Dart Industries Inc. & Ors. v Techno Plast & Ors: Resolving the Copyright-Design Conundrum

The apparent conflict between the Copyright Act and Designs Act has led to much litigation in recent times which we have covered extensively on the blog here, here, here and here. This conflict arises due to the overlaps in both these IP regimes which provide for different terms of protection even though they protect substantially similar works. Very recently, this conundrum has been discussed by Balu here. In this post, we discuss the case of Dart Industries Inc. v Technoplast & Ors., the latest addition by the Delhi High Court to the jurisprudence surrounding this conflict.

Facts

The first plaintiff, Dart, a US based company and the second plaintiff, Tupperware Indian Pvt. Ltd. (TIPL) filed a suit for permanent injunction in the Delhi High Court against Techno Plast, the proprietor of the mark “Signoware”. The plaintiffs claimed that ownership to the know-how, intellectual property rights and trade secrets in its designs used for the manufacture of Tupperware products. The plaintiffs alleged that they were a world famous company with immense goodwill and reputation and the defendant company copied their product designs which amount to design infringement, copyright infringement, passing off, copying designs by reverse engineering, unfair competition and unfair trade practices. The defendants, on the other hand, claimed that the products were distinct in terms of trade name, appearance, colour scheme and a product of their own skill and knowledge and also that the designs were in public domain.

Orders of the Single Judge

As to the claim of design infringement, the court looked into the meaning of “publication” and noted that it meant the availability of knowledge or awareness about a particular design. Registration was only prima facie evidence of novelty and originality and the designs lacked originality as the designs had published in the 1989 book, “The Tupperware Cook”. The designs lacked originality as they were substantially similar to those published earlier. Therefore, they were not entitled to injunction on this ground.

The court rejected the claim of copyright infringement as the claims clearly fell within the ambit of the Designs Act and copyright claims in industrial drawings and designs, to be used for manufacturing processes were not maintainable. The copyright ceases to exist once the design has been applied and reproduced over 50 times. However, since there were serious evidential doubts in proving that the copyright survived design registration, the court did not injunct the defendants.

As to the claim of passing off, the single judge held that the situation was actually contrary. As per a report, the defendant’s salesmen made representations to the customers not that their products were Tupperware products, but that they were as good in quality and appearance, yet half the price of Tupperware. Thus, the defendants were not passing off their goods; rather they were merely puffing up their products by claiming superior quality.

Contentions of the Plaintiffs

• A visual comparison of the parties’ products prove that the defendants were copying the plaintiffs’ products. Shapes and colours may acquire distinctiveness and are protectable by law. A passing off action is not confined by trademark only, it also covers trade dress.
• The single judge incorrectly relied upon the defendants’ report of one incident. The similarity/confusion in the products is not to be judged by the claim of the parties but rather by what the products are saying and representing about themselves.
• The single judge erred in concluding that original works such ‘product drawings’ intended for manufacture would not qualify as ‘artistic work’ under Section 2)(c)(i) of the Copyright Act 1957 if they were used to manufacture the designed article.

Contentions of the Defendants

• The 13 designs asserted by the plaintiff relate to articles such as bowls, casseroles and lunchboxes etc. which are commonplace and lack novelty and originality. These designs were “pre-published” in nature and in public domain.
• No copyright can subsist in any registered design. It cannot be asserted that copyright can subsist in drawings of purely functional day to day articles, unless they have inherent creativity. Drawings of glasses, bowls etc. per se are incapable of copyright protection as they are not artistic works.

Judgement of the Division Bench

Firstly, the court agreed with the analysis of the single judge that the designs were prima facie in public domain and lacked novelty and hence, could not be protected by the Designs Act despite registration.

Secondly, the court held that the question of asserting a copyright infringement claim independently cannot arise at all when the design protection subsists, but infringement has not been prima facie established. However, the court went on to discuss the issue as an arguendo. It observed that the language of Section 15 of the Copyright Act makes it clear that copyright does not subsist in a registered design as this design acquires a commercial element on mass reproduction which is not the case with an artistic work. The court noted that this is a complex issue, as works of art which have been registered as designs lose even copyright protection, thus undermining the efficacy of copyright itself. The English case of Elzie Chrisler Segar (Deceased) v O & M Kleeman Ltd. was discussed which pertained to the character, “Popeye the Sailor” used in comics and later reproduced in merchandize. In this case, the House of Lords distinguished between copyright and design copyright and held that design rights in this character did not result in the extinction of copyright. Considering this case, the court finally concluded that copyright would subsist even after design registration in an original work of art such as a painting. The court finally concurred with the single judge that the drawings of commonplace household items do not satisfy the standards of minimum creativity and cannot be legitimately monopolized.

Thirdly, the court held that action for passing off is a common law right, independent of the Designs Act. However, for a passing off action, it must be proved that the general public associates the shape, trade dress etc. with the plaintiff alone which was neither pleaded nor established. Holding that there was no infirmity with the conclusions of the single judge, the court dismissed the appeal.

Analysis

According to Section 15(1) of the Copyright Act, copyright protection shall not subsist in a registered design. According to Section 15(2), this protection shall also cease in any design, which is capable of being registered, as soon as any product to which the design is applied has been reproduced more than 50 times by an industrial process.  This leads to a bizarre conundrum. In case a design has not been registered, but has been industrially reproduced over 50 times, it loses both copyright and design protection. Read Prof. Basheer’s book chapter on Overlapping IP Rights here.

In the Microfibres Inc. v Girdhar case (to which Dart Industries and Technoplast were also parties), the Delhi High Court attempted to harmonize this conundrum. It considered Section 15 of the Copyright Act, and held that while design protection of 15 years shall be granted to the products themselves, the drawings of the products shall be protected by copyright, irrespective of the intention of the artist to commercially manufacture the product which was drawn. The court further held as to Section 2(c) of the Copyright Act, “This definition has a very wide connotation as it is not circumscribed by any limitation of the work possessing any artistic quality. Even an abstract work, such as a few lines or curves arbitrarily drawn would qualify as an artistic work.” Therefore, unless a work of art is capable of design protection and has been registered as a design, or should have been registered as a design, the copyright in the underlying artistic work subsists independently of design rights. This means that the artist can restrict a 3D reproduction of his drawing even after the expiry of the term of design protection, which leads to a redundancy of the Designs Act itself.

The present judgement has, to some extent, clarified the position of this subsistence of copyright, but several issues still remain.

Firstly, it states that while there is a possibility of copyright in the drawings surviving design registration, such protection shall only be granted when the drawing itself involves originality and creativity; and not when the drawings are of everyday objects. While this judgement establishes a certain threshold of creativity and originality for the copyright to outlive the design protection, the holding of the court is largely based on the fact that the drawings were of “functional day to day articles” such as bowls and containers.

Secondly, distinguishing the drawing from the manufactured article is in itself a problematic distinction. What will happen in cases where the drawings and the products manufactured cannot be separated, as in the case of textiles, fashion and other lifestyle related products, which rely almost solely on their designs to sell? The difference between the 2D drawing and the 3D product become blurred in such cases. Read Aparajita’s post on fashion, copyright and design here.

Image from here.