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

Continuing our discussion from the last two posts, we shall now move on to the judgment of the Division Bench of the Delhi High Court in Microfibres. Before I proceed any further, my apologies to the readers for the delay in rounding up this discussion. At the expense of sounding repetitive, here are the conclusions and propositions made in the last two posts.
1. 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.
2. Anything that is an “artistic work” under the Copyright Act cannot be protected under the Designs Act, 2000.
3. A purposive approach to the Designs Act, 2000 could lead one to conclude that a decidedly artistic work, when industrially applied to an article, shall fall under the ambit of the Designs Act, 2000 with a consequent reduction in the term of protection to 15 years. Does this reduction apply to the other rights which form part of the copyright in the underlying artistic work or is this only a limitation on the term of protection available for industrial application of the work as a design?

The third one, which is still testy, was the central issue in the DB’s judgment in Microfibres, because the plaintiff/appellant Microfibres strenuously claimed that its work was an artistic work under the Copyright Act, whose reproduction in the form of designs to upholstery fabrics by the defendants violated its copyright in the work and that the 50-time rule of s.15(2) of the Copyright Act was not applicable to it.

The DB, in this judgment, clubbed appeals from two other cases which are faced with the same issue- Mattel v. Jayant Aggarwalla and Dart Industries v. Technoplast. Though a final decision is yet to be delivered in these appeals, arguments put forth by the counsels for the parties in the cases on the issue of interpretation of s.15 of the Copyright Act were considered by the Court before dismissing Microfibres’ appeal.

The array of counsels literally reads the who’s who of this country’s best litigators; naturally, the judgment made for a very interesting read (a long one too- 79 pages) and above all, it showed how a provision could be subjected to varying interpretations in the hands of these stalwarts. In fact, in the process, several critical questions such as the fundamental difference between the objectives sought to be achieved by the Designs Act and the Copyright Act were raised and answered too for the most part.

That said, what I found interesting was that, though every party (here 6 of them) attempted to build a logical edifice, the structure so formed was incomplete in someway or the other. In all honesty, this observation is made from an academic perspective and is not meant to offend anyone because this only goes on to show the serious interpretative dilemma the provision poses and the expedient need for clarity through a legislative exercise, and not interpretational legerdemain. To explain what I mean, I shall try and elucidate the submissions made by the parties in as brief and limpid a manner I can.

But before I do that, without referring to the judgment, I believe one can take a stand solely based on the facts of the Microfibres case. It was not disputed that, if at all the impugned work was capable of design registration, the appropriate Act was the Designs Act of 1911. We also know that the definition of design under the 1911 Act did not exclude artistic works; if so, s.15 of the Copyright Act, which is specifically directed towards the 1911 Act, is to be deemed applicable to the work of the plaintiff. Therefore, since the work had been industrially applied for atleast 50 times by the plaintiff, the copyright in the artistic work ceased to subsist which when combined with the factum of non-registration under the Designs Act, 1911 by the plaintiff, deprived it of a right to claim infringement against the defendant.

Now, following are a few important inferences from the judgment of the Single Judge and questions which one would expect the DB’s judgment to answer:
1. According to the Single Judge, for the work of Microfibres to fall under s.2(c) of the Copyright Act, it can only claim to be a painting and since the work was not a painting in the sense defined in s.2(c), it did not qualify to be an artistic work. This, it ruled on the basis that the provision envisages something which has an independent identity. Where does the Copyright Act stipulate such a criterion, express or implied?

2. The object of the work could not be lost sight of, according to the Single Judge. Does the Copyright Act require that for a work to be protected under it, it must not be made for an industrial purpose? Or does the presence of design legislation implicitly suggest that anything, be it an artistic work or a design, applied industrially to an article falls within the purview of the Designs Act? If that be the case, this renders the very presence of a definition of “design” and exclusion of artistic works redundant (or “otiose”). If one has to justify the presence of a definition for “design”, it could mean that unless a work qualifies to be a “design” under the Designs Act, the fact that it is industrially applied to an article is not material. It follows that satisfaction of the requirements of the definition is to be put before industrial application and not the other way round.

3. If so, industrial application of an artistic work does not automatically accord it the status of a design and so is not governed by the Designs Act or the term prescribed by it. But does this defeat the purpose of the Designs Act? Be that as it may, how are we to safeguard the objective of the Designs Act and yet harmonize it with the definition of a design? The use of the mischief rule is an option but such use comes at the expense of erosion of definitional sanctity. So if the current definition is to be given its due, amendment seems the only way out.

4. Also, the requirements of independent identity and object are related and are based on the premise that adaptation of an artistic work for industrial application robs it of its identity and hence the artistic work metamorphs into a design. Is this premise statutorily sound?

