With the deadline of January 8 nearing for Naayanthara to file her reply in the high-profile copyright dispute with actor Dhanush’s production house, over the unauthorized use of behind-the-scenes footage, Bharathwaj Ramakrishnan and Deepali Vashist discuss whether the De Minimis rule can save the “Lady Superstar”. Bharathwaj is a 3rd year LLB Student at RGSOIPL, IIT Kharagpur and loves books and IP. Deepali is a 3rd year law student at NLSIU Bangalore. Her passion lies in understanding the intersections of AI regulation and intellectual property rights.
Nayanthara and Dhanush Copyright Controversy – De Minimis Rule to the Rescue?
By Bharathwaj Ramakrishnan and Deepali Vashist
A cinematograph is a felicitous blend, a beautiful totality, a constellation of stars.
-Justice Krishna Iyer in IPRS v. EIMPA
The stage seems to have been set for a clash of two heavyweights of the Tamil film industry. But this time the face-off is not on the silver screens but before the Madras High Court. Reportedly(see here and here), a suit has been filed by actor Dhanush’s production house Wunderbar Films (the plaintiff) against the “Lady Superstar” Nayanthara, Actor-Director Vignesh Shivan, and streaming platform Netflix (respondents/ defendants) for copyright infringement. Wunderbar Films is asserting that the respondents/defendants have infringed the copyright of the plaintiff by using ‘Behind The Screen’ scenes (BTS) from their film, Naanum Rowdy Dhaan. While Nayanthara’s lawyer is asserting that there is no infringement or violation “because what has been utilised by us in the docu series is not part of behind-the-scenes from the film” and was part of the actress’s personal library.
This post will briefly state the known factual position as can be gleaned from the various news reports that cover the issue. Later, we will look at the controversy from the lens of Prof. Arul Scaria’s two questions in his article in The Hindu. The first question is which work’s copyright has been infringed and who is the owner of that work. The second question is whether the copyright owner can fully control the use of his work. Then we will discuss the issue of performance rights and its assignment in perpetuity to the producer. Finally, the post will also discuss the De-Minimis Defence.
Brief Facts
In 2015, Naanum Rowdy Dhaan (Translation: I am also Rowdy), produced by Wunderbar Films, emerged as a significant project for Nayanthara and director Vignesh Shivan. In addition to its critical acclaim, the picture was a pivotal moment in their personal lives, signifying the commencement of their relationship. Recently, Netflix produced a docu-series that focuses on Nayanthara’s life and career titled “Nayanthara: Beyond the Fairy Tale” and the trailer was released on Nov 9, 2024. After the trailer was released the actress issued an open letter on Instagram stating that a legal notice was issued to her by Wunderbar. The lawyer of the actress responded to the legal notice stating that the BTS was taken from the actress’s personal library and was not part of the film. The actress had also heavily criticized Dhanush, the co-owner of the production house, for their unwillingness to issue NOC for using visual cuts, photographs, or lyrics from the movie. Later a suit was filed by Wunderbar Films stating that the actress and Co have engaged in Copyright infringement by including the Behind the Scenes footage in the Netflix docu-series on two grounds:
- The unauthorized use of BTS in the documentary is an infringement of the copyright in the cinematograph film “Naanum Rowdy Dhaan”.
- Under the “Artist Agreement” the actress has assigned her performance rights in connection to the film to Wunderbar Films and she was performing while the BTS was being shot.
Does Cinematograph Film Include BTS or Is It a Separate Work?
From Prof. Scaria’s first question and the positioning of the parties, it is clear that the dispute hinges on the question of whether BTS is part of the Cinematograph film “Naanum Rowdy Dhaan” or is it a separate work.
Section 2(f) of the Copyright Act defines cinematograph film as “any work of visual recording” and “it shall be construed as including any work produced by any process analogous to cinematography including video films”. In Section 2(xxa) visual recording is defined as “recording in any medium, by any method including the storing of it by any electronic means, of moving images or of the representations thereof, from which they can be perceived, reproduced or communicated by any method”. Considering the above, it is clear that both the BTS and the movie fall under the definition of the Cinematograph film as provided in the Copyright Act. Now as to the question of who owns the BTS or who does not, the following issues will determine the question of ownership:
- Whether BTS form part of “Naanum Rowdy Dhaan” which is owned by the production house? If yes, then this would be a clear case of infringement (Section 51), unless fair dealing/use (Section 52) or other copyright doctrines save the alleged infringers.
