Ambiguity surrounding the “design” and “artistic works” relationship continues to plague the industry, especially the fashion industry. The fashion industry has long been touted as one of the most ‘creative’ industries. One of the reasons for innovation and creativity in this industry is the market itself. This paper title “piracy paradox” and Shamnad’s blog here, reveal that in practise this industry suffers/benefits from the “piracy paradox” i.e. “Copying enables designs and styles to move quickly from early adopters to the masses. And since no one cool wants to keep wearing something after everybody else is wearing it, the copying of designs helps fuel the incessant demand for something new.”
Though market conditioning is a commercial reason for increased innovation and creativity, in India, ambiguous IP laws and difficult enforcement of exclusivity, actually end up adding to the ‘openness’ of this industry. This post tries to show that ambiguous IP law make the system inherently and unintentionally open. But is this a kind of ‘openness’ that is acceptable? This is explored through examining the Designs Act, 2000 and its interrelation with the Copyright Act, 1957 and illustrated with the recent case of Ritika Private Limited v. Biba Apparels Private Limited.
Illustration – Ritika Private Limited v. Biba Apparels Private Limited
The Plaintiff is a famous boutique apparel designer brand in India. The Defendant is also a famous apparel designer and manufacturer in India. Both companies design attractive contemporary ethic wear – creative fusion fashion.
The Plaintiff brought a suit against the Defendant seeking an injunction against the Defendant from reproducing, printing, publishing, selling or offering etc. prints or garments which are a reproduction of the Plaintiff’s prints and garments. The Plaintiff claimed to be the first owner of the copyright in the artistic works related to these garments and also claimed trade secret violation by its ex-employees. However, the Plaintiff ’s designs were not registered under the Designs Act, 2000.
The Defendant on the other hand, argued that the Plaintiff’s case fell squarely under Section 15(2) of the Copyright Act, 1957 i.e. the copyright in the Plaintiff’s design ceased to exist as it had been reproduced more than 50 times by an industrial process.
The single judge of the Delhi High Court, citing in detail the Microfibers v. Girdhar and Co. case, on this very point, came to the conclusion that the suit was barred by Section 15(2) of the Copyright Act, 1957 as the Plaintiff’s copyright in the said works had ceased to exist.
Therefore, Ritu Kumar by reproducing the said designs on its apparels, more than 50 times, was not only disentitled to design protection but also disentitled to enforce its copyright in the original drawing of the design. The court concluded that there was no copyright infringement, not by comparing similarity between the Plaintiff’s prints/designs and the Defendant’s printed reproduction, but by holding that the Defendant was creating apparel by an industrial process and was not merely lifting and affixing a print taken from the copyrighted work of the Plaintiff.
Ambiguity and openness
The inherent object of the Designs Act, 2000 is to ensure some amount of exclusivity while still ensuring that designs are not over-protected, as evidence by the statement of objects and reasons of this Act, as below –
“The legal system of the protection of industrial designs requires to be made more efficient in order to ensure effective protection to registered designs. It is also required to promote design activity in order to promote the design element in an article of production. The proposed Designs Bill is essentially aimed to balance these interests. It is also intended to ensure that the law does not unnecessarily extent protection beyond what is necessary to create the required incentive for design activity while removing impediments to the free use of available designs“
The definition of a ‘design’ under Section 2(d), excludes ” any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957)“
Further, Section 15(2) of the Copyright Act, 1957, states that “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.“
These three pieces of law read together are far from clear. Shamnad brings out the ambiguities and inconsistencies in his book chapter on overlapping IP. First, the definition of a design excludes any artistic works as defined under the Copyright Act. Therefore, from a plain reading no artistic work is registrable as a design. Not only is an artistic work not protectable as a design but upon industrial reproduction of the artistic work more than 50 times, the design looses even its copyright protection as per Section 15(2) of the Copyright Act. A plain reading of these sections contextualized in the fashion industry, leads to the conclusion that a design which is applied/made into apparel more than 50 times looses all protection. When this provision was introduced, maybe producing 50 articles was a benchmark, but in today’s day and age and as again observed by Shamnad in his chapter, producing 50 articles is achievable even in a single day. Therefore, from a purported entitlement of 15 years of protection, the owner of the artistic work in such designs may not even get a single day’s protection. Which leads us to conclude that such designs become free at 50.
Courts, starting with Microfibres, have tried to reconcile the apparent disconnect with the object of these legislations and their actual content. For instance, in Mircrofibers it was held that the copyright in the original work of art would subsist even after the design was applied more than 50 times but only the copyright in the applied design would cease – “It cannot be disputed that 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. [..] Thus, while the original painting would indeed be entitled to the copyright protection, the commercial/industrial manifestation of such paintings such as the design derived from and founded upon the original painting for the purpose of industrial production of furnishings would only be covered by the limitations placed in Section 15 of the Copyright Act and would get protection if registered as a design under the Designs Act but would enjoy lesser period of protection in case of a registered design“. This to a certain extent resurrects exclusivity in the design by allowing the copyright owner to sue for copyright infringement of the artistic work. However, as evidenced in the present case, the court dismissed the claim for copyright infringement on the following grounds –
” 26. Lastly, I may note that in the facts of the present case it is not as if the copyright work in itself is reprinted so to say on the dresses which are created by the defendant. If the facts were that from the copyrighted works of the plaintiff prints were created and such prints which have protection under the copyright work are as it is lifted and printed upon the dresses of the defendant, may be in such a case without saying so finally on this aspect, an issue of violation of the copyright of the work of the plaintiff under Indian Copyright Act may have arisen. However, in the facts of the present case the defendant is creating dresses or creating articles by an industrial means and process by application of the design or drawing or sketch and the defendant is not as it is affixing a print taken from the copyrighted work of the plaintiff as a print on a dress created by the defendant. Issue in the present case therefore will not be a violation of a copyright of the plaintiff under the Indian Copyright Act.”
The distinction being drawn by the court in the above two situations cited in the quoted paragraph seems unclear. Does this mean that if a particular design/print is fixed not using an industrial process, only such an act would amount to copyright infringement? But since the question is related to copyright law and not the Designs Act, why is this investigation necessary? And does this mean that if the copied prints are the same/substantial imitations and meet the threshold for copyright infringement, it will still not be considered as copyright infringement since such copying was done by an industrial process/application? If this is the logic and now the law as laid down in the present case, since most designs in the fashion industry are industrially made and applied, it is difficult to imagine whether they can be protected even under copyright law.
This therefore brings us back to the initial premise that ambiguity in law unintentionally opens the market. However, is such openness acceptable?
The issue should have gone beyond this given that the defendant was using an industrial process and extended till a patent grant covering the Indian Patent Act, 1970. If patent opposition happened there with success, the verdict should have been different.
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