Overlap Between Design And Copyright Law: An Indian Perspective

Introduction

Intellectual property rights being a bundle of rights may involve an overlap between the rights being granted to its owner over the same subject matter. This overlap is evident in the applied arts field where the both the Copyright Law as well as the Designs Law apply. However, the respective Laws in India protecting designs and copyright, i.e., the Designs Act, 2000 (“the Designs Act”) and the Copyright Act, 1957 (“the Copyright Act”) do attempt to lay down a distinction between the works protectable thereunder and the rights granted under the two Acts.

Section 2(d)[1] of the Designs Act precludes any artistic work as defined in clause (c) of Section 2 of the Copyright Act from the ambit of a definition of a design which can be registered under the Designs Act. Further, Section 15(1)[2] of the Copyright Act provides that no the copyright shall subsist in any design which has been registered under the Designs Act. As regards those designs which have not been registered under the Designs Act, sub-section (2) of Section 15[3] of the Copyright Act states that the copyright in such designs shall cease to exist as soon as the article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright. Therefore, by virtue of not having registered the design under the Designs Act and having applied the design to more than 50 pieces of article, the owner of such a design shall be bereft of any rights under either of the two Acts.

The distinction between the protection granted under the two Acts has been discussed in several judgements delivered by the Courts in India. The Delhi High Court’s judgement in the case of Microfibres Inc vs. Girdhar& Co & Anr[4] sought to bring some clarity over the original artistic works protectable under the Copyright Act and the designs registrable under the Designs Act. The facts of the case in brief being that the Plaintiff, engaged in the manufacture of upholstery materials, brought an action against the Defendants for copyright infringement of the artistic works in the upholstery materials. The Defendants on the other hand, contented that the alleged artistic work was capable of being registered as a design under the Designs Act and the Plaintiff having not registered it so and having reproduced it more than 50 times, did not have any rights under either of the two Acts. The Division Bench while rejecting the Plaintiff's claim of copyright infringement held” … a famous painting will continue to enjoy the protection available to an artistic work under the Copyright Act. A design created from such a painting for the purpose of industrial application on an article so as to produce an article which has features of shape, or configuration or pattern or ornament or composition of lines or colours and which appeals to the eye would also be entitled design protection in terms of the provisions of the Designs Act. Therefore, if the design is registered under the Designs Act, the Design would lose its copyright protection under the Copyright Act but not the original painting. If it is a design registrable under the Designs Act but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation, in our view, would harmonize the Copyright and the Designs Act in accordance with the legislative intent.” The Court further went on to clarify that the intent behind both the Acts was to grant longer protection to works which are purely artistic in nature as compared to the works which are meant for commercialization.

This ruling of the Delhi High Court also formed the basis of the judgment rendered in Ritika Private Limited v Biba Apparels Private Limited[5], wherein the Single Judge of the Delhi High Court dismissed the Plaintiff’s claim of copyright infringement by virtue of the application of Section 15(2) of the Copyright Act. The Court in the instant case observed that the Defendant was producing dresses vide an industrial process for application of drawing or the sketch and did not take the Plaintiff’s copyrighted work as it is and affixed it onto the dresses. Thus, the case of copyright infringement was not made out.

In a judgement rendered by the Bombay High Court[6], which involved the question regarding the protection of the contested work under the Copyright Act and the Designs Act, the Court held that an ‘article’ is different from the ‘original artistic work’. The Court reiterated that the original artistic work shall continue to enjoy protection under the Copyright Act irrespective of the form in which it is reproduced. However, the moment it is applied by an industrial process on any article, other than the artistic work in itself in a two- or three-dimensional form, it will fall within the definition of a design and if registered under the Designs Act, shall be entitled to protection for a lesser period of time. That being said, by virtue of Section 15(2) of the Copyright Act, if the design has not been registered under the Designs Act, the copyright in such a design shall cease to exist once the 51st article with the design has been reproduced. “However, as an original artistic work it would continue to enjoy the full copyright under the Copyright Act, what it would cease to enjoy is the copyright protection in its industrial application for production of an article.”

In the Delhi High Court’s judgement of 2017 [7], it was observed that the conjoint reading of the relevant provisions of the Designs Act and the Copyright Act make it clear that the design of an article for the purposes of industrial production thereof is a design registrable under the Designs Act. However, if such a design has not been so registered the owner thereof shall lose the copyright in the design once he/ she produces more than 50 such articles. The Court held that the Plaintiff in the instant case had prepared the engineering drawings for the purpose of the production of the ATL devices. Thus, the drawings of the ATL devices were designs registrable under the Designs Act. However, the Plaintiff, having not registered its design and not denying the fact that it had already manufactured more than 50 ATL devices by an industrial process, had also lost the copyright in the design by virtue of Section 15(2) of the Copyright Act.

Conclusion

From the judgements rendered by the different Courts in India, it can be concluded that artistic works applied on an article by an industrial process should be registered under the Designs Act to afford any protection to them. However, in the absence of a design registration, the copyright in such registrable designs shall cease once the design has been reproduced more than 50 times.

For any questions, please write to the author, Neetika Gandhi, Senior Associate, at neetika.gandhi@iprattorneys.com

[1] Section 2. (d) “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 [2] Section 15. (1) Copyright shall not subsist under this Act in any design which is registered under the 3 Designs Act, 2000. [3] Section 15. (2) Copyright in any design, which is capable of being registered under the Designs Act, 2000 but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person. [4] (2009 (40) PTC 519 (Del.) (DB) [5] CS(OS) No. 182/2011 [6] AIR 2015 BOM 157 [7] Holland Company LP and Ors v SP Industries CS(COMM) 1419/2016