For more intellectual property updates, follow our WHATSAPP CHANNEL and SUNS LEGAL | LinkedIn
Written by N. Amal S. Nair and verified by Sunil Jose, Managing Attorney, Suns Legal.
Los Gatos Production Services India LLP vs Wunderbar Films Private Limited (A. Nos.6748 and 6750 of 2024 in C.S. (Comm. Div.) No.251 of 2024 and O.A. No.958 of 2024)
In a judgment that reads like a screenplay with legal issues, the Madras High Court has set a clear precedent for India’s digital entertainment industry regarding copyright jurisdiction. The case Wunderbar Films vs. Netflix’s Los Gatos involves a Chennai-based production house suing the streaming giant for alleged copyright infringement. However, the issues and facts extend beyond just allegations about ‘Behind the Scene’ (BTS) clips.
THE CASE
Wunderbar Films accused Netflix’s Indian entity Los Gatos and co-defendants, including Tarc Studios and Rowdy Pictures, of using short BTS clips from the 2015 film “Naanum Rowdy Dhaan” in the documentary “Nayanthara: Beyond the Fairy Tale” about actress Nayanthara without permission.
As soon as the trailer for the documentary was released on November 9, 2024, Wunderbar Films sent a legal notice to Netflix, demanding that the infringing copyrighted part be removed. Netflix responded on November 11, stating that the footage did not belong to Wunderbar Films but was of a personal nature. Despite the legal notice, the documentary was officially released on Netflix on November 18, 2024.
Claiming that their copyright had been violated, Wunderbar Films filed a lawsuit in the Madras High Court on November 24, 2024, under Sections 55 and 62 of the Indian Copyright Act, 1957, and under Clause 12 of Letters Patent Act, 1865 of the Madras High Court. They sought ₹10 crore in damages and requested an interim order to stop the continued airing of the documentary.
Netflix argued that the Madras High Court had no authority to hear the case because their main office is in Mumbai, outside the court’s jurisdiction.
LEGAL ISSUES AND NETFLIX’S CONTENTIONS
1. Jurisdiction Challenge
Netflix argued that since their registered office is in Mumbai, and some of the disputed events, such as the alleged use of behind-the-scenes footage, took place online and in various locations, the issues are not confined to one geographical area. Therefore, the legal proceedings should consider the broader context of where these events occurred.
2. Doctrine of Election
Wunderbar Films claimed Netflix violated their exclusive rights over behind-the-scenes content under the Copyright Act, 1957, and relied on the Letters Patent, citing their 2014 Artist Agreement with Nayanthara. Netflix argued that since Wunderbar Films already invoked Copyright Act, they could not invoke the Letters Patent Act.
3. Pre-Suit Mediation
Under Section 12A of the Commercial Courts Act 2015, parties must attempt mediation before filing a commercial suit. Netflix argued that the parties should have undergone mediation to resolve the dispute before filing the lawsuit.
WUNDERBAR FILMS’ CONTENTIONS
Wunderbar Films, argued that the suit was both maintainable and rightly filed in the Madras High Court because a major part of the cause of action arose within its jurisdiction. The Artist Agreement dated August 27, 2014, and the production and release of the film “Naanum Rowdy Dhaan,” all took place in Chennai. The trailer of the documentary “Nayanthara: Beyond the Fairy Tale” was viewed in Chennai, where the BTS clip first appeared, clearly establishing grounds for jurisdiction under Clause 12 of the Letters Patent. Wunderbar Films submitted that this Court had jurisdiction because, even though Netflix is based in Mumbai, the major part of the claim, specifically the infringement involving the BTS footage, occurred in Chennai.
They further submitted that the suit was properly filed under Section 62 of the Copyright Act, which protects the exclusive rights of the copyright holder, and that the remedy under Clause 12 of the Letters Patent is an additional remedy that does not conflict with the rights under the Copyright Act. The respondents argued that the doctrine of election did not apply here because the plaintiff filed one suit covering both legal grounds as a precaution instead of filing two separate suits.
Moreover, Wunderbar Films contended that the urgent nature of the matter justified filing the suit without pre-suit mediation under Section 12A of the Commercial Courts Act. They became aware on November 9, 2024, through the trailer release, that the BTS footage was being shown without permission. They immediately issued a notice and filed the suit on November 24, 2024. They submitted that the suit was filed on an urgent basis since the continuous streaming of the infringed footage has resulted in loss and dilution of its copyright.
JUDGMENT & ANALYSIS
The Court on January 28, 2025, dismissed the applications filed by Los Gatos Production Services India LLP. The Court ruled that the suit filed by Wunderbar Films was maintainable because a major part of the dispute occurred within the jurisdiction of the Madras High Court.
Wunderbar Films’ claim is based on events in Chennai. The Artist Agreement, signed in 2014, granted Wunderbar Films exclusive rights to behind-the-scenes content from the film “Naanum Rowdy Dhaan,” which was released in Chennai in 2015. The issue arose when the documentary’s trailer, released on November 9, 2024, showcased unauthorized footage. The court recognized this as an immediate and ongoing violation, confirming its authority to hear the case, even though Netflix is registered in Mumbai.
Netflix argued that Wunderbar Films should have undergone pre-suit mediation under Section 12A of the Commercial Courts Act. However, the court ruled that because Wunderbar Films only became aware of the copyright violation when the trailer was released, and because every moment the infringing material remains on air dilutes the copyright holder’s rights, urgent legal action was justified.
The court relied on Yamini Manohar vs. T.K.D. Keerthi reported in 2024 (5) SCC 815, wherein the Hon’ble Supreme Court made clear that interim relief is granted after considering the merits of a case and examining three key factors: (a) prima facie case, (b) irreparable harm and injury, and (c) balance of convenience. Even if the court decides not to grant interim relief, it does not automatically mean the lawsuit should be dismissed under Order VII Rule 11 C.P.C. At this early stage, since Wunderbar Films has shown the court that urgent interim relief is needed, the lawsuit cannot be dismissed solely because pre-suit mediation wasn’t conducted.
The judgment also addressed Wunderbar Films’ decision to file the suit under both Section 62 of the Copyright Act and Clause 12 of the Letters Patent. Netflix contended that this dual approach should invoke the doctrine of election, forcing the plaintiff to choose one remedy over the other. However, the court disagreed, explaining that the Copyright Act and the Letters Patent cover different aspects: copyright law protects the ownership of creative work, while the Letters Patent safeguard the contractual terms of the Artist Agreement. Thus, Wunderbar Films was permitted to rely on both legal provisions.
CONCLUSION
The copyright infringement case between Dhanush and Nayanthara took a sharp turn when Netflix challenged the Madras High Court’s jurisdiction. This case highlights a rarely discussed aspect of copyright disputes: the court’s jurisdiction to entertain the matter. The court’s decision, affirming its jurisdiction, serves as an important precedent for future copyright cases in India.