Restating these questions:
1. What is the position of the law of designs, as it stands today, on industrial application of a work to an article, when the status of the work as an artistic work under the Copyright Act, 1957 is not in doubt?

2. Does the Designs, Act 2000, by virtue of its existence, limit the right and term of a copyright owner of an artistic work, only in so far as the application of the work as a design by an industrial process is concerned? In other words, with regard to an artistic work, is the effect of the Designs Act, 2000 limited to governing the application of the work to an article without in anyway affecting the underlying copyright in the work?

3. If yes, this would mean that the Designs Act, 2000 was intended to carve out an area from conventional copyright law to administer the industrial application of any work, be it an artistic work under the Copyright Act or a design under the Designs Act, 2000, leaving untouched the rest of the bundle of rights guaranteed to the owner of an artistic work under the Copyright Act, 1957. Again, is there a statutory basis to arrive at this conclusion?

I shall now discuss the submissions of some of the parties to seek answers to these questions.

Microfibres
Microfibres (for the sake of brevity, let’s call it MF) started off by questioning the rationale underlying the distinction between designs and artistic works. It contended that even if the distinction was justified, the opinion of the single judge that its work lacked independent identity was without sufficient explanation. Further, according to MF, since the Copyright Act did not require a subjective assessment of the artistic quality of the work, the Single Judge’s distinction was artificial (we shall see in the later part of this post how the definition of design was used by the DB to explain the criterion of independent identity).

MF also rightly pointed out that the presence of textile fabric in the classification did not automatically bring the work within the ambit of the Designs Act since it is the nature of the work that determines its status.

Here’s an interesting yet flawed way of looking at s.15(2) which was put forth by MF; according to it, since the provision speaks of copyright in “any design” and not copyright in “any artistic work”, it did not affect the copyright in the artistic work. Then why does such a provision find mention in the Copyright Act?? Obviously, this means it refers to a design which is an artistic work as well. As discussed, in the first post, such a possibility is ruled out under the definition of a design in Designs Act, 2000 but was valid under the 1911 Act and therefore is applicable to MF’s work.

Let us look at this from yet another way; the painting underlying the work is an original artistic work, which after adaptation could be a design. If the adapted work i.e. the design, has been copied by the defendants Giridhar and others, then a claim under the Designs Act comes into being. If the original work has been copied, then the Copyright Act can be evoked; but if the copying pertains to replication of the original artistic work by industrial application to an article, which Act provides a remedy?

The other question which needs to be answered is what happens if the adapted work too qualifies to be an artistic work? Following is the line of logic adopted by MF; according to it, each of the intermediary which was produced before the final product came into being, was an artistic work. It contended that only these works, despite having identities of their own, would lose their copyright after 50 industrial reproductions, but not the original artistic work since the object of the intermediaries is industrial use.

Simply put, MF rejected the criterion of independent identity but accepted the use of object as a factor. Consequently, according to it, the original artistic work would not be governed by s.15(2), but the provision would apply to intermediate artistic works which are intended to be applied industrially. The chink in this argument is this- how is one to decide that this separation of the original artistic work and the derived artistic works is not a mere façade to circumvent s.15(2)?

Assuming that such adaptation is bonafide, if the adapted work does not differ significantly from the original work, then the copyright owner might even unfairly appropriate the adapted work under the Copyright Act using the doctrine of substantial similarity. The other possibility could be that such separation might actually hurt the cause of the copyright owner if the defendant claims that his work is similar to the adapted work and therefore he is governed by the Designs Act and not the Copyright Act, which was the case here!

Giridhar and Ors.
According to the defendant Giridhar and Co., MF’s argument could stifle competition for it permits the owner of an artistic work underlying a design to prevent others from industrially applying the design to articles. In other words, according to the defendant, conceptual separation of the design from the product or the artistic work from the design would render the Designs Act impotent. This point goes to the root of the concept of designs and reinforces the proposition that a design has to be analysed with reference to the article it is sought to be applied to.

Further, it was contended by the defendant that, even if the work of MF was an artistic work, the 50-time rule would apply to it. The rationale put forward to support this sounds pretty logical; it was submitted that the exclusion of artistic works from the current definition of design suggests that such works cannot be deemed worthy of design protection or design-like protection. Design-like protection means protection with respect to industrial application of the work. To buttress this, the fundamental difference between the nature of right granted under conventional copyright law and designs law was brought into picture i.e. the latter is evoked in all those instances where a work is fit for industrial application.

So far so good, but the flaw in the defendant’s argument came to fore when it went a step further to state that the object behind the work decided its suitability for industrial application. As explained in the first post, the object of the author of the work and the object to which it is sought to be used by the assignee may be different, but the nature of the work remains the same. Therefore, use of object as a factor, instead of its nature isn’t rational.

