Copyright

Celebrating World IP Day: A Murderous Design!


Here’s wishing all our readers a wonderful World IP Day! As many of you know, WIPO is focussing on “designs” as the key theme for this years’ IP day.

And this offers me a perfect opportunity to throw up an idea I’ve been harbouring for a while now, namely that we drive a deep stake into the heart of the design regime and bury it once and for all!

Of course, the actual proposal is not as dramatic as the short snippet….and perhaps a wee bit technical….but then, what would SpicyIP be without a bit of drama?

Here is my tentative proposal and the reasons for why I think we should scrap designs and have it subsumed within the broad rubric of copyrights (at least in Indian context). I approach the issue from the vantage point of section 15(3) of the Copyright Act, a particularly problematic provision that has had the most adroit of legal jugglers at their wit’s end.

In essence, this section provides that if something is both design registrable and copyrightable, and is not in fact registered as a design, then it loses both design and copyright protection, if 50 or more articles corresponding to that design are industrially produced.

This section was notably invoked in the Scrabulous case to deny copyright protection to a board that had not been registered as a design. The rationale underlying this provision appears to be that something capable of design protection and prone to being industrially produced ought not to merit a 60 year + protection in the way that a copyright does.

However, if this be the aim, could it not be more efficiently achieved by scrapping the designs act altogether and bringing design protectable subject matter within the fold of the copyright regime?

The Designs Act provides for the registration (and consequent protection) of a wide variety of subject matter including patterns, ornamentation etc. Most of this subject matter would easily qualify as “artistic works” under the Copyright Act. In other words, if the Designs Act is scrapped, one could easily qualify such subject matter as “artistic works” and claim their protection under the Copyright Act.

However, in order to ensure that such designs susceptible to industrial production do not merit the same number of years of protection as an ordinary copyright, it could also be provided that if any artistic work is produced more than 50 times, then its period of protection shall be 15 years from the date of production of the first article and not 60 years from the death of the author.

Further, in order to ensure that all erstwhile design protectable subject matter is protected as “artistic works” without leaving any room for ambiguity, the section on artistic works ought to be expanded to include all such categories.

Voila! Wouldn’t this make for a much simpler and easier to administer regime? And one that helps us achieve tremendous cost savings….savings for the applicant (who does not have to pay for design registration per class and per hour to their attorney), for the government which does not need to maintain a separate design registration department…and savings for potential litigants who are subjected to the wrath of section 15(3)…

On this auspicious day, may we exhort you to wear your thinking policy hats and interrogate the design behind the design regime; and ask if the time has come to design an alternative regime that is aesthetically more pleasing and functionally more efficient than the prevalent one. One proposal is to subsume designs within the broad rubric of the cost efficient copyright regime, as I suggest. Are there others?

ps: image from here

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Shamnad Basheer

Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

9 comments.

  1. AvatarKshitij

    Thought provoking. A passing thought without delving deep into the topic – The essence of design protection is to stop unauthorized buying/selling/offering to sell of an “article” on which a “new” or “original” design is “applied”. How will copyright protection, which essentially prevents unauthorized copying and distribution of the design, remedy the cause of the designer? For example, a manufacturer can buy a licensed copy of the design from the designer, and apply it on articles and sell uninhibited. How will copyright protection remedy the cause of the designer in such a case?

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  2. AvatarInohelp Consulting Solutions Pvt. Ltd.

    Shamnad – If the design protection is effaced and only a copyright subsists, how will you stop some one from mass manufacturing and selling of the design on an article engraved/carved etc by any mechanical or chemical process or any other industrial process? I believe the essence of design law is to extend the protection to “articles” so that a design registration holder can thwart any unauthorized “application of the design” on an article rather than mere thwarting of “copying of the design”.

    To elaborate on the example, as a manufacturer I can buy “one single” licensed copy of the copyrighted design, and make thousands of article with the design applied (engraved/carved) to it by any mechanical/chemical process. How will the copyright protection on the subsisting design (without there being any design registration on the article) stop me from mass manufacturing and selling of such an article?

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  3. AvatarInohelp Consulting Solutions Pvt. Ltd.

    Hi Shamnad – The last comment was mine only. I got the identity button wrong.

    Copyright law protects against 3D reproductions of 2-D works agreed, but, not any application on any article by an industrial (chemical/mechanical or any other process), and thereafter selling of the article. This is what design laws cover.

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  4. AvatarAnonymous

    It is true that current design laws does not inspire industry whether international or domestic. One important factor today for many industries including, fashion, accessories,luxury, home appliances, lifestyle products, etc. are that shelf life of new designs are very short. In some cases the shelf does not even last for a couple of months whereas registration (eligiblity for protection) takes at least 6-8 months. This is one reason.

    The other is the prescribed test of novelty under the law. A significant part of design industry operate on so-called “inspiration” and thus lack confidence of claiming novelty although Indian Design Office rarely checks novetly or rather is not equipped to do that.

    These two situation and other fundamental defects in the current design laws can be easily cured by merging it with copyright laws to which this strand actully belongs to. Copyright laws in India both stautory and customary are quite comprehensive, deeply rooted and tested by time and yet progressive enough to encompass design laws. Designers need not worry, copyright laws knows very well how to seperate the chaff from the grain.

    AP

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