In the last post, I had given a prelude to the controversy surrounding s.15 of the Copyright Act stating that (1) anything that is an “artistic work” under the Copyright Act cannot be protected under the Designs Act, 2000 and (2) a work which is capable of being registered as a design under the Designs Act, 2000 would not be entitled to protection of any kind from either the Copyright Act or the Designs Act, 2000 so long as it remains unregistered.
On the face of it, these conclusions seem straightforward but how does one decide if a particular work is an “artistic work” or a “design”? This question needs to be answered clearly because there is a possibility of someone wrongfully claiming protection for the work under the Copyright Act as an artistic work if he has failed to register it under the Designs Act, 2000. Therefore, a clear point of segregation is necessary to prevent mischief of this nature.
Further, under the existing framework, if a work is decidedly an artistic work under the Copyright Act, does it remain within the purview of the Act even after it has been applied to an article by an industrial process for over 50 times? The answer prima facie appears to be in the affirmative because there does not seem to be anything either in the Copyright Act or the Designs Act, 2000 to suggest cessation of the copyright in the artistic work.
This stands in contrast with the UK Designs Act which stipulates that once an artistic work has been applied industrially, it loses copyright protection and is to be governed only by the Designs Act. Notwithstanding the absence of such a provision in the Designs Act, 2000, a purposive approach can be taken here to argue that copyright in an artistic work ceases to exist the moment it is applied to an article by an industrial process because firstly, copyright under the Copyright Act gives the owner the right of reproduction, 2D or 3D and not application to an article; and secondly, if the owner is allowed to continue enjoying the copyright, it would mean he gets to exclude others from applying the work to articles for the entire term of the copyright as opposed to a shorter term prescribed under the Designs Act, 2000.
This defeats the very purpose of the Designs Act, 2000 which governs the application of a work to industrially produced articles; consequently, a purposive construction of the 2000 Act would lead us to conclude that copyright in an artistic work ceases to subsist when it is industrially applied over 50 times (or even once?) to an article. This means that in effect the 1911 Act and the 2000 Act remain the same (barring subtle differences) in their intent.
To answer the question of a test for what constitutes an artistic work and what is a design, let us return to the discussion on the judgment of the Single Judge in Microfibres v. Giridhar, the facts of which were discussed in the last post. The Judge, rather the Court, undertook an analysis of the interplay between the relevant provisions of the Copyright Act (s.2(c), s.15), the Designs Act, 1911 and that of 2000.
The first issue as part of the analysis before the Court was if there existed copyright in the work of the plaintiff to begin with. The plaintiff’s contention that his work was protected as an artistic work under the Berne Convention was dealt with and the Court observed that since registration was not a condition precedent to the existence of a copyright in the work, lack of registration with respect to certain works of the plaintiff was not a relevant factor to be considered.
The plaintiff then contended that s.2(c) of the Copyright Act did not indicate that the intent behind the work was to be considered before according copyright protection to it as an artistic work; in the view of the plaintiff, originality was the essential prerequisite which if satisfied led to the vestation of copyright in the work. It was further submitted that rearrangement of old material too could lead to an original work.
The defendant’s counter to these points are worth reading because the above arguments could have been accepted in the absence of the Designs Act, but where there exists a separate legislation for the protection of designs, it becomes necessary to have a basis for distinguishing an artistic work from a design.
The defendant pointed out that the arguments of the plaintiff were based on the premise/assumption that the work in question was an artistic work, but such premise was never justified or explained. Since the very premise of the plaintiff’s submission was under question, it had to be answered before proceeding to other issues. The defendant argued that the impugned work had to be considered a design for the purpose of its creation was application on upholstery fabrics using an industrial process. In other words, what was being suggested was that anything which is created for the purpose of application on an article using an industrial process was the subject-matter of the Designs Act and not the Copyright Act.
According to the defendant, the only possible category the work could fall under, in the Copyright Act, was a “painting” under s.2(c), but this required the work to have an independent existence i.e. the sole purpose of its creation must not have been for application on an article by an industrial process. The question which comes to one’s mind is, does this proposition mean that anything which has an independent existence (and hence treated as an artistic work) has to be deemed unworthy of application by an industrial process? Conversely, does this mean that the sole criterion by which a design is treated as one, is its inability to stand on its own feet? The former question was answered earlier in this post using a purposive approach.
As for the converse, the argument put forward by the defendant has to be examined. According to the defendant, since a design does not contribute to the functional features of the product, is merely ornamental and is intended to provide only a visual appeal, it follows that it is incapable of having an identity of its own. Therefore, according to the defendant, the floral design of the plaintiff which conformed to these requirements was not an artistic work, but a design.