Mattel & Dart Industries
Similar arguments were presented for both these parties (both of which were plaintiffs and owners of their respective works) by Mr.Arun Jaitley where he first split the process of arriving at the final product into various stages such as creation of drawings, preparation of moulds based on the drawings and finally manufacture of products from the moulds.

It was argued that copyright vested in the drawings and the moulds, and that in the process of imitating the final products, the defendants would per force have to prepare the moulds, thereby infringing the copyright in them. With regard to s.15, it was argued that only the final product would fall within its ambit, but not the drawings and the moulds. This, according to Mattel and dart, was because the design would attain the status of a design only when applied to the article.

It was also argued that under s.15(2), what would extinguish is the copyright in the design after 50 applications, but not the artistic work. Ironically, an extension of this line of logic would only go against the plaintiffs/appellants because if application of the design is what gives it an identity, use of the underlying artistic work to restrict application of the work as a design is logically unsound in the first place.

The point validly made by these parties was with respect to use of object to decide the nature of protection to be bestowed on the work. The use of object was countered citing a hypothetical similar to the one explained in the first post i.e. the difference between the object of creation of the work and object of its subsequent use.

Technoplast and Jayant Agarwalla
On behalf of Technoplast, the defendant in the Dart Industries case, it was submitted that there were 2 different categories of artistic works, one under the Copyright Act and the other under the Designs Act with object of creation separating the two. The motive behind the creation of the work was essential, according to technoplast and that once the work had been put to industrial use, copyright on the work was lost forever. We have already discussed the flaw in this argument, so I shall desist from elaborating further.

On behalf of Jayant Agarwalla, the defendant in the Mattel case, it was submitted that copyright survives in the artistic work but limited monopoly would come into picture for its industrial application. Also, s.15 was interpreted as connecting the Designs Act, 2000 and the Copyright Act i.e. in the absence of s.15, a design could claim longer protection under the Copyright Act. Therefore, s.15 limited such protection insofar as it relates to industrial application of the work.

The DB’s Conclusions
The Court rightly ruled out the use of object to determine the nature of protection because it held object to be an indecipherable construct whose use defied logic and lacked statutory basis. However, the use of independent identity was endorsed on the basis of phraseology of s.2(d) of the Designs Act which defines “design” thus:

“design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article….”

The Court opined that the use of “only” means that a design lacks the completeness of an independent work of art and it refers only to the features of shape, configuration etc. I would like to point out this criterion of independent identity is not to be confused with artistic quality of the work. The Court observed thus:

“Therefore, the original artistic work, which may have inspired the creation of a design, is not merely the feature of shape, configuration, pattern, ornament or composition of lines or colours which are created to apply to an article by an industrial process. The original artistic work is something different from the design.”

Coming to s.15, the Court ruled that the provision acted as a limitation on the right of a copyright owner of an artistic work to reproduce the work in a three dimensional form. In other words, it limited the right of 3-D reproduction granted under s.14(c) of the Copyright Act to 50 reproductions. I may be wrong here, but I find this conclusion inconsistent with the aforementioned observation of the Court. My point is, if the design is something different from the original artistic work, how does its application amount to 3D reproduction of the artistic work itself? Consequently, how can s.15 be interpreted as limiting the number of 3D reproductions of the artistic work to 50 times?

The Court then went on to hold that the effect of s.15 was to leave untouched the copyright in the underlying artistic work, it governed only the design derived from such work. It held thus:

“If the design is registered under the Designs Act, the Design would lose its copyright protection under the Copyright Act. If it is a design registrable under the Designs Act but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation would harmonize the Copyright and the Designs Act in accordance with the legislative intent.”

In short, the Court said that a design which is capable of being registered under the Designs Act, 2000 but is unregistered, shall enjoy copyright protection upto 50 reproductions. Again, I do not find myself agreeing with this conclusion because, as I had stated in the first post, the current definition of a design leaves no room for copyright protection for an unregistered design, so the question of presence of copyright protection for 50 reproductions shouldn’t even arise. Though the Honourable Court has clarified certain points, I humbly believe that it has conflated the 1911 Act and the 2000 Act.

The Way Forward
As suggested in the last few posts on this topic, particularly the solution put forward by Mr.Basheer, an easier and effective way out of this conundrum could be to stipulate that the term of protection for industrial application of a work would be limited to 15 years.

As always, I shall be delighted to hear counterviews to the points raised here if I have missed out on subtler points by oversight. I thank Mr.Basheer for his sagacious insights on the topic and for giving me an opportunity to contribute to this discussion.