A Note on M/S. Jagdamba Impex v. M/S. Tristar Products Pvt. Ltd

Background

The Delhi HC, in M/S. Jagdamba Impex (“Appellant” who is the original defendant) v. M/S. Tristar Products Pvt. Ltd (“Respondent” who is the original plaintiff) (FAO No. 128/2014 & CM Nos. 7778-79/2014 & FAO No. 129/2014 & CM Nos. 7782-83/2014), examined the applicability of Section 15(2) of Copyright Act, 1957. The first appeal was filed under Order 43 Rule 1(r) CPC impugning the order of the trial court dated 19.2.2014 which had earlier allowed the application of the Respondent under Order 39 Rules 1 & 2 CPC and dismissed the application of the Appellant under Order 39 Rule 4 CPC. The impugned order of the trial court restrained the Appellant/defendant from using a machine which was used for manufacturing of combs on the ground that the machine was a copy of the machine made by the Respondent from the drawings over which the Respondent enjoyed copyright under the Copyright Act, 1957. According to the impugned judgment, the Respondent claimed that the “drawings define and declare the shape and measurement of machine which ultimately makes machine to function and perform.” Admittedly, more than 50 combs had been manufactured using the machine. The aforesaid facts can be represented as follows:

[Industrial drawings →Machine → Combs]

Issue:

Assuming the validity of copyright over industrial drawings, did the fact situation attract Section 15(2) of Copyright Act, 1957?

Concerned provisions

The Designs Act, 2000

“2(d)  “Design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours  applied to any article whether in two dimensional or three dimensional  or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to  and are judged solely by the eye;  but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include  any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.”

Copyright Act, 1957

“15. Special provision regarding copyright in designs registered or capable of being registered under the (Designs Act, 2000  (16 of 2000)—(1)  Copyright shall not subsist under this Act in any design which is registered under the (Designs Act, 2000 (16 of 2000) (2)  Copyright in any design, which is capable of being registered under the (Designs Act, 2000 (16 of 2000), 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.”

Judgment

It is imperative to reproduce the relevant paragraphs of the judgment:“Putting it differently, a drawing/design which is an artistic work under the Copyright Act, as also under the Designs Act, if not registered under the Designs Act, will have protection under the Copyright Act only till the design is used not more than 50 times by an industrial process to produce an article by means of the application of the drawing/design…. In other words, if a drawing/design which is an artistic work under the Copyright work and which is used by an industrial process for producing an article, then in such case once the 51^st article is produced by application of the design with an industrial process,  then,  unless  the drawing/design is registered under the Designs Act, the  owner of the copyright work i.e  drawing/design will no longer  be entitled  to claim exclusivity of an entitlement to use the drawing/design  because of rights which were created  under the Copyright Act, 1957  because originally the drawing/design was an artistic work having a copyright under the Copyright Act. (paragraph 11) Further, “it is not disputed before this Court that more than 50 articles/combs  have been manufactured by  the respondent/plaintiff by  applying the  drawing/design  by  the machine/industrial process and consequently  it is clear that  no rights can be claimed with respect to drawing/design under the Copyright Act.”(paragraph 12)

Allowing the appeals, the HC imposed a cost of INR 1 lakh on the Respondent. According to the Court, “It is quite clear that not only the injunction application filed by the respondent/plaintiff was misconceived but the suit itself is misconceived and  the cause of action and the relief prayed  for  therein will fly in the face of Section 15(2) of the Copyright Act, 1957 if  relief is granted in terms of plaint, whether final or interim. Obviously, the suit has been filed on the basis of incorrect legal advice by deliberately ignoring the binding provision of Section 15(2) of the Copyright Act. The trial court has  allowed the injunction application without referring  to  the vital provision of Section 15(2) and consequently the impugned judgment is totally illegal being set aside. In commercial cases costs must follow the event, more so  in the facts of the present case where  the suit is misconceived and is filed ignoring the statutory mandate of Section 15(2) of the Copyright Act   and which has resulted in stopping of the concerned business of the appellant/defendant.”(paragraph 16)

Comments

The first canon of interpretation is to interpret a provision literally. If the literal interpretation leads to perverse results, then other options are considered. I am reproducing Section 15(2) of Copyright Act:

“15. Special provision regarding copyright in designs registered or capable of being registered under the (Designs Act, 2000  (16 of 2000)—(1)  Copyright shall not subsist under this Act in any design which is registered under the (Designs Act, 2000 (16 of 2000) (2)  Copyright in any design, which is capable of being registered under the (Designs Act, 2000 (16 of 2000), 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.”

Going by the literal interpretation, Section 15(2) is attracted when the “article to which the design has been applied has been reproduced more than fifty times”. The design, in the instant case, was applied to the machine and not to the combs.  As I depicted earlier, [Industrial drawings →Machine → Combs].  Therefore, the correct legal test would have been to examine whether more than 50 machines (and not 50 combs) had been manufactured using the design. Note that the design was not applied vis-a-vis combs. On the other hand, it was applied vis-a-vis the machine. A plain reading of the aforesaid provision gives this end result. I don’t see any perverse result arising out of this interpretation. As the interpretation in the instant judgment goes against the literal interpretation of Section 15(2) of Copyright Act, 1957, the judgment is legally incorrect. Further, based on this erroneous reasoning, the HC was unjustifiably harsh on the lower court and the Appellant.

I must, however, sound a note of caution. If the machine used any mould which directly influenced the design of the comb, then my opinion may vary. In such a case, it can be argued that [Industrial drawings → Combs] and not [Industrial drawings →Machine → Combs]. If the fact situation is indeed [Industrial drawings → Combs], then my former opinion may not hold ground. In that case, I will be inclined to criticize the instant judgment for incoherent analysis of facts and incorrect legal reasoning.

 H/T: I am thankful to Prof. Shamnad Basheer and Prashant Reddy for their comments.