Copyright Designs Overlaps in IP

The Delhi High Court Misses Another Opportunity to Rule on the New Section 52(1)(w) in Context of Engineering Drawings


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In a recently delivered judgment, the Delhi High Court was once again faced with a plaintiff seeking an interim injunction restraining a defendant from manufacturing a product on the grounds that it was infringing the plaintiff’s copyright in its engineering drawings. The plaintiff Holland L.P. and its Indian partner, claimed to have invented “automatic twist locks” (ATL), to help secure containers on railcars. The system is used by the Indian Railways which put out a tender for procurement of the ATL systems. The defendants won a part of the bid. The plaintiff claimed that it had proprietary rights over the technology but since the plaintiff’s patent application for the technology in India was pending before the Patent Office for some time, it chose to sue the defendant for infringing the copyright in its engineering drawings. Although it sounds strange to protect inventions under copyright law rather than patent law, such lawsuits are quite regular in India, partly because many foreign plaintiffs do not have patents for their inventions. In most cases judges and litigants get confused over the issue of copyright and design overlap when the more relevant issue is the protecting of functionality under copyright law.

Let me start from the basics.

Section 14 of the Copyright Act vests in the owner of a copyright any artistic work, the right to create a three dimensional work based on the artistic work. Since engineering drawings qualify as artistic works under the Copyright Act, the plaintiff theoretically has the right to prevent any other person from preparing a three dimensional product based on the drawings. This has been a popular route of litigation for plaintiffs who do not have patents for their products in India. In most cases, defendants raise Section 15(2) of the Copyright Act as a defense to the allegation of infringement. This provision exhausts the copyright in any work which is capable of being protected under the Designs Act, 2000 if the said work has been produced more than 50 times. The defendants in this case also raised the Section 15(2) argument and the judge accepted the argument as one of the grounds to deny the plaintiff an interim injunction. This interpretation of Section 15(2) is incorrect.

Most judges miss the fact that the definition of “designs” under Section 2(d) of the Designs Act, 2000 specifically excludes from the definition of “designs” both “mere mechanical devices” and “artistic works”. The engineering drawings themselves cannot be registered as designs because they qualify as “artistic works”. The other question now is can the three dimensional reproduction of the engineering drawings qualify for protection as a “design” under the Designs Act, 2000? I would answer that question in the negative because a three dimensional reproduction of the engineering drawings results in a “mechanical device” which can also not be registered under the Designs Act because of the prohibition contained under Section 2(d). The logical corollary of not being able to secure registration under the Designs Act, is that the three dimensional reproduction of the engineering drawings will then continue to be protected under copyright law because three dimensional reproductions of an artistic work can be protected under Section 14. This would lead to a rather absurd outcome where a tractor could be protected under the Copyright Act by virtue of the plaintiff owning a copyright in the engineering drawings. This is where Section 52(1)(w) of the Copyright Act makes an impact. This provision reads as follows:

Section 52(1): The following acts shall not constitute an infringement of copyright, namely:-

“(w) the making of a three-dimensional object from a two-dimensional artistic work, such as a technical drawing, for the purposes of industrial application of any purely functional part of a useful device”.

A similar provision existed in the law until it was mysteriously deleted in 1994. The first such case on this issue – John Richard Brady v. Chemical Process Equipment Pvt. Ltd. touched on the provision but did not interpret it in detail. I reproduce the old Section 52(1)(w) below:

“(w) the making of an object of any description in three dimensions of an artistic work in two dimensons, if the object would, not appear, to persons who are not experts in relation to objects of that description, to be a reproduction of the artistic work.”

I don’t know why this provision was deleted but it was reintroduced in the year 2012 in a slightly modified version. Like many people, I completely missed this provision until one of our readers pointed us to the provision in an earlier post.

This provision in its new form makes it very clear that it shall not be copyright infringement to make a three dimensional reproduction of technical drawings, if the three dimensional reproduction results in a purely functional part of a useful device. This provision would have applied squarely in the facts of this case since the claimed “automatic twist locks” appears to serve as the functional part of a useful device.

