Under the Indian IP system, a clear distinction has been made between rights available under the Designs Act, 2000 (“the Designs Act”) and the Copyright Act, 1957 (“the Copyright Act”), to avoid any overlap in protection under the two Acts. However, owing to a similarity in the work protectable under these laws, creators and manufacturers have many times been left to answer a very basic question regarding the type of protection which they should avail when an artistic work is produced.
As per Section 2(d) of the Designs Act a design has been defined to mean only the features of shape, configuration, pattern or ornament or composition of lines or colour or combination thereof applied to any article whether 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 or 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 of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957.
As per Section 15(1) of the Copyright Act, copyright under the Copyright Act shall not subsist in a design protected under the Designs Act. Hence, once a design is registered, the proprietor foregoes the protection under the Copyright Act. Further, under Section 15(2) of the Copyright Act, if any design which can be registered under the Designs Act is not so registered, then the copyright under the Copyright Act on such a design shall cease as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the design or by any other person with the license of the owner. In this case, if the proprietor does not get the design registered and manufactures more than 50 pieces of the article with that design, the proprietor then ends up foregoing the copyright protection under the Copyright Act as well.
Point of law regarding availability of protection under the Copyright Act for a design protectable under the Designs Act has been discussed in detail by the Delhi High Court in the matter of Microfibres Inc v. Girdhar and Co. [2006(32) PTC 157 (Del.)] and on appeal as reported in 2009(40) PTC 519 (Del.). The plaintiff in this case was engaged worldwide in the business relating to manufacturing, marketing, selling and exporting of upholstery fabrics and had alleged violation by the defendants of its copyright in the artistic works applied to upholstery fabrics and in particular, the defendant was reproducing identical copies or colourable imitations of the artistic works on its own fabrics.
In response to the plaintiff’s allegations of copyright violation, the defendants argued that the plaintiff is not entitled to protection under the Copyright Act as the artistic work under contention was protectable under the Designs Act and has been produced for more than 50 times. The Single Judge of the Delhi High Court in judgment dated 13-1-2006 agreed with the defendant and refused to grant relief by observing that the exclusion of an artistic work as per Copyright Act from the definition of design under Designs Act was meant only to exclude paintings and such works of art.
Appeal against the order of Single Judge was dismissed by a Bench of 3 judges of the Delhi High Court. In its judgment, the Delhi High Court divided the artistic work into “original artistic work” and commercial/industrial manifestation of such artistic work such as the design derived from and founded upon the original artistic work. In the latter case, the work should be registered as a design under the Designs Act. The Delhi High Court observed that “Thus, we are of the view that an original artistic work initially acquires protection under the Copyright Act as an ‘artistic work’ or else the protection under the Designs Act qua the product created from the artistic work when industrially applied.”
The Delhi High Court came to the conclusion that although, copyright would exist in the original work of art and the author/holder would continue enjoying the longer protection granted under the Copyright Act in respect of the original artistic work per se, however, when the artistic work is applied to an article and is industrially produced, the design would have to be registered under the Designs Act. If the design has not been registered under the Designs Act, the design would continue to enjoy copyright protection under the Copyright Act till the time it has not been applied on the article for more than 50 times through the industrial process.
In the recent case of Pranda Jewellery Pvt. Ltd. v. Aarya 24 kt & Ors., the Bombay High Court, in its judgment pronounced in April 2015 relied on the Delhi High Court’s interpretation for deciding on the plaintiff’s claim for violation of its copyright. The plaintiff was engaged in the business of designing, marketing and selling gold sheet articles of deities and religious symbols under the brand name 'Prima Art'. The plaintiff alleged copyright infringement by defendant in respect of producing identical gold sheet articles of deities and religious symbols. The defendants challenged the plaintiff’s copyright over the impugned artistic work and relied on Section 15 of the Copyright Act. The defendants argued that the artistic works were capable of being registered as designs under the Designs Act, and on not being so registered, the copyright in them ceased after being applied to a product for more than 50 times by an industrial process.
Relying on the judgments of the Delhi High Court in Microfibres Inc. and in Rajesh Masrani v. Tahiliani Design Pvt. Ltd. [AIR 2009 Delhi 44], the Bombay High Court observed that:
“An 'artistic work' so long as it can qualify as an artistic work reproduced in any form shall continue to enjoy the copyright available to it under the Copyright Act, 1957. But when it is used as the basis for designing an article by its application by an industrial process or means, meaning thereby an article other than the artistic work itself in a two or three dimensional form, it would enjoy a lesser period of protection of copyright under Section 11 of the Designs Act, 2000, if registered as a design under that Act, and if not so registered (despite being registrable), would cease to enjoy any copyright after more than fifty such applications, under Section 15(2) of the Copyright Act, 1957. Once again, as an original artistic work it would continue to enjoy the full copyright under the Copyright Act, 1957 and cannot be reproduced in any two or three dimensional form by anyone except the owner of the copyright. What it would cease to enjoy is the copyright protection in its industrial application for production of an article.”
When an artistic work is applied, by an industrial process, on an article of which the proprietor is likely to manufacture more than 50 pieces, it is important that design registration be obtained under the Designs Act as the proprietor is likely to lose copyright protection for the article under the Copyright Act. Since a design has to be novel for it to be registered, the design application should be made before the artistic work is made public in anyway.
[The author is a Principal Associate, IPR Practice, Lakshmikumaran & Sridharan, New Delhi]