –

Distribution Agreements – It is advisable that the producer of a movie and the

distributors of the movie draft proper distribution agreements which enables a

distributor to dub a movie in a regional language as that would make the movie

more popular among a wide range of viewers and also collect a greater revenue

that would be proportionately distributed between the distributor and the

producer. Such clauses in distribution agreements must not be in the format of a

standard form contract but one that needs to be drafted specifically for each

distributor who wishes to dub the movie into a regional language. It must

contain the number of languages, rules for dubbing – promise of a proper


translation and verification of such translation before telecast, profits made and

the proportion in which they are to be divided, duration of telecasting such

dubbed film and so on. Through a distribution agreement, apart from

granting licences, the producer can also designate the distributors as

assignees.

Compulsory Licenses – The Section 32 of the Indian Copyright Act 1957

provides for the licence to produce and publish translated versions of already

published works. Clause (1) of the Section states – “Any person may apply to

the Copyright Board for a licence to produce and publish a translation of a

literary or dramatic work in any language after a period of seven years from the

first publication of the work.” Clause (1A) further states – “Notwithstanding

anything contained in sub-section (1), any person may apply to the Copyright

Board for a licence to produce and publish a translation, in printed or

analogous forms of reproduction, of a literary or dramatic work, other than an

Indian work, in any language in general use in India after a period of three

years from the first publication of such work, if such translation is required for

the purposes of teaching, scholarship or research: Provided that where such

translation is in a language not in general use in any developed country, such

application may be made after a period of one year from such publication.”

Further, Clause (2) states – “Every application under this section shall be made

in such form as may be prescribed and shall state the proposed retail price of a

copy of the translation of the work.” Thus, it is clear that only non-Indian films

can be dubbed / translated and sold at a ‘reasonable price’ by virtue of this

Section.

It is very clear from the above mentioned points that litigations from

unauthorized dubbing can be avoided by following two ways – Distribution

Agreements (i.e., Licencing or Assigning) and Compulsory Licensing. While

the former comes with a lot of prospects, the latter is mostly restrictive in nature

and narrow in scope. So, it is advisable for a producer and the distributor(s) to

enter into Distribution Agreements which will cover both licensing and

assigning or either of them. Scoring a compulsory licence is clearly a tough job

and only applicable to non-Indian film producers. However, it is important to

note that while dealing with copyright infringement, it is important that we keep

in mind the film producers from all over the world while making a

comprehensive study of Indian statutes and case laws.


DUBBING A CINEMATOGRAPH FILM – INFRINGEMENT OF

RIGHTS AND THEIR REMEDIES

When the aforementioned rules and statutory provisions are disregarded, there

arises copyright infringement. Now, the question is – what are the remedies

available to the producer of a movie if his movie is dubbed in a regional

language without his consent? The answer is three-fold – Civil Remedies,

Criminal Remedies and Administrative Remedies. Let’s discuss these remedies

in a more detailed fashion.

CIVIL REMEDIES

The civil remedies that are available to the producer are – Anton Piller Order,

Interlocutory Injunction, Mareva Injunction and Damages or Accounts of

Profits. These are known as civil remedies as they are awarded by way of a civil

suit. Once a civil suit is filed in a proper jurisdiction, the procedures are

followed and the Court may award any of the abovementioned remedies.

Jurisdiction of Courts

Section 62 of the Indian Copyright Act, 1957, states that every suit or civil

proceeding in respect of infringement of copyright in any work or the

infringement of other rights shall be instituted in the District Court having

jurisdiction.

In Dabur India Ltd. V. K. R. Industries, (2008) 10 SCC 595, the Supreme

Court was of the opinion that in terms of Section 62, the plaintiff could not

institute a suit of infringement and passing-off at the place where he resides or

carries on his business. Therefore, it can be clearly asserted that the plaintiff

need to institute the suit at the place where the infringement occurred. For

instance, if the producer’s place of business and residence in Kolkata and his

movie has been dubbed without his consent and released in Mumbai, then he

has to institute a suit against the infringer in the Bombay District Court as the

infringement is deemed to have occurred in Mumbai.


