Case Notes By Aseem Chawla, Shamik Saha & Priyanka Mongia

Supreme Court Removes Gender Barrier that Prohibited Women from Working as Bollywood Make-up Artists

The Supreme Court of India in Charu Khurana vs. Union of India (2015 [1] SCC 192), ruled that a woman make-up artist cannot be barred from practicing as a “make-up artist” and strongly criticized this decades-old practice by the Cine Costume Make-up Artists and Hair Dressers Association (“CCMAA”) as gender-biased in violation of statutory and constitutional provisions.

 

The petitioner, Charu Khurana, a Hollywood-trained Make-up Artist and Hair Stylist, applied for membership in the CCMAA as a “Make-up Artist and Hair Stylist.”  The CCMAA rejected her application on two grounds, including the fact that CCMAA membership as a “Make-up Artist” is limited to men.  Khurana was told that she could apply only as a “Hair Dresser” as that would be available to her as a woman.  She was told to delete from her application any reference to “Make-up Artist.”  Khurana was also fined ₹ 26,500 ($400) fine, for having worked as a Make-up Artist and Hair Dresser without prior approval from the CCMAA.  Khurana appealed the CCMAA’s decision to its parent body, the Federation of Western India Cine Employees (“FWICE”).  CCMAA argued that the practice of limiting licenses to practice as Make-up Artists to men was not discriminatory as the specialty of Hair Dresser was open to women.  Women therefore had equal opportunities with men in the field of make-up and hairdressing.

FWICE overruled the CCMAA and recommended that Khurana be licensed as a Make-up Artist and Hair Dresser and that pending the processing of her application she be permitted to work in that capacity in films, television serials, music albums and advertising films.  When the CCMAA declined to accept FWICE’s recommendation, Khurana filed a writ petition before the Supreme Court under Article 32 of the Constitution of India.  (Article 32 empowers the Court to issue writs against the executive branch, including writs in the nature of habeas corpus, mandamus, prohibition, quo warranto and certiorari for the enforcement of constitutionally guaranteed rights.)  The Court found it had jurisdiction here because Article 39A requires the State to ensure that the legal system promotes justice, on a basis of equal opportunity.  Given the CCMAA was registered with the Registrar of Trade Unions (as required by law) and given further that the Registrar had wrongly accepted the CCMAA’s discriminatory by-laws (discussed below), the Court had the power to issue a writ against the Union of India (of which the Registrar is a part) to require it to promote justice on the basis of equal opportunity.

Khurana alleged that Clause 4 (Membership) and Clause 6 (Admission of New Members) of CCMAA’s by-laws were discriminatory because they barred women from working as Make-up Artists. Khurana also alleged that this discriminatory policy was enforced by the practice of harassing women in the workplace who managed to work as a make-up artist without the CCMAA’s approval.

The Court held that the CCMAA’s by-laws were discriminatory against women and ordered that the impugned clauses be expunged and that Khurana and her co-petitioner make-up artists be registered in that capacity within four weeks of its order.

 

Madras High Court Holds There Is No Copyright In A Live Broadcast

The issue in Commissioner of Income Tax-IV v. Delhi Race Club (1940) Ltd. (2015 [273] CTR Del [503]) was whether payment made by the Delhi Race Club for broadcasting rights of live horse races from at acing clubs was a royalty liable to taxation subject to withholding at source. The Delhi Race Club was engaged in the business of conducting horse races and derived income from betting fees, commissions and entry fees.  The Club also paid other race clubs for the right to broadcast their races.

During assessment proceedings the Assessing Officer ruled that the amounts paid to other clubs for the right to broadcast their races was a royalty for transfer of a copyright under sections 40(a)(ia) and 194J of the Income Tax Act, 1961 and was subject to tax withholding at source.  The Commissioner of Income Tax (Appeals) upheld the Assessing Officer’s ruling.  The Delhi Race Club appealed to the Income Tax Appellate Tribunal (”ITAT”) which reversed the Commissioner and held that the payment made for live telecast of horse races is not income by way of royalty for a transfer of copyright and, therefore, is not subject to withholding at source (known in India as “tax deducted at source”).

The Revenue Department appealed ITAT’s ruling to High Court of Delhi, which, based on the language of the Income Tax Act, framed the issue as being whether payment for live telecasts of horse racing is a payment for transfer of a “copyright” or “scientific work.” If so, the payment would be taxable and subject to withholding.  The Delhi Race Club argued that the right to broadcast or telecast is different from a copyright, and payment for live telecasts was not a payment for transfer of any copyright. The Club argued that a broadcast or telecast is not copyrightable work because, except for labor, skill and capital, it does not have any underlying creativity and because it shows a performance meant for public viewing. Accordingly, a payment made for a live telecast cannot be said to be a payment for transfer of a copyright.

Applying rules of statutory interpretation, the Court held that in clause (v) of Section 9(1)(vi) of the Income Tax Act, the phrase “the transfer of all or any rights (including the granting of a licence) in respect of any copyright, literary, artistic or scientific work” Parliament intended to mean “the transfer of all rights in respect of any copyright in literary, artistic or scientific work.  The Court reasoned that rules of statutory interpretations permitted it to depart from the rule of literal interpretation because a literal interpretation would render the statute meaningless.  The The word “copyright” cannot be said to be a type of work as would be a literary, artistic or scientific work.  Copyright exists only as it applies to a work. Before any words are read to repair an omission in the act, it should be possible to state with certainty that the inserted words would have been inserted by the draftsman and approved by Parliament had their attention been drawn to the omission before the bill was passed into law.