This line of argument was sought to be buttressed by the decision of the Privy Council in Interlogo v. Tyco Industries, where it was held that the whole purpose of the design legislation was to protect works which did not have independent artistic merit and assumed significance only on application to an article.
I feel that this point of the Privy Council does have merit in it for the following reasons; the difference between the right given to a copyright owner and a design right owner is of critical importance here. A copyright owner can prevent others from reproduction of the work itself whereas a design right owner can prevent others from applying the design to articles, but not for reproduction of the design itself which points to the fact that designs derive their identity only in conjunction with the articles they are sought to be applied to, which is not the case with a copyrighted work. Also, the presence of a classification for goods in the Designs Act and the absence of one in the Copyright Act only goes on to support this proposition.
To this extent, the submission of the defendant sounds reasonable, but does the logic explained above apply to the floral designs in question? I am not sure if one can say that floral designs are incapable of having an identity of their own. That apart, a further point made on behalf of the defendant is capable of being misinterpreted; here I reproduce para 53 of the judgment:
“The defendants contended that the legislative intent behind the repealed Designs Act, 1911 and coming into force of the new Designs Act, 2000 remained the same and the exclusion of ‘artistic work’ in the definition in the new Designs Act, 2000 is only clarificatory and was intended to exclude only artistic work pure and simple such as paintings, sculptures and works of art.”
Broadly speaking, this submission might be correct, but there are subtle yet critical implications of the repeal of the 1911 Act and the promulgation of the 2000 Act which I had attempted to bring out in the last post, saying that under the erstwhile Act i.e. 1911 Act, copyright came into existence in the design as an artistic work upon its creation and subsisted until it was registered or had been manufactured by an industrial process for less than 50 times.
However, under the current Act of 2000, there exists no copyright or any monopoly of any kind in a design (if it satisfies the definition of a design) until it is registered and that it remains an orphan so long as it remains unregistered. This logic seems to have received the endorsement of the Court in the case of Samsonite Corp. v. Vijay Sales in which it was observed thus:
“If they (the impugned works) were designs and had not been registered under the Designs Act, they were not subject to copyright protection.
This was reiterated in AGA Medical Corporation v. Faisal Kapadi as follows:
“This Court on a consideration of the matter and more particularly the meaning of copyright and the definition of ‘design’ in the Designs Act is, prima facie, of the view that the plaintiff does not have a subsisting copyright under the Copyright Act, firstly; because it is capable of being registered under the Designs Act though it has not been so registered…”
Applying this logic to the facts of the instant case, the Court ruled that in such cases, the object behind the work could not be lost sight of in deciding if a work was an artistic work or a design. The second factor was the ability or otherwise of the work to hold its own. The Court ruled that since the object of the floral designs was its application to the upholstery fabric i.e. industrial use, the first condition had been satisfied. The Court then proceeded to conclude, without sufficient elaboration, that the design was incapable of having an independent existence.
On the basis of these conclusions, the Court ruled that the work of the plaintiff would fall under the Designs Act, 1911 and since it had been produced for more than 50 times, copyright in the work had ceased to exist. Further, as there was no registered design in respect of the work, there was no valid claim in favour of the plaintiff.
As Mihir had rightly asked, I am not sure of the wisdom of using the object behind the work as a guiding light in deciding its status. Here’s a hypothetical to explain why; the author of a work may not have intended to commercially produce the work which means it could be treated as an artistic work, subject of course to its ability to have an identity of its own. Subsequently the author may assign to another person the right to apply the work industrially for less than 50 times.
If the thumb rule to decide if a particular process is an industrial process is the 50-time rule, then does this mean that the work remains an artistic work despite the object of the use of the work undergoing a change? Also, should’nt we be distinguishing between the object behind the creation of a work and the object of its subsequent use?
The point which one is trying to convey here is that a hierarchy of values is necessary if one is to decide which is the more objective criterion and which ought to come first- the object or the stand-alone capacity of the work.
Even when it comes to the question of an independent identity, the Court did not elaborate sufficiently on what would accord a work such an identity because only then would it be possible to separate an artistic work from a design.
The alternative to the “object test” and to do away with this confusion would be to use the object of the Designs Act and stipulate that any work, be it an artistic work or a design, if applied to an article for commercial purposes using an industrial process even once, would immediately fall within the ambit of the Designs Act. Therefore, if the author/owner of an artistic work intends to apply the work to an article, he has to register it under the Designs Act or stand to lose his copyright if it is applied to an article but remains unregistered.
In the next post, we shall discuss the judgment of the Division Bench on this case.