Design v. Copyright: Need for a Clear and Rational Distinction- I

In an earlier post, Mihir had crisply and clearly brought out the conundra posed by s.15 of the Copyright Act in drawing a distinction between works protectible under the Designs Act and those which may be bestowed with copyright protection, using 2 judgments delivered by the Delhi HC, one by the Division Bench in Rajesh Masrani v. Tahliani Design and the other by a Single Judge in Microfibres v. Giridhar. On the 28th of last month, the Division Bench of the Delhi HC delivered its judgment on the appeal filed in the latter case by Microfibres which is of considerable significance in resolving the dilemma the provision poses.

Before I proceed to discuss the DB’s judgment, I think it proper to briefly discuss the judgment (rather the facts of the case) delivered by the Learned Single Judge. The plaintiff Microfibres filed a suit against the defendants Giridhar and Co. and Ors. for infringement of its copyright in the “artistic works” applied to upholstery fabrics and for attempting to pass off its goods as that of the plaintiff’s.

The plaintiff submitted that what was printed on the upholstery fabrics fell under “unique and original artistic works” which were conceptualized and drawn/printed either by the plaintiff’s employees or the copyright in which was assigned by other persons to the plaintiff. What is borne out from this submission is that the purpose/objective of these “artistic works” is their application to the fabrics. We shall see, as we proceed with the discussion, the role of this factor i.e. objective, in drawing a distinction between “artistic works” as defined in the Copyright Act and “designs” as defined in the Designs Act of 1911 and the Designs Act, 2000 which is currently in force.

It was further submitted by the plaintiff that he had obtained copyright registration in respect of some of these drawings and that violation of copyright was being alleged even in respect of those which did not have a registered copyright, for in the plaintiff’s view, copyright subsisted in them as “artistic works” under s.2(c) of the Copyright Act. In 2002, the plaintiff discovered that the defendant was selling inferior fabric which allegedly used the “artistic work” of the plaintiff thereby infringing the copyright in it besides being guilty of passing off.

To this, the defendant countered that the work of the plaintiff did not merit protection under the Copyright Act in the first place and that if at all a valid claim subsisted, it had to be under the Designs Act, 2000 since the works of the plaintiff were designs relating to textile products. The defendant stated that since the plaintiff had failed to obtain a design registration in respect of the works under the erstwhile Designs Act, 1911 and the current Act of 2000, copyright protection was being sought, which claim, according to the defendant, was untenable in the light of the existing framework of both the Copyright Act and the Designs Act.

The other relevant fact which the defendant pointed out was the design registration obtained in respect of the works by the plaintiff in the US and UK in addition to a letter from the Designs Wing of the Indian Office attesting to the fact that the work was registrable under the Designs Act, 2000. Besides, according to the defendants, in addition to the fact that the works did not qualify as “artistic works”, they had to fall within the definition of a design under the Designs Act, 2000 since they were merely ornamental in nature and appealed to the eye. As to the question what qualifies to fall within the definition of artistic work, the defendant submitted that paintings, drawings and pictures which were not industrially applicable fell under “artistic works” and therefore were excluded from the definition of a design. Also, according to the defendant, since textile fabrics were registrable subject-matter under the Designs Act, it implied that they did not qualify to be categorised as “artistic works”.

The next part of the argument tendered by the defendant with regard to s.15 of the Copyright Act is the crux of the issue here which has for long been a bone in the throat of Courts and we shall see if this is so for good reason. According to the defendant, s.15(2) of the Act went against the plaintiff because the provision envisages the cessation of copyright in a design which is capable of being registered under the Designs Act,1911 but has not been registered and has been manufactured 50 times using an industrial process. Before I continue with the judgment, let’s see what the section says and why is it so contentious.

S. 15(1) of the Copyright Act states with zero ambiguity that copyright shall not subsist in any design which is registered under the Designs Act, 1911 and s.15(2) reads thus:
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.

Both the sub-sections speak of the 1911 Act and not the 2000 Act, so one might say that the provision is applicable only to those designs which are registered under the 1911 Act or were capable of being registered under it. There doesn’t seem to be anything in the Act which militates against such a plain and literal interpretation of the section. Further, if one were to go by an internal aid of interpretation, the title of this section reads “Special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 1911”. The primary intention of the section appears to be to prevent the owner of a work from enjoying simultaneous copyright protection once the work is registered under the Designs Act of 1911 (this means copyright existed in the work prior to the registration and it must have been categorised as an “artistic work”). Another objective appears to be that the moment the owner of an unregistered work decides to apply the work to an article using an industrial process for 50 times, he brings himself within the objective sought to be achieved by the Designs Act, 1911 which is to encourage creativity and therefore cannot enjoy copyright protection which has a longer term.

If this is so, what is the position of something which is capable of being registered under the 2000 Act, but has not been so registered? In other words, is s.15 of the Copyright Act applicable to those designs capable of being registered under the Designs Act, 2000 but remain unregistered? How long does copyright subsist in such a work, that is, if at all it exists in the first place?

For this, one has to refer to the definition of “design” under the current Act, which is an amended version of the definition as given under the 1911 Act. The definition of a design under the 2000 Act excludes from its purview artistic works as defined under s.2(c) of the Copyright Act. What does this exclusion signify? In simple terms, the exclusion means this- something which is an artistic work under the Copyright Act cannot enjoy design protection under the 2000 Act (please note that this was not the case under the 1911 Act). But what about a work which falls under the definition of a design under the 2000 Act (implicit in this is the conclusion that it is not an artistic work), but has not been registered under the Act? Is it vested with copyright protection by virtue of its creation? No, this is because if it has to enjoy copyright protection, it has to fall within one of the categories under s.13 of the Copyright Act and the only (possible) category is that of “artistic works” (can it fall under any other category?), but if it does fall within such category, the definition of a design itself robs it of design registrability. The end result of all this seemingly tautologous farrago is that the effect of the framework of the Designs Act, 2000 is as follows- something which is capable of being registered under the Act but has not been so registered receives neither design protection nor common law copyright protection, it remains an orphan.

In the next post, I shall discuss in detail the judgment of the lower Court to verify the accuracy of the afore-made conclusions. Further, this logical structure is built on the assumption that if a particular work is presented before a Court, there exists a test by which the work may be objectively slotted as an “artistic work” or as a “design”. What exactly is the test and how objective is the test too will be discussed in the next post.


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