In a previous post, we highlighted section 15(2) of the Copyright Act and its application to the Mattel vs Aggarwalla case, involving the online version of the famous word game, “Scrabble”. The wordings (no pun intended) of section 15 (2) leave much to be desired; it is no wonder then that its “tortuous” language has been the subject of intense litigation for several years now.
Recently, an appellant bench of the Delhi High Court reviewed section 15(2) and sought to tease out some of the interpretational anxieties faced thus far. The bench clubbed two appeals which raised the section 15(2) issue: Mattel Inc vs Jayant Aggarwalla and Microfibers vs Girdhar.
In order to appreciate this ruling, consider the facts of the Mattel vs Aggarwalla case. Mattel claims a copyright in their “Scrabble” board. They also claim copyright in the underlying drawings which were used to create the board in the first place.
Section 15 (2) reads as below:
“Copyright in any design, which is capable of being registered under the Designs Act, 1911, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been produced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.”
Mattel claims that although the copyright in the Scrabble board may have expired (since it was produced more than 50 times), copyright in the drawings still subsist. And they could sue the Aggrawala brothers on the basis of this copyright. The court responds to this argument as below:
1. Although a copyright in the drawing continues to subsist, a copyright in the design article itself (board) would cease under section 15. In this regard, it bears noting that while a stand alone drawing is copyrightable, it will not, ipso facto, merit design protection. Rather, it has to be applied in some way to an article to merit design protection. It must also be remembered that a design registration is specific to the classes of goods in respect of which it is registered.
Illustratively, consider a 2-D picture of Lord Ganesha. The picture merits copyright protection. But unless such picture is translated to a 3-D embodiment (eg. a bottle shaped as Lord Ganesha or a even a stuffed toy of Lord Ganesha), it will not merit design protection.
2. Based on the above framework, Mattel would continue owning copyrights in their 2-D drawings and can prevent a third party from reproducing these drawings. However, they cannot prevent someone from creating the Scrabble board itself. The conversion of the 2-D drawing to an article (board) that had already been produced 50 times by Mattel would be exempt from copyright infringement under section 15 (2).
Art vs Commerce
To this extent, section 15(2) waters down the rights of a copyright owner to prevent the 3-D reproduction of a 2-D work under section 14. Unfortunately, the court does not expressly articulate this watering down of section 14. This is not to suggest that such watering down is impermissible. In fact, section 14 itself states that it is subject to other provisions in the copyright act, and this presumably includes section 15 as well.
Further, as the court rightly states, interpreting section 15(2) to permit copyright enforcement against the design article itself would render the section otiose. The court attempts to gauge Parliamentary intention in this regard and notes that Parliament did not intend design registrable works to be protected by an extended copyright term protection (60 years when compared with the 15 years that a design entitles one to).
To this extent, the court suggests a distinction between a work of art and a work of commerce i.e the moment a work of art is applied industrially to an article, it ceases to enjoy copyright protection and is only entitled to a (lesser term) design protection. I’m not entirely sure if this distinction between a work of art and a work of commerce is a conceptually sustainable one. Isn’t most art today commercial–waiting to be converted into industrial articles of some sort?
Web Designs?
On a more technical note, one has to ask: is the online reproduction of the Scrabble board exempt from copyright infringement under Section 15(2)?. Or would this amount to nothing more than a mere online reproduction of the 2-d drawing of Mattel’s board? Or would this online board be capable of design registration in its own right?
Let us assume that Mattel creates an electronic scrabble board that can be played online? Could they have registered this online board as a design? If so, in which class? And if such class is “X”, whereas the physical board is registered under “Y” class, would section 15(2) apply? Or is section 15(2) restricted to only those articles (and the class in which they are registered) which have been produced more than 50 times by Mattel? Interesting questions to ponder over.
Scrap the Designs Act?
Section 15(2) also throws up some tricky policy issues:
Do we need a separate design regime at all? Wouldn’t most designs qualify as ‘works of artistic craftsmanship” under the Copyrights Act? If the aim is to provide for a lesser term of protection for such artistic works that are industrially exploited, why not just bring all designs within the scope of the copyright act and stipulate that the moment a work is industrially exploited, it will merit only a 15 year protection and not 60 years (like normal copyrights)? This will also save valuable resources of the government that is now being expended in administering a design regime. And more importantly, will save us from the unfortunately worded section 15(2).
nb: The post benefited from discussions with Sai Krishna Rajagopal, to whom I am very grateful. Any errors in this post are however entirely mine.
A reputed IP practitioner, Mustafa Safiyuddin writes:
” I read your post with interest.
You may note another point.In view of the Delhi HC decision,a drawing or design that may be applied to an article and has eye appeal may loose copyright protection but a drawing for eg a machine not having eye appeal would not loose copyright protection even with the Court’s interpretation.