Surprisingly Section 52(1)(w) has not been interpreted by any Indian court, prior to 1994 or post 2012, despite there being several opportunities for High Courts around the country to examine this provision despite the lawyers for the defendants invoking the provision. Even the Competition Commission of India (CCI) appears to have missed out on this very relevant provision in the famous ‘spare parts’ decision where car manufacturers claimed that the spare parts were protected by virtue of the copyright in their engineering drawings for such drawings.

Hopefully someday some lawyer out there will make this argument more forcefully and we will get a well-reasoned order from one of the judge. As the saying goes “umeed par duniya kayam hai”.

Prashant Reddy

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India’s Intellectual Property Dilemmas (OUP). He has recently been appointed as an Assistant Professor at NALSAR, Hyderabad, starting September 1, 2017.

19 comments.

  1. Mohit Goel

    Dear Prashant

    With respect, your analysis on the application of Section 52 (1) (w) and its interpretation are both entirely incorrect.

    First and foremost, I want to correct a factual misstatement in your post, i.e., the automatic twist lock is not a “part” but a “device” in itself. Perhaps this factual observation was made by you in haste.

    On the face of it, as you have also concluded, it is easy to succumb to the conclusion that Section 52(1)(w) would thwart any attempt of an innovator to enforce copyright in engineering/technical drawings. Given that utility, functionality and industrial applicability of any inventive device would be the pillars of claiming patent protection in any pending patent application, it would be rather ironical for an innovator to argue that its engineering drawings do not reveal “functional parts” of a “useful device” that are incapable of industrial application. However, this notion of Section 52(1)(w) is a bubble waiting to be burst.

    To understand Section 52(1)(w) in its true import, one needs to break this provision down. Section 52(1)(w) refers to three aspects, namely (i) an object, (ii) a purely functional part, and (iii) a useful device. Literally, Section 52(1)(w) merely states that to make a purely functional part of a useful device industrially applicable/function, one can create another object for this purpose. In other words, a third party can create another object to be fitted to, or attached with, a purely functional part of a useful device so as to make such purely functional part of a useful device industrially applicable without attracting the vice of infringement.

    Illustratively, Section 52(1)(w) would permit a third party from creating a new charger/power bank (object) for charging the battery (purely functional part) of a phone (useful device). Section 52(1)(w), however, does not permit a third party from creating the useful device itself or the purely functional part itself. Such reproduction of the ‘useful device’ or ‘purely functional part’ would not be saved by Section 52(1)(w). The above interpretation of Section 52(1)(w) is not a result of supplying a casus omissus to Section 52(1)(w) or of rendering any words of Section 52(1)(w) meaningless, but is based on a bare literal reading of Section 52(1)(w).

    The reasoning discussed above gains support from the insertion of Section 14(c)(1)(B) in the Copyright Act by the same Amendment Act, which also introduced Section 52(1)(w) in the Copyright Act. It defies logic for the Legislature to give the copyright owner the right to convert a 2-D artistic work into a 3-D product by an Amendment Act, and to take the same right away by the same Amendment Act!

    I have co-authored an article which was published a couple of months back on this issue.

    In fact, we were prepared to address arguments on Section 52 (1) (w), but unfortunately, since the Defendant had not taken this as a defence, the Hon’ble Court did not want to venture into this issue at the interim stage. For completeness, an issue has now been framed in this Suit on the applicability of Section 52 (1) (w).

    Hopefully some day some lawyer out there will make the argument stated above (it may even be in this case), and we will get a well reasoned order from one of the Hon’ble Judges. As you say, “Umeed par HI duniya kayam hai”. 🙂

    Reply
    1. Prashant ReddyPrashant Reddy Post author

      Dear Mohit,

      Given that you were representing the plaintiffs in this case, I would be surprised if you agreed with anything written in my post. But thank you for taking out the time to comment on the post.

      Moving on to the merits of both your points:

      1. On your second point, regarding the amendment to Section 14(C)(1)(B) being negated by my interpretation of Section 52(1)(w) of the Copyright Act, you are incorrect. Section 52(1)(w) applies to “technical drawings” – not all artistic works will qualify as technical drawings. An artistic drawing of a sculpture will not be a technical drawing and hence the owner of the artistic drawing has the sole right to create an 3D reproduction because of Section 14(C)(1)(B). So my interpretation does not negate Section 14(C)(1)(B).

