Delhi High Court to Test the Vires of S.15(2) of the Copyright Act: Mukul Goyal v. UoI

Before the year ends, we thought it fit to bring you a hard hitting IP development that will have significant ramifications for the future of the copyright design interface.

design_yourself-wide-1The highly controversial S.15(2) of the Indian Copyright Act has come under the juridical scanner of the Delhi High court in Mukul Goyal v. Union of India and Ors. (W.P. 8356 of 2014). Anand and Anand in a commendable effort is representing the petitioner who is raising a constitutional challenge under Arts. 14, 19(1)(g) and 21 of the Constitution of India. He also claims in the alternative that the court could read down the section to undo the interpretative difficulties that it poses. (Long post to follow)

To understand the importance of this challenge, consider S.15, the text of which reads as:

 “15. Special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 2000.-


(2) Copyright in any design, which is capable of being registered under the Designs Act, 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 license, by any other person.”

Notice the operation of S.15(2) here. Plainly interpreted, it means that any artistic piece that is capable of being registered as a design, but has not so been registered, will lose its copyright protection the moment it has been reproduced more than 50 times. The petition points out that this is extremely dangerous for the various industries that are dependent on producing designs or applied art. The petitioner himself ran one of these companies and is now claiming that his right to carry out his trade under 19(1)(g) is being affected as a consequence of this. To understand why, consider the definition of a design under the Designs Act of 2000. S.2(d) of the Act reads:

 ““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 artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957”

These two sections (15(2) and 2(d)) therefore establish a framework where an artistic work as under the Copyright Act and a design are mutually exclusive of each other i.e. a design can never enjoy protection as an artistic work and vice versa. The grievance here is that in most cases of applied art and allied industries, the artistic work so produced would be capable of being protected as a design and would therefore attract the provisions of S.15(2). The moment 50 reproductions are made on this, the copyright on this design will seize to operate and the artist will be left with no protection. Artists are also not able to predict the commercial viability of their designs and therefore do not opt for a design protection in most cases, until they have tested the waters a little with their design. This further compounds the problem as the design will now be out in the public domain, without a copyright or a design protection, rendering any further IP related protection efforts otiose on this particular design.

 The Art.14 challenge is based on the argument that this section singles out the applied art industry alone as opposed other creative industries and imposes arbitrary restrictions upon them. They also claim that the number of reproductions – 50, is also arbitrary and based on no logical consideration. The argument was also raised that the original S.15 of the Copyright Act was introduced in the likeness of the British Provision with no reasons provided. The Legislature has also failed to notice the subsequent amendments in the English Law and the subsequent enactment of the Enterprise and Regulatory Reform Act of 2013 in the UK which vested all artistic work with a uniform term of protection – life of the creator plus 70 years. The petition also raises serious concerns about how this provision is incompatible with the Berne Convention. It states that Art. 7(4) of the Berne Convention requires at least a protection for a term of 25 years which this provision denies.

 Most readers will at this stage wonder what the operation of Microfibres v. Giridhar will be in this system (read our posts on the case here, here and here). My reading of the case suggests that the court had in fact offered a way out to the applied art industry here. It notes in its judgement:

 “f. The original paintings/artistic works which may be used to industrially produce the designed article would continue to fall within the meaning of the artistic work defined under Section 2(c) of the Copyright Act, 1957 and would be entitled to the full period of copyright protection as evident from the definition of the design under Section 2(d) of the Designs Act. However, the intention of producing the artistic work is not relevant.

g.This is precisely why the legislature not only limited the protection by mandating that the copyright shall cease under the Copyright Act in a registered design but in addition, also deprived copyright protection to designs capable of being registered under the Designs Act, but not so registered, as soon as the concerned design had been applied more than 50 times by industrial process by the owner of the copyright or his licensee.

h.In the original work of art, copyright would exist and the author/holder would continue enjoying the longer protection granted under the Copyright Act in respect of the original artistic work per se.”

 In other words the court here suggested a distinction between copyrighted artistic works simpliciter and design works. While only the latter would be hit by section 15(2), the former would not. While this is an attractive distinction, it comes with its own share of problems that were amply highlighted by Prof Basheer in his book chapter on overlapping IP rights. One of the key problems as he notes is that it thwarts the legislative intent behind section 15(2) which is to restrict the term of protection of industrially applied artists’ works (which is what designs really are) to 15 years. Under Microfibres however while the design itself (eg. a mould of a uniquely shaped cup) would merit only 15 years (if registered) the design owner also owns copyright in the 2d drawing of the cup. And under normal copyright principles can prohibit even the 3d adaptation of this 2d drawing. And therein lies the problem. Microfibres does nothing to solve the paradox in section 2(d) that an artistic work is never design registrable, whereas it is very difficult to qualify a design drawing as something that does not amount to an “artistic work”. If this is so, then no design drawings are registrable as designs. And nothing is caught by section 15(2). A highly redundant result if ever there was one!

 This decision was however quoted with approval by the Bombay High Court in Photoquip India Ltd. v. Delhi Photo Store where this same logical inconsistency is perpetuated.

 This petition however begs us to ask the larger question here – how do we truly deal with IP overlaps? The overlap in IP is never an easy question for any court to decide upon. There are far too many normative concerns that are involved here – does one enforce a dual protection regime in the name of economic benefit? If not, how does one streamline this regime to provide the best protection system with the least burden to society? The striking down of this section would imply that the applied art industry now has the option of a twofold protection – one under the Copyright Act and the other as a Design, increasing the effective protection far beyond what is presently available to a registered design. This is however unlikely to translate into a practical effect as most people would then rather apply under copyright provisions than under design protection which has a much shorter term of protection. These are the implications that the court has to consider in its verdict. Prof. Basheer offers a way out of this policy conundrum. He argues in his book chapter that we should simply scrap the designs regime. As he notes:

 “If original designs can be protected as artistic works under copyright law, why have design protection in the first place—particularly when protection is contingent upon registration (unlike the copyright regime) and entails administrative expenditure. If the concern is that designs (particularly industrially producible ones) ought not to merit more than 15 years’ protection, would that concern not be redressed by amending the Copyright Act to ensure that any artistic work produced industrially more than 50 times is granted protection for only 15 years (and not for a term equalling life of the author plus 60 years, as with other copyrighted works)?”

 This writ may well lead to the result at some future point in time. Anyway kudos to the petitioner and their lawyers for raising this important issue and we will look forward to a robust ruling on this hopefully in the New Year.

 Either which way the court might sway, one thing is for certain – this case will be closely watched for its implications, if not for the encouraging trend of constitutionalisation of IP that it represents. The IP regime needs a healthy dose of constitutional principles injected into it now and then, and this case comes at a suitable time.

 The next date of hearing is on the 9th of February, 2015.


Thomas J. Vallianeth

Thomas is a final year law student at the National Law University, Jodhpur pursuing a B.Sc. LL.B. (IP Hons.) course. His first exposure to IP law was at a workshop that he attended in High School and ever since then, he has pursued a keen interest in the field. However, his real interests lie in the interfaces between Technology Law and IP, with an active interest in the Open Source movement.


  1. AvatarShashank Mangal

    I am sure that its an inadvertent error but nonetheless requires correction. The difference in the term of protection between copyright and copyright in design is not just 45 years but much more. Because the term of copyright protection is for life of the author+60 years and not just 60 years.


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