Machines are also commercial articles.Thus the distinction betwwen art and commerce sought to be made by the court does not seem justified.
Dear Sir,
I am going through the decision of the DB in Microfibres again to see if i may have missed out on subtler points made. Meanwhile, here i would like to try and see if one can support the use of object/intent as a factor in separating artistic works from designs.
The first factor i.e. object and the second factor i.e stand-alone capacity are related and the latter could be a corollary to the former. I believe when the court refers to the commercial aspect behind the work, it does not refer to a vague intent to commercialise the work by applying it to an article, rather it probably refers to the changes that the work undergoes as a result of such intent.In other words, what is being referred to here is that the adaptation of the work for its application to an article might (or as the Court percieves it, it must) involve a loss of stand-alone capacity/independent existence completing its change from an artistic work to a design. This is grossly being referred to as commericial intent by the Court.
Having said that, this kind of justification too can be countered because not every work has to undergo a change which results in loss of its identity, which means it can still be commercially/industrially applied as it exists, without having to lose its independent identity. This brings out the inconsistency in the logic applied by the Court i.e. if the work manages to retain its independent identity (making it an artistic work according to the Court and hence not a design), and yet is capable of being industrially applied to an article (which would/should bring it within the purview of the Designs Act), it turns the logic of the Court upon itself. This kind of argument probably helps us counter the Court’s use of object/intent on a much surer plane.
I must admit that this is just a random thought, so there’s every chance that it might suffer from a fundamental blunder. I shall go through the decision again before i post on it finally.
Sincerely,
J.Sai Deepak.
Dear Sai,
Its an interesting argument and I tend to agree with you. If we can draw out a clearer conceptual distinction for stand alone works vs works that are converted to articles of some sort, we might be able to support the courts “commercial” reasoning better.
Hi Shamnad,
Excellent question on the webdesign bit.
As far as the reproduction of the board game online is concerned, i think copyright should only be invited. To my limitedly enlighted mind, i think the game board as a static image with no game functions would primarily be an artistic work, but would the idea-expression dichotomy play, in as much as it has been expressed in a software code? If yes, then this also entails a copyright in the programme.Plus once you have uploaded it, one is not producing it again and again.. how I look at it is.. I have/make a painting.. and pick it up 50 or 5000 times a day or change its positioning in my home.. that is not producing it again. If the board image has to be uploaded/programmed 50 times or more.. to facilitate use/viewing by others.. perhaps then 15(2) may come to play.
Moreover, once the board has gaming functions appended, i think it should only be a subject of copyright and not design law. IMHO, an online game is essentially a computer programme written in a particular language. Computer pgms being subject of “copyright” should be excluded from the realm of designs also since Functionality excludes design protection.
Moreover, other criteria such as being “applied to an article” for ‘a copyright in a design’ is not invited here.. since the computer hardware and internet are not media to which the game/pgm is applied, rather they aid the operation/working of the web game. Since design law essentially accords a ‘copyright in the design’ which is the right to apply it to an article…copyright IMHO is the only regime that finds place…
Cheers!!!
Dear Divya,
Interesting views there. A quick question. A physical board game can be design registered, since the underlying drawing is applied on a physical article. Why should the position be any different when such drawing is converted to an electronic board, which you might play as well as (or better than) the physical board itself?
Shamnad
Hi Shamnad,
I hope i can effectively articulate my reasoning..Pls. pardon my ignorance that may be on display!!!
The board that is displayed electronically is essentially a manifestation of a computer programme… Now i dont think the game could be said to be “applied to” anything.. rather it works with the aid of the comp/internet.. or these act as a medium to produce a result of the programme/software code. The game is not tangibly applied to something.. and in such a situation i doubt if design registration can be qualified… Ofcourse some of us may say that once you place it online, it is affixed somewhere in the world wide web.. but i doubt how tangibly that spot can be determined.. I guess the Designs law demands tangible application to an article..
Functionality is also an aspect that comes to my mind.. which is why comp game cds.. where in the pgm may be construed to be affixed on the CD does not qualify design registration…(except the pattern/print on the face of the CD!)
To summarize, i think the nature of the subject matter only cannot be considered.. but the nature, medium, operatability and methodology too may have to be considered while addressing such a question..
Cheers!!!
I suddenly remembered this case as i was reading a judgment on similar lines.. a US decision Lotus v. Borland, which deals with the copying of Lotus’ 1-2-3 command menu.. the court ruled that the menu was like the buttons of a vcr and that it had functionality attached to it. What was said to be copied in the case was only the menu command and not the software code itself…
This case has only a remote connection, but had it been proved that scrabble had fallen in public domain.. due to whatever reason.. i dont know if it was copyrghted in the first place… could a better case have been constructed??? May be…
bests,
divs
Interesting case.
In response to Divs stating that functionality is an issue. The purpose of copyright is not to grant protection for functionality. As this is protected under the area of patent law.
good article.