As per the Code of Civil Procedure, the place of suing is determined by

Sections 15 to 20 of the Code. Section 15 of the Code deals with pecuniary

jurisdiction. This section says that a suit of civil nature must be instituted in the

lowest court unless it is otherwise provided. Since Section 62 of the Copyright

Act provides for the District Court as per the forum of the suit, the District

Court will be considered the lowest forum in this situation. But suppose, the

plaintiff values the damages at Rs. 40,000 and the District Court in question can

adjudicate upon suit up to valuation of Rs. 50,000, and the District Court makes

the finding and determines that the plaintiff has unintentionally undervalued and

the actual valuation is Rs. 55,000, then the adjudication of the District Court

will not be a one of nullity. Similarly, if the suit is unintentionally overvalued

and filed in the High Court of proper territorial jurisdiction, then too the

decision of the High Court will be valid as the suit will be filed well within the

jurisdiction. Section 19 of the Code deals with territorial jurisdiction of

immovable property and Section 20 deals with territorial jurisdiction of

other suits. Now intellectual property may either be deemed to be an

immovable property under Section 19 or a suit of copyright infringement may

be deemed to be an ‘other suit’ under Section 20. Either way, the rules are – the

suit must be instituted “within the local limits of whose jurisdiction – (a) the

defendant, or each of the defendants where there are more than one, at the time

of the commencement of the suit, actually and voluntarily resides, or carries on

business, or personally works for gain; or (b) any of the defendants, where

there are more than one, at the time of the commencement of the suit, actually

and voluntarily resides, or carries on business, or personally works for gain,

provided that in such case either the leave of the Court is given, or the

defendants who do not reside, or carry on business, or personally work for gain,

as aforesaid, acquiesce in such institution; or (c) the cause of action, wholly or

in part, arises.” There is also jurisdiction based on subject-matter of the

suit. This is based on statutory provisions of special Acts. For example –

Section 62 of the Copyright Act limits the jurisdiction of the subject-matter of

copyright to a Court which is not below a District Court.

Limitation

It is to be kept in mind that in copyright infringement suits, a limitation of 3

years from the date of infringement subsist as per the Article 88 of the


Schedule of the Limitation Act, 1963. Therefore, a copyright infringement suit

even if not barred by jurisdiction should not be barred by limitation as well.

Anton Piller Order

The law aims to provide equal opportunities to parties. But in certain cases,

under certain circumstances, the Court may think it fit to pass an ex-parte order

or a one-sided order allowing the plaintiff to make necessary and required

inspections in the premises of the defendant in order to take possession or

remove the infringed copies which may be used for commercial purposes. This

is an Anton Piller Order. It is provided for in Order 39 Rule 7 of the Code of

Civil Procedure.

It is a preventive step and is generally granted when the plaintiff is under the

apprehension that there exists substantial amount of copies of his work which

can be used to put him through a considerable financial loss and there is not

sufficient time to follow the regular judicial procedure. It is important to note

that the Court will not pass such an order until all the material evidence

available is brought before it and been assessed by it.

Bucyrus Europe Ltd. v. Vulcan Industries Engineering Co. Pvt. Ltd. [5] –

In this case, the Court granted the plaintiff an ex-parte order of injunction to

restrict the defendant from continuing his act of copyright infringement by

stopping further production, selling, stocking, marketing and advertising.

Although this remedy is usually not visited by the Courts, and also not prayed

for by the plaintiff, the Courts grant them in special cases.

Interlocutory Injunction

This kind of remedy is the most sought for in copyright infringement cases. It is

provided for in Order 39 Rule 2 of the Code of Civil Procedure. This kind of

order seeks to protect copyright immediately to stop the continuance of

infringement or anticipated infringement. Therefore, if the producer suspects

that his work’s copyright may be infringed, he may file a suit and get an

interlocutory injunction order against the anticipated infringer. However, since


the topic at hand concerns the remedies of infringement that has already

occurred, the producer shall seek an interlocutory order against the infringer in

order to stop the continuance of infringement. The plaintiff may also pray for

such an order pending trial or further orders.

For obtaining an interlocutory injunction, the plaintiff must establish the

following conditional circumstances – (1) a prima facie case exists, (2) there is a

balance of convenience in his favour, and (3) the refusal to grant injunction will

cause irreparable injury to the plaintiff. [6] All this has been held by the

Supreme Court in the landmark case of Shiv Kumar Chadha V. Municipal

Corporation of Delhi, (1993) 3 SCC 161. The Bombay High Court rejected the

stand of the plaintiff as he failed to establish the existence of a prima facie case

in a dispute relating to the Bollywood movie “Ghajini” in KBC Pictures V. A.