- Can BTS be a separate work from the cinematograph film? If yes, then the existing contractual relationships between the parties involved might shed some light on who is the owner of the work.
- In our opinion, the defence of BTS being shot in personal devices and thus not belonging to the producer is a weak argument, as the definition of cinematograph film includes “any” form of visual recording. Hence, as is the case with the second point, the existing contracts might shed light on the issue of who is the owner of the Copyright in the BTS.
Performer’s Right and Assignment of the Same in Perpetuity:
The second assertion made by Wunderbar is that through the “artist agreement” the actress and her husband have assigned all their performance rights in connection to the film in perpetuity to them. Section 2(qq) inter alia defines an actor as a performer. The previous Section 2(q) defines a performance as “any visual or acoustic presentation made live by one or more performers”. There is a lack of clarity on the question of what constitutes a performance and the requirement that it be made “live” (see here for a wonderful paper on this issue). Irrespective of the lack of clarity on the interpretation of performance, it is quite possible that the actions of Nayanthara and her husband in the BTS might not constitute performance due to the proviso provided under the definition of performer. The proviso clarifies that if the performance is casual or incidental in nature, is part of the normal course, and is not acknowledged in credits will not constitute a performance. Thus, unless the BTS was somehow acknowledged in the credits it raises the question of whether the actress and her husband could be classified as a performer and was engaging in performance when the BTS was being recorded. This also makes one wonder if including all the blooper reels and BTS during the end credits of a film is a deliberate attempt to make them a part of the performance and also part of the cinematograph film. Food for thought!
De-Minimis Use to the Rescue
Now even assuming Wunderbar owns the Copyright over BTS, Prof Scaria’s second question gains relevance. As he explains, a Copyright owner cannot have full control over the use of their work. Hence, provisions relating to fair dealing and more importantly the defence of De-Minimis others gain significance here.
De-Minimis or “de minimis non curat lex” is a legal principle that discounts minor or trivial violations of law. To put it another way, the law does not concern itself with trifles. This principle has also gained significance under Copyright law. The Division Bench of Delhi High Court in India Tv Independent News Service Pvt. vs Yashraj Films Pvt. Ltd (2015), which dealt with a similar issue wherein a music singer had performed copyrighted songs in a chat show noted how the De-Minimis defence has been applied in three different ways. One, as part of infringement analysis; Second, as part of fair dealing/use; And finally, as a standalone doctrine. The Court in para 60 notes “if a performer is to give a chat show or an interview, surely Einstein’s Theory of Relativity or the discovery of the Boson Particle would not be the subject matter of discussion. The life and the achievement of the performer would be discussed.” The Court went on to observe how when Vasundhra Das (singer) is being interviewed it would involve discussing personal events from her life, her pitfalls, and her successes. The Court observed we cannot separate the performer from the performance and it was natural that the performer would be asked to perform a few of her famous songs. Thus, even if she were to sing more than a “wee bit” and not the entire song the doctrine of De-Minimis will apply.
The above case can gain relevance with regard to the issue at hand. One can see how similar arguments can be made for the actress, as the docu-series covers her story as an actress, her marriage and the centrality of “Naanum Rowdy Dhaan” to her personal love story. It is not possible to separate the actress from her movies and “Naanum Rowdy Dhaan” with which the actress and her husband share a deep personal connection. With no more than a few seconds of BTS (one of the authors of this post watched the docu-series and was able to notice around 10 sec of BTS) being part of a 1 hour 30 minutes docu series, there are reasons to declare the use as De-Minimis. Reportedly, the Madras HC has issued notice in the dispute to Nayanthara asking her and other defendants to file their replies by 8 January. If the case proceeds further it would surely be one of the notable IP developments to look out for in 2025 (on that note, do check our exhaustive coverage of last year’s notable IP developments here).