      2. Now coming to your main argument – the problem with your “literal interpretation” is that you fail to account for the most important word in Section 52(1)(w) i.e. “technical drawings”. Going by your interpretation you seem to have made the mistake of equating Section 51(1)(w) to the “spare parts” exception in British and European case law. That would be a mistake. Going by your interpretation it would be okay to protect an entire technical device (derived from a technical drawing) but it would be unacceptable to protect just a part of the device under copyright act. The correct test in my opinion is to check whether the drawings in question are “technical” as understood in common parlance, followed by an interpretation of whether the 3D reproduction of those drawings would lead to a device with any functional part – at this stage if the conclusion is that there is any functional part then the copyright in those parts will cease to exist completely. In your analysis, you omit the issue of “technical drawings”. The main target of the Indian provision is to ensure that functionality is not protected under copyright law.

      Regards,
      Prashant

      Reply
      1. Mohit Goel

        It would be quite shallow to conclude that since I am representing the Plaintiff, I would not be open minded about a discussion on a statutory provision on a public forum. In any case, given that this was not even a issue considered by the Court it is not as if I am attempting to challenge the decision on this forum. My intention would be to always give an informed, balanced and a researched view.

        I have certainly not ignored the words “technical drawing”. Infact my opinion is premised on it. You have probably not understood my opinion in its true sense. It would be sufficient for me to reiterate that the technical drawing/artistic work referred to in Section 52 (1) (w) is of the “object”, and not of the functional part or of the useful device. You are certainly misreading the provision in my respectful opinion. In any case, there could many views on this provision, and mine and yours are only two of them.

        Reply
        1. Prashant ReddyPrashant Reddy Post author

          How is my comment shallow? As a plaintiff’s counsel I expect you to disagree with my interpretation because any other interpretation could be used against you in the course of the proceedings. Any other approach would be unprofessional.

          Regarding the technical drawings, I noticed you are using the phrase interchangeably with artistic work – if we can agree on a definition of technical drawings I am sure the rest of the issues will become clearer. But like you say, there can be different views on the subject.

          Reply
  2. Mohit Goel

    On the same reasoning, Section 52 (1) (w) will not permit an infringer from producing even a part of a device, given that such part is not “the object” contemplated by Section 52 (1) (w). Moreover, it would be worth going through judgements of the English courts which have in detail dealt with the “Spare Parts Defence” (as is known there). There is an implied exclusive right of the copyright owner to the exclusion of the world to supply its proprietary spare parts, which are in themselves novel, unique and “inextricably linked” to the whole product.

    Reply
  3. Badrinath Srinivasan

    Mohit,
    Would be great if you could provide references to your article.

    Prashant,
    Do you mean to say that unless the subject of the technical drawing is patented, there is no proper protection to the author of the technical drawing if another person makes a 3D representation of her drawing?

    Reply
  4. Jagdish Sagar

    Prashant, I would be interested to have your response to this: suppose I own copyright in two –dimensional engineering drawings and manufacture functional three-dimensional parts from them. Somebody (an employee or whoever) reproduces my drawings (in two dimensions), infringing my copyright in them, and then uses them to manufacture functional three dimensional parts like mine. He would still have infringed my copyright in my two dimensional drawings.
    Again, suppose that without seeing my two-dimensional drawings he reproduces them by re-engineering back from a three-dimensional sample of my product, and then uses them to produce copies of my three-dimensional product. Would he not still be indirectly infringing copyright in my two-dimensional drawings? (I don’t know if the ratio of the House of Lords decision in the Leyland Bus case would hold in India until applied by a court of record, being a common-law decision; but that was a decision de hors copyright hence I am not concerned with it here.)
    I can imagine no other case where the exemption in Section 52(1)(w) would make any difference: it would not apply where such use of the two-dimensional work was licensed, nor where the two-dimensional work was in the public domain.
    It is surely contrary to public policy for the legislature to legitimise the secondary use of an infringing work.

