A recent decision of a Division Bench of the Delhi High Court, Rajesh Masrani v. Tahliani Design presents an opportunity to highlight certain issues arising from the interaction between copyright and design protection.
The Plaintiff, a private limited company under the “creative leadership” of fashion designer Tarun Tahliani, had alleged that the drawings which it made in the course of developing garments and accessories were artistic works under Section 2 (c) (i) of the Copyright Act. The patterns printed and embroidered on the fabric were also alleged to be artistic works in their own right, as were the garments finally designed. Further, the plaintiff had alleged infringement of copyright in these various artistic works, and a Single Judge had issued an interim injunction in its favour.
The defendant-appellant raised several arguments in appeal, and at least two of them merit deeper consideration. The first was that the garments and drawings were not ‘artistic works’ for the purposes of copyright protection; and the second was that in any case, the drawings were required to be registered as designs under Section 15 (2) of the Copyright Act.
The 15 (2) argument:
The latter argument can be dealt with very first. This is what Section 15 (2) says:
Copyright in any design, which is capable of being registered under the Designs Act, 1911 (2 of 1911), 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.
For this provision to be applicable, it is essential that the work in question is (a) capable of being registered as a design under the 1911 Act, (b) has not been so registered and (c) the article to which the design has been applied has been reproduced more than 50 times. The plaintiff had contended that condition (c) was not met as the drawings/designs/garments were made exclusively for particular customers and had not been reproduced over 50 times.
The ‘Artistic works’ argument:
This leaves us to consider the prior question of whether the works were “artistic works” such that they could claim to be within the purview of copyright protection. In arguing that the work produced by the plaintiff company was not capable of being the subject-matter of copyright protection, the appellant placed heavy reliance on the decision in Microfibres v. Girdhar. In that decision, the Court had stated:
62. What cannot be lost sight of is the very object with which such arrangements or works had been made. The object is to put them to industrial use. An industrial process has to be done to apply the work or configuration to the textile. It is not something which has to be framed and put on the wall or would have any utility by itself. The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of art. (Emphasis added)
Relying on this paragraph, the appellant argued that the drawings and patters created by the plaintiff company were made with the object of putting them to commercial use. Thus, even if less than fifty copies were being made, the works in question were still being used for an industrial object. The drawings and patterns had no independent existence separate from the final garments, and they could be applied on to the garments only through an industrial process. Therefore, the defendant argued that copyright protection should be denied.
The Court distinguished Microfibres on several grounds.
A. In Microfibres, the work was reproduced more than 50 times.
This fact is sufficient to answer the issue related to Section 15 (2) of the Copyright Act. But the appellant was arguing that because of the nature of or object behind the works, they were incapable of being considered “artistic works” in the first place. As far as that question is concerned, the number of times the work has been reproduced is irrelevant. The question which the Court should have answered was “Is the object behind the creation of a work relevant in deciding whether a work is an artistic work or not?” Had this question been answered explicitly, the Court might have found that the object/intent behind the creation of the work is irrelevant. Alternatively, what the Court might have meant was that the fact that the work was produced less than fifty times was an indication of the fact that the object behind the creation was not ‘industrial’.
In either case, merely distinguishing Microfibres on this ground was insufficient (although not necessarily incorrect) – the Court could perhaps have clarified its reasoning further.
B. In Microfibres, the subject matter of the work in dispute were some floral designs which were applied upon fabric through an industrial process and the plaintiff in that case had registered the subject matter of the work of design in
From this, the Court drew the conclusion that in Microfibres, the only relevant issue was the one related to Section 15 (2) of the Act. The observations of the Court on that issue could not influence the position of law on whether something could be an artistic work in the first place. However, it is worth noting that the observation in Microfibres reproduced above arose in the context of deciding whether the works qualify as “artistic works” under the Copyright Act.
A few questions:
Importantly, the definition of “design” under the Designs Act, 1911, it is possible for a work to be both an “artistic work” as well as a “design”. This is why the provision in Section 15 deals with copyright in a design capable of being registered under the 1911 Act. The Designs Act, 2000 defines “design” to exclude any “artistic work” under Section 2 (c) of the Copyright Act.
I leave readers with a few policy questions. To what extent should the object behind the creation of a work matter in deciding on what type of IP protection that work is entitled to? Should the test for deciding on the type of protection be solely an objective test – that of only looking at the work in question – or should it allow for subjective elements such as the intent behind the production of that work to be considered? And finally, considering that the 2000 Designs Act excludes “artistic works” from “designs”, how best do we draw the line between the two?