R. Murgadoss, 2009 AIHC 2852 (Bom).

The producer can get an interlocutory injunction order against a person who has

dubbed his movie without his consent by establishing all off the above

mentioned conditions. It is essential that the conditions co-exist for the plaintiff

producer to sustain his stand.

Mareva Injunction

The Mareva Injunction has originated in an English Case and is not explicitly

defined or discussed in the Code of Civil Procedure. The Code impliedly

provides for this remedy in Order 38 Rule 5. The Courts have, however,

visited this remedy several times while pronouncing an ex-parte order in order

to meet natural justice and equity. It basically means freezing of the assets of

the defendant which may also include assets in dispute, such as, infringed

copies of copyrighted works. “The main ingredients, which an applicant should

satisfy on an ex-parte application to become entitled to a Mareva injunction,

are – (a) There must be an arguable claim; (b) There must be a real risk that

the final judgment in applicants’ favour would remain unsatisfied; (c) There

must be full and frank disclosure of all the material facts; and (d) The exercise

of discretionary power by the court.” [7] Thus, a producer whose movie is

dubbed without consent and illegally distributed may seek for an ex-parte

decree of Mareva injunction and the Court, if satisfied, may freeze the

circulation of the infringed copies and other necessary assets of the infringer to


stop further infringement. Although not much in use, it would be a very

effective remedy in case of copyright infringement.

Damages on Account Profits

In a civil suit for infringement of copyright, the plaintiff is entitled to damages

from the defendant. These damages can be of two types – (1) one for

infringement of his copyright, (2) and the other for conversion of his

copyrighted work into another form. [8] Thus, the aggrieved producer of a

movie can get damages not only for infringement of his copyrighted film but

also for converting his work into another form. This is because, as far as the

language of the movie is concerned, the dubbing converts an intricate and

essential part of the movie – this will include vocalisation, i.e., new voice artists

need to be used for dubbing. It may also happen that the dubbing is not a perfect

translation in which case there will be conversion too as the dialogues will

become inconsistent with the screenplay and this will alter the meaning of the

scenes thus, in essence, there will be complete conversion of the producer’s

copyrighted work.

If the plaintiff is successful in claiming damages, that is, if the Court awards

damages, the plaintiff is entitled to account of profits. This means that whatever

profits are made by the infringer by commercial use of the infringed copy will

be deemed to be the profit of the original owner. Thus, a movie producer is

entitled to all profits which the infringer made out of screening, renting and

selling the dubbed version of the movie.

CRIMINAL REMEDIES

The plaintiff can also initiate a criminal proceeding against the infringer in

addition to the civil proceedings. One kind of proceeding does not procedurally

bar the other and therefore the plaintiff can invoke both the remedies

simultaneously.

Section 63 of the Indian Copyright Act, 1957, states that – “Any person who

knowingly infringes or abets the infringement of— (a) the copyright in a work,

or (b) any other right conferred by this Act, …, shall be punishable with


imprisonment for a term which shall not be less than six months but which may

extend to three years and with fine which shall not be less than fifty thousand

rupees but which may extend to two lakh rupees: Provided that where the

infringement has not been made for gain in the course of trade or business the

court may, for adequate and special reasons to be mentioned in the judgment,

impose a sentence of imprisonment for a term of less than six months or a fine

of less than fifty thousand rupees.” Thus, while the producer has already

instituted a civil suit, he may also file a complaint for criminal prosecution

against the infringer. It must be noted that a crime is not the same as a civil

wrong even though there may be both remedies available for a particular act /

omission. When the infringement is seen in the light of an offence, it is a wrong

against the State and unless otherwise stated, the amount collected through fines

goes into the state treasury. But since the criminal proceeding is instituted by

the plaintiff and not the State, the Court will decide where the amount will go.

Section 66 further states that – “The court trying any offence under this Act

may, whether the alleged offender is convicted or not, order that all copies of

the work or all plates in the possession of the alleged offender, which appear to

it to be infringing copies, or plates for the purpose of making infringing copies,

be delivered up to the owner of the copyright.” So, even if the infringer is not

convicted, the infringed copies will have to be seized to prevent the loss of the

copyright owner. In a way, this section has the essence of an Anton Piller Order

and an Interlocutory Injunction.

