Dhanush v. Nayanthara: Netflix denied an exit pass in copyright violation case

Background

The dispute began when Wunderbar Films Private Limited filed a suit against Los Gatos Production Services India LLP (Netflix India), Actress Nayanthara, and Director Producer Vignesh Shivan, for using behind-the-scenes (BTS) footage from a 2015 Tamil film ‘Naanum Rowdy Dhaan’ in a Netflix documentary ‘Nayanthara: Beyond the Fairytale’. Wunderbar Films, which produced the movie, claimed that this footage was used without its permission, violating its copyright. The issue came to light when the documentary’s trailer was released on November 9, 2024. Wunderbar Films immediately sent a notice to Netflix, objecting to the use of the footage, but the documentary was still released on November 18, 2024. As a result, Wunderbar Films filed a lawsuit on November 24, 2024, seeking legal action over the alleged copyright violation.

Summary

In this order, the Madras High Court dismissed two applications (6748 and 6750 of 2024) filed by Netflix, a defendant in the main suit. Netflix sought rejection of the plaint and revocation of leave to sue (permission to sue) granted to Wunderbar Films. The Court upheld its territorial jurisdiction and ruled that pre-suit mediation under Section 12A of the Commercial Courts Act was not mandatory due to the urgent need for interim relief. Additionally, the Court found that combining remedies under the statutory law and common law in a single suit was valid.

Facts

• Applicant (Defendant): M/s Los Gatos Production Services India LLP (Netflix) (5th Defendant in the main suit and Applicant in these applications)
• Respondent (Plaintiff): M/s Wunderbar Films Private Limited
• Other Respondents (Defendants): Tarc Studios, Rowdy Pictures, Nayanthara Kurian, and Vignesh Shivan.
• Applications by Netflix:
  • 6748/2024: Sought plaint rejection under Order VII Rule 11 CPC, alleging:
    • Lack of jurisdiction (Nextflix’s office in Mumbai).
    • Non-compliance with pre-suit mediation under Section 12A of the Commercial Courts Act.
  • 6750/2024: Sought revocation of leave to sue granted to Wunderbar Films, arguing that:
    • Wunderbar Films sought remedies under Section 62 of the Copyright Act, which prohibited them from seeking recourse under Clause 12 of the Letters Patent Act.

Issues

1. Whether the Madras High Court had territorial jurisdiction under Clause 12 of the Letters Patent Act?
2. Whether the suit was barred for non-compliance with Section 12A of the Commercial Courts Act (pre-suit mediation)?
3. Whether Wunderbar Films’s reliance on both Section 62 of the Copyright Act and Clause 12 of the Letters Patent Act triggered the Doctrine of Election?

Court’s Decision

The Madras High Court ruled in favour of Wunderbar Films and dismissed Netflix’s applications, holding that:

1. The Court has the relevant jurisdiction because a substantial part of the cause of action arose in Chennai and the Letters Patent Act only provided additional jurisdiction.
2. Pre-suit mediation was not required in this case because Wunderbar Film was able to show urgency due to ongoing infringement and the need for immediate interim relief.
3. Wunderbar Film’s reliance on both statutory (Copyright Act) and common law (Letters Patent) remedies in a single suit did not trigger the Doctrine of Election.

Court’s Analysis and Reasoning

To substantiate its order, the Court analysed the facts against the grounds raised in the applications as follows:

1. Territorial Jurisdiction (Clause 12 of Letters Patent Act)

(a) Cause of Action: Certain important events occurred in Chennai, such as:

(i) The Artist Agreements (2014) with Rowdy Pictures (Defendant) were executed in Chennai

(ii) The film Naanum Rowdy Dhaan was released in India, including Chennai (2015).

(iii) The trailer for the documentary was published, which could be viewed in Chennai (2024)

(iv) The infringing documentary was broadcast across the world, including Chennai (2024).

(b) Forum Conveniens (Most convenient jurisdiction): Most of the Defendants in the suit (except the fifth) were based in Chennai, the evidence was localised in Chennai and Wunderbar Films, the Plaintiff operated from Chennai.

(c) Clause 12 vs. Copyright Act: The Court clarified that Section 62 of the Copyright Act provides an additional remedy and does not oust jurisdiction under the Letters Patent Act.

2. Pre-Suit Mediation (Section 12A, Commercial Court’s Act)

(a) Urgency: Wunderbar Films acted promptly after discovering the infringement (09.11.2024) and sought interim relief to stop ongoing damage, which displayed an urgency in the matter.

(b) Continuous Infringement: The Court cited Yamini Manohar v. T.K.D. Keerthi (2024), emphasising that ongoing infringement justified bypassing pre-suit mediation. Therefore, the plaint couldn’t be rejected solely due to non-compliance with the pre-suit mediation requirement.

3. Doctrine of Election

Wunderbar Films filed a single suit under both statutory (Copyright Act) and common law (Letters Patent) grounds. The doctrine of election applies only if separate proceedings are initiated for the same cause.

Conclusion

We may conclude the following from this order by the Madras High Court:

• Courts may retain jurisdiction if a substantial part of the cause of action arises within its territory, even if some Defendants are outside. Courts prioritise locations where evidence, parties, and important events occur.
• Urgent interim relief sought to prevent irreparable harm (e.g., ongoing infringement) may exempt compliance with Section 12A.
• Combining statutory and common law remedies in a single suit is permissible and the doctrine of election may not apply.

Therefore, territorial jurisdiction maybe established by linking the cause of action to specific locations, such as where a contract was executed or where the infringement occurred. For urgent relief, demonstrating immediacy through documented dates, including infringement discovery and cease-and-desist notices, might be crucial to bypass pre-suit mediation. In IP litigation, Clause 12 of the Letters Patent can serve as an additional jurisdictional tool in cases involving multiple defendants.

Citation: Los Gatos Production Services India LLP v. Wunderbar Films Pvt. Ltd. & Ors., Madras High Court on 28^th January, 2025, available at: https://indiankanoon.org/doc/67172630/

Authored by Kavya Sadashivan, IP Innovation, Consulting & Strategy Team, BananaIP Counsels.

Disclaimer

The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.

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