Published by The Daily Star on 2nd January, 2010 (Link Above)
This week your advocate is Barrister Omar Khan Joy of the Supreme Court of Bangladesh and Head of ‘The Legal Counsel’. His professional interests include commercial law, corporate law, family law, land law, constitutional law, banking law, arbitration and intellectual property laws. Our civil and criminal law experts from reputed law chambers will provide the legal summary advice.
Mr. A is the producer of a TV serial (natok). He sold his serial to TV Channel X. Among other clauses in the contract paper between Mr. A and TV Channel X, one stated that Mr. A could not sell the serial to any other TV Channel. However, there was no clause regarding copyright rights or as such.
Please advise whether Mr. A would be able to make DVD and VCDs of his serial and put them up for sale without being in breach of the contract with TV Channel X.
Thanks for your query. Upon perusal of the facts forwarded by you it appears that you have produced a drama serial and subsequently sold it to a TV channel (‘X’). In the sale agreement of the said drama serial, there is a clause, which created a bar on your part to sell it to any other TV channel. But the said agreement is silent regarding the copyright of the said produced works.
Here, from legal perspective, three statutes may be of ready reference. They are the Contract Act-1972, the Specific Relief Act-1877 and the other one is the Copyright Act-2000. Now, we shall briefly discuss your issue in light with the above mentioned laws of the country.
The contract executed between you and X channel will be governed by the Contract Act -1972 and for getting any sort of legal remedy arising out of this contract so far it relates to enforcement of the said contract, one has to follow the provisions of Specific Relief Act- 1877 (SR Act). You have stated that in the contract between you and X, there is a provision to the effect that you would not be able to sell this drama to any other TV channel and you are now desirous to reproduce it into DVD, VCD etc to sell it commercially. Please note it carefully that if the contents of the said provision contains bar only to sell it to any other TV channel then you can sell it in the market to mass consumer as there is no such bar in the contract. But if you sell the same to any TV channel, then X-channel may sue against you and seek either compensation for breach of contract or injunction against you so that you cannot sell it to any other TV channel. But X cannot obtain any injunction against you to prevent you from selling it to anyone other than any TV channel.
Having said the same, I would now like to discuss on the Copyright Act 2000. It appears from your issue that you sold your drama to a TV channel by executing a contract and `there is no clause in the said contract regarding copyright or any Intellectual Property Right issue. Now, the question is whether you can produce DVD and VCDs of his serial and put them up for sale without being in breach of the contract with TV Channel X. As being the producer, as per the Copyright Act, you are the owner of copyright of the drama subject to the fact that you have produced this drama as being the entrepreneur and investor of the same and you haven’t any other reverse agreement with the artists of this drama so far the copyright is concerned.
As per the Copyright Act 2000, the copyright can be transmitted in two ways i.e. through license or through assignment. Please note that the license is a permission given by the copyright owner to any person for exercising the copyright owned by the copyright owner. And at the same time, being the copyright owner, he/she has every right to exercise his copyright ownership (to reproduce, copy, sell etc.) in separate or similar mode of which the license is given earlier. On the other hand, assignment is such a mode of transmitting the copyright by the copyright owner(assignor) in favor of the assignee, by which the copyright owner transfers all his rights/any individual right on the artistic work to the assignee with or without any condition.
So far I can understand, it appears that in the contract between you and X, there is no such arrangement of assignment of the copyright in question rather it is a mere license given by you to X for broadcasting the same in X channel. And, if the understanding is correct, then you have every right to reproduce it by your own in similar or separate mode and sell it to the market. But, it is strongly advisable that before going into production of the VCD/DVDs of your said drama serial, you should consult with a lawyer along with a copy of the sale agreement. There may be other clauses in the agreement, which may have contrary implications. I hope the above explanations will help you to ascertain your legal position and act accordingly.