It is however to be noted that if a question of fact or of law regarding the

infringement is pending before a civil court, the criminal court may not make or

strive to make any findings upon that question. [9] This is to avoid a cliché in

judgment of two different courts and to avoid the hardship of the parties. In

essence, this is loosely based on the principle of res sub judice.

Jurisdiction of Courts

Section 70 of the Indian Copyright Act, 1957 states that – “Cognizance of

offences. — No court inferior to that of a Metropolitan Magistrate or a Judicial

Magistrate of the first class shall try any offence under this Act.” The offence is

to be tried in a court within whose jurisdiction the offence has been committed


or within whose jurisdiction the distributed copies are being sold, rented or

screened. The procedure is to be governed by the Code of Criminal Procedure.

Thus, the aggrieved producer can file a police report (F.I.R.) under Section

154 of the Code of Criminal Procedure following which the police will

investigate and make arrest. The producer may also file a complaint directly

before a Magistrate as per Section 190 of the Code. After the procedures of a

criminal proceeding are followed, the Magistrate will decide upon the

imprisonment period of the infringer and the amount of fine he must pay.

ADMINISTRATIVE REMEDIES

The producer can also opt for administrative remedies. This consists of moving

the Registrar of Copyrights to ban the import of infringed copies and to

deliver to the rightful owner, the confiscated infringed copies. Generally, if the

movie is dubbed in the regional language of another country, say for example,

Russia, the producer must make an application to the Registrar of Copyright in

India, as his copyright registration was done in India, and ban the import of such

infringed copies. The producer will also by the virtue of the application, be able

to get back the seized or confiscated infringed copies.

CONCLUSION

Thus, it can be seen that a producer of a movie has multiple remedies available

if his movie has been dubbed into a regional language without his consent. It is

up to him that which remedy he wants to avail. He may choose the form of

remedy he wishes based on his convenience while keeping in mind the

procedural laws relating to jurisdiction and limitation.

The law of copyright is an unexplored one in India. Every year, thousands of

Bollywood films are released and most of them are dubbed into regional

language without the consent of the producer. But we do not hear of as many

copyright infringement cases. Maybe the producers don’t see it as a massive and

harmful infringement of their copyrights or maybe they are unaware that

dubbing without their consent actually amounts to copyright infringement.

Whatever the reason may be, this particular infringement is in abundance. And


when the infringers get away with it every day for several years, it is not

possible for them to see that they are making a mistake. They might not even

know that dubbing without the producer’s consent is an actionable wrong or an

offence. Either way, a part of the society is still unaware of this right and the

essence of this right and it is high time that the implications of this infringement

are made known to the public.

This unawareness and declined importance may result in heavier prices in the

future. For example, hundreds of popular Hollywood films such as Harry Potter,

Lord of the Rings, Spiderman, etc. are constantly being dubbed into regional

languages of India such as Bengali, Tamil, Marathi, Kannada, Bhojpuri and so

on and without a doubt, all of these dubs are made without the consent of the

respective producers. This paints a bad picture of the Indian Legal System in the

light of copyright law as India has been signatories to international treaties and

agreements such as the TRIPs Agreement and Berne Convention and this casual

take on this law acts as a contravention to these. However, for the legal system

to act, the citizens must first be made aware and until that is done, this will

continue to be a grey unevolved area in the Indian Legal system.

FOOTNOTES AND CITATIONS

[1] http://www.wipo.int/copyright/en/

[2] https://indiankanoon.org/doc/1271015/

[3] Dr. B. L. Wadhera, Law Relating to Intellectual Property, 5th Ed, 2011,

Universal Law Publishing Co.

[4] http://www.wipo.int/treaties/en/ip/wct/summary_wct.html

[5] 2005 (30) PTC 279

[6] Ibid 3.

[7] http://ipassociatesindia.blogspot.in/2009/12/mareva-injunction-india.html

[8] Ibid 3, 6.

[9] Cheran P. Joseph V. K. Prabhakarn Nair AIR 1967 Kar, 234

http://www.wipo.int/copyright/en/

https://indiankanoon.org/doc/1271015/

http://www.wipo.int/treaties/en/ip/wct/summary_wct.html

http://ipassociatesindia.blogspot.in/2009/12/mareva-injunction-india.html