Bright Walker Productions Pvt. Ltd. v. Mr. Samuel Jackson
(This imaginary problem was drafted for the ILS Intra College Novice Moot Court Competition 2015 by Ritvik M. Kulkarni and Yojit Pareek, students of the ILS Law College, Pune, India. This problem may be reproduced by any person for educational and other non-commercial purposes, provided the authors are duly accredited as authors)
Bright Walker Productions Pvt. Ltd (the Company) is a production house with its registered office in Mumbai. The Company created, produced and marketed a television series named Dorne to Dusk with Marshall Mathers (DDMM) (the Show) which first aired on 09th February 2014. The show is in relation to stand-up comedy and is hosted by Mr. Marshall Mathers, however, Mr. Mathers was accompanied by few other actors hired by the Company on per show performance basis. While Mr. Mathers enacts himself on the show, all the other actors portray fictional characters which according to the story conceptualized and written by the company. The intellectual property in this story has been assigned to the Company by its writers. This show is aired on Comedy Circle (the Channel) every Saturday and Sundayat the 9:00pm slot which has a total run-time of 60 minutes. In a short span of time, the Show had gained huge popularity amongst its viewers.
One such actor is Mr. Samuel Jackson, a famous comedian who was hired to enact the part of a fictional character named Little Finger on DDMM. In order to enact this character on the show, Mr. Jackson wears men’s attire on the left half of his body and women’s attire on the right. He then converses with the other characters on the show in a male and female voice alternatively. These aspects, in addition to his widely popular and comic mannerisms, the character of Little Finger played by Mr. Jackson has gained immense popularity on an independent basis.
In the past, before working in the Show, Mr. Jackson had portrayed a character with similar mannerisms in his early days of stand-up comedy performances in live shows at the Majestic Laugh Factory; a well-known forum for stand-up comedy in Mumbai. Video recordings of these early performances are accessible on YouTube.com.
Not more than six months of the Show’s glaring success, there began to arise certain professional rifts between Mr. Jackson and the Company on account of the former vying for a more central role on the show. After a series of failed negotiations with Mr. Jackson, the Company released him from the show and continued airing the show without including the character of Little Finger.
Following these events, Mr. Jackson began to stage solo stand-up comedy performances in the major cities of the country. His solo portrayal of Little Finger attracted a huge audience at his staged performances at clubs, cafes and other public events and subsequently became a big hit.
Feeling aggrieved of Mr. Jackson’s portrayal of Little Finger outside of the Show, Bright Walker Productions Pvt. Ltd. initiated an action of copyright infringement against Mr. Jackson before the Hon’ble Bombay High Court contending that the ownership in the character of Little Finger lied solely in the Company. It also made an asked the Hon’ble Court for granting it an order restraining Mr. Jackson from enacting Little Finger during the pendency of the case before the Court.
In response to this action, Mr. Jackson contends that since there was no contractual arrangement between any of the actors and the Company in relation to the ownership of the characters they enacted on DDMM, the Company cannot claim ownership in Little Finger as a matter of right. He also contends that since his own person is closely associated with the character of Little Finger, the ownership of the said character lies in him; and that by this virtue he, exclusively, is entitled to perform the said character on any forum.
The Temporary Injunction application is slated before the Hon’ble Bombay High Court for final hearing on 5th March 2015. Argue on behalf of the Plaintiff or the Defendant.
Relevant Legislative Acts:
Copyright Act, 1957.
S.13 – Works in which copyright subsists:- (1) Subject to the provisions of this section and the other provisions of this Act, copyright shall subsist throughout India in the following classes of works, that is to say,
(a) original literary, dramatic, musical and artistic works;
(b) cinematograph films;
(2) …. Explanation – In the case of a work of joint authorship, the conditions conferring copyright specified in this sub-section shall be satisfied by all the authors of the work.
S.14 –Meaning of copyright:- (1) For the purposes of this Act, “copyright” means the exclusive right, by virtue of and subject to the provisions of, this Act,——
(a) in the case of a literary, dramatic or musical work, to do and authorize the doing of any of the following acts, namely:-
(i) to reproduce the work in any material form;
(ii) to publish the work;
(b) in the case of an artistic work, to do or authorise the doing of any of the following acts, namely:-
(i) to reproduce the work in any material form;
S.51 – When copyright infringed:- Copyright in a work shall be deemed to be infringed…
(b) when any person —
( i ) make for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or
( ii ) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright,
S.55 – Civil remedies for infringement of copyright:- (1) Where copyright in any work has been infringed, the owner of the copyright shall, except as otherwise provided by this Act, be entitled to all such remedies by way of injunction, damages, accounts and otherwise as are or may be conferred by law for the infringement of a right.