The Court held that live television coverage of any event is a communication of visual images to the public and falls within the definition of “broadcast,” a word that is not mentioned in the section discussing transfer of copyright. That apart it was noted that section 13 of the Copyright Act, 1957, does not contemplate broadcast as a work in which “copyright” exists.  Under the section, copyright exists only in literary, dramatic, musical and artistic work, cinematograph films and sound recordings.  Similarly, under section 14 of the Copyright Act, “copyright” means the exclusive right to reproduce, issue copies, translate, or adapt a work which is already existing.

The Court cited it earlier decision in ESPN Star Sports v. Global Broadcast News Ltd., 2008 (38) PTC 477, where it observed that the language of the Copyright Act, 1957 expressed a clear legislative intent to treat copyright and broadcasting reproduction rights as distinct and separate rights.

Accordingly, the Court held that as payments made by the Delhi Race Club to other race clubs for the right to broadcast their live races were not copyright-related royalties, the Club had no duty to withhold taxes on those payments.

 

Delhi High Court Recognizes a Cause of Action of Infringement of “Personality Rights”  

In Shivaji Rao Gaikwad vs. Varsha Productions (2015 [2] CTC 113), plaintiff, Rajnikanth, a famous and acclaimed actor of long-standing in the Indian film industry, mostly in Tamil language films (“Tollywood”), filed suit for a permanent injunction restraining the defendant Varsha Film Productions from using his name, image, caricature or style of delivering dialogue, in the Varsha Productions 2015 Hindi language comedy film spoofing his film hero persona titled Mai Hoon Rajnikanth (“I am Rajnikanth”). The Madras High Court issued an interim injunction restraining Varsha from releasing the film pending a decision on the application for a permanent injunction.

Rajnikanth’s suit for a permanent injunction was based on three grounds: infringement of copyright, infiltration of Rajnikanth’s personality rights by such unauthorized use, and misrepresentation and deception in the minds of public leading to passing off.  Rajnikanth asked that Varsha be ordered to remove all references, press releases, videos, posters, advertisements, content, publicity materials containing his name, image, caricature, and style of delivering dialogue from all websites, television channels, radio channels, newspapers and, or other modes of advertisement in any other modes of electronic and, or print media with respect to the film.  He also asked for compensation and punitive damages of ₹2,500,000 ($42,000 based on the currency exchange rate, or $125,000 based on purchasing power parity) for the unauthorized use of the his name, image, caricature, style of delivering dialogues, and for the costs of the suit

Rajnikanth contended that he did not want gross commercialization of his name and reputation, as a consequence of which he had deliberately chosen not to authorize any biopic featuring him or create any work based upon him or his personality.  Rajnikanth further alleged that, based on various press releases, videos, web articles, posters and information from other sources, it was evident in Mai Hoon Rajnikanth  that it exploited his superhero image not to speak of the fact that the movie also had scenes of an immoral nature. Varsha never obtained his consent or permission, either written or oral, to use his name, caricature, image, or style of delivering dialogue as depicted in the film.

Varsha argued that the film was neither a biopic nor based on any event of Rajnikanth’s life. Varsha also denied putting the plaintiff’s image, caricature, style of delivering dialogues, film sequence, song, tune in the film.  Varsha contended that the only reference to Rajnikanth was in the title Main Hoon Rajinikanth, which is a common, non-copyrightable name which just happens to be the first name of the protagonist in the movie.  Relying on Section 17 of the Copyright Act, 1957, Varsha also countered that only the first owner of a name can claim copyright and be entitled to a license of copyright. But in this case, there was no evidence of when the name “Rajinikanth” came into being, or who first thougth of it, which demonstrates that the name has long been in public domain.  Moreover, the name “Rajinikanth’ has been used in different movies on several occasions.  Varsha denied that the movie had scenes depicting the character in immoral situations. Varsha also contended that a “Personality Right” is not recognized under any law in India.

In granting the permanent injunction, the Court observed that although “personality right” is not defined under any law in India, the Courts have recognized it. The Court explained that “personality right” vests on those persons who, like Rajnikanth, have attained celebrity status—a fact that Varsha did not dispute.  The celebrity, as here, must be identifiable from the unauthorized use. Moreover, infringement of personality right requires no proof of falsity, confusion, or deception, especially when the celebrity is identifiable. The fact that the name Rajnikanth is a common name, thus, is not a defense if, as here, this particular Rajnikanth is a celebrity recognizable in the movie.

Aseem Chawla is the Founder Partner of MPC Legal in New Delhi and leads the firm’s tax practice group. He is currently Vice Chair of India Committee & Asia Pacific Committee of the ABA Section of International Law. He is the Co-Chairperson of Law & Justice Committee of PHD Chamber of Commerce and Industry, India. He can be reached at aseem.chawla@mpclegal.in.

Shamik Saha is a member of Bar Council of Delhi and is an associate in the Corporate Law team of MPC Legal, New Delhi. He can be reached at shamik.saha@mpclegal.in.

Priyanka Mongia is a member of The Institute of Chartered Accountants of India and is an associate in the Direct Tax team of MPC Legal, New Delhi. She can be reached at priyanka.mongia@mpclegal.in.

 

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