    Reply
    1. Prashant ReddyPrashant Reddy Post author

      Hi Mr. Sagar,

      I think we should view the issue through the lens of remedies. Let’s presume an employer sues the employee for copyright infringement, he can get an injunction against the employee from holding a copy of the drawings and perhaps damages for that one copy (which I presume would be insignificant). But he can’t get an injunction (or damages) against the employee creating a three dimensional reproduction of the drawing from his memory or if he has made such a three dimensional reproduction from the drawings, he can’t be restrained from using such a machine because of Section 52(1)(w). Thus in practical terms, the employee will likely be able to continue using the three dimensional machine since no court can restrain him from doing so.

      Regarding your last line, I think it will be difficult to argue that the legislature is acting against public policy – the legislature gets to decide public policy.

      Regards,
      Prashant

      Reply
  5. Jagdish Sagar

    Thanks for responding, Prashant.

    I meant public policy as a principle applied by the Courts: there is such a thing; though a bit amorphous, and it ought surely to cover the case I discussed (see below). It remains my opinion that it would be contrary to public policy, in this sense, to legitimise the secondary use, profitably, of an infringing copy of a copyrighted work. I agree with you that that is exactly what the statute does, though unlike me you feel that’s a good thing.

    The case I discussed is certainly not one where the person concerned commits the two-dimensional drawing to memory (no easy feat!) and then makes a complex three-dimensional part from it. I think such a defence would normally, assuming a reasonably complex three-dimensional part, be ruled out as far-fetched on balance of probability. On the other hand if it were a very simple part which could believably be made from memory of a two-dimensional drawing, the two-dimensional drawing itself might by hit by the merger doctrine.

    (With a bit of research (when I have the time) I might come back with further arguments , which I have broadly in mind, as to why Section 52(1)(w) should be struck down. But that would be another contentious guest blog.)

    Reply
    1. Prashant ReddyPrashant Reddy Post author

      Mr. Sagar, please do send us a guest post if you have the time.

      I think there are some practical issues involved here – for instance, a defendant can just retain multiple copies of the engineering drawings and it would practically be difficult for the plaintiff to track down each copy. It also becomes an issue of timing because if a machine has already been made from the 2D drawings – the court cannot restrain the continued use of the machine – at the most it can order the defendant to hand back the drawings.

      On public policy – yes, courts can deploy the argument at times but not in a manner that completely eviscerates the legislative mandate.

      Regards,
      Prashant

      Reply
      1. Jagdish Sagar

        Many copyright works exist in multiple copies; in some cases, like a book (BTW I’ve ordered yours and await it impatiently) it makes no difference. In this case, finding a machine that infringed copyright (if it did) shouldn’t be more difficult than finding one that infringed a patent; anyway, we’re on rights, not enforcement.
        Coming to your second point, the fact that the Court cannot stay the manufacture of a machine made from infringing drawings is precisely what bothers me.
        BTW I meant read down or strike down, not “eviscerate” which is not a legal term that I understand.

        Reply
  6. Badrinath Srinivasan

    It is possible that protecting engg drawings from being represented 3dimensionally by another could be a policy issue. Would such protection be only for those products which meet the patentability criteria?

    Reply
    1. Prashant ReddyPrashant Reddy Post author

      Hi Badrinath,

      In that case what would be the point of S. 52(1)(w) – the provision cannot be rendered otiose right?

      On the second point – I don’t think patentability is an issue here. The aim is to exclude functionality from copyright protection. Whether that functionality can be protected under the Patents Act is a completely different question.

      Regards,
      Prashant

      Reply
  7. Jagdish Sagar

    May I expand on Prashant’s answer, in case it’s helpful; or for the benefit of being corrected if it isn’t.
    (1)The exceptions in Section 52 apply only to works that are otherwise protected by copyright and to acts that would otherwise infringe copyright.
    (2)To be copyright-protected, a drawing need not involve any inventive step, nor need it be novel or non-obvious. It need only be original in the copyright sense: i.e. created by its author and not itself a copy of someone else’s work. Nor should it be in the public domain.
    (3) Subject to correction, I should think copyright and patent also move in different spheres because it is a product or process that is patentable, not per se the drawings used to express the product or process. In copyright it is the other way round. Thus Section 52(1)(w) does not create any IP right in the functional part of a useful device. it only creates an exception to a particular form of reproduction of copyrighted drawings that would otherwise infringe copyright.

    Reply

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