Protection of Jewellery: A Combination of Trademark, Design and Copyright Law? – Part I

The issue of IP protection of jewellery has hardly been discussed or adjudicated upon in India. Generally, it is understood that the sketch of the jewellery design can be protected as artistic work under copyright law, while the actual appearance of the jewellery, such as the configuration, pattern can be protected under design law. But, it’s more complicated than that. There are many questions without clear answers, such as, whether jewellery is protectable under copyright or design law in India, and whether the conversion of original drawings into three-dimensional form, would be termed an ‘adaptation’ or ‘reproduction’. In Part I, I have analysed relevant case laws in an attempt to answer the above issues. Part II will be coming soon, in which I will look into the question of protection of traditional jewellery designs and also explore the possibility of protection of jewellery as ‘shape marks’. These posts will analyse relevant jurisprudence for understanding the applicable IP framework for jewellery protection in India.

Copyright v. Design Protection

In order to understand the relationship between copyright and design law, it is first necessary to differentiate between ‘design’ and ‘artistic work’. Section 2(c) of the Copyright Act, 1957 defines ‘artistic work’ as including, amongst other things, a drawing and any work of artistic craftmanship. Section 2(d) of the Designs Act, 2000 defines ‘design’ as ‘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’ and excludes ‘any mode or principle of construction or anything which is in substance a mere mechanical device’. Most importantly, ‘design’ also excludes any artistic work as defined in section 2(c) of the Copyright Act, 2000.

The difference between two can be better understood by referring to Bombay High Court’s decision in Pranda Jewelery v. Aarya 24K. This case dealt with the issue of copyright infringement in case of gold sheet articles of deities and religious symbols. Here, the court gave the example of copying of a painting onto a canvas or paper and explained that when it is copied, the features of shape, configuration are not applied, but the very painting is reproduced. However, when features of shape, configuration are applied to articles such as a refrigerator or a mixer, the court opined that the ‘features or patterns though they are contained in drawings, diagrams or plans and though they may have artistic quality, are ‘designs’.’

Section 15 of the Copyright Act, 1957 provides that copyright will not subsist, in respect of any design registered under the Design Act, 2000. It further states that if a design can be registered under the Designs Act, 2000, but has not, then the design is protected to the extent of fifty applications. This means that when designs are registered under the Designs Act, 2000, they can be protected for fifteen years, otherwise for not more than fifty applications. (Earlier posts on design v. copyright debate can be found here.)

In Pranda Jewelery, the court held that the drawings, as well as, the reproduction of it in gold plate in three dimensional form constituted artistic work. The reasoning behind this was that ‘what is produced is the artistic work itself.’ It was clearly stated that the plaintiffs have a copyright in the reproduction of the drawings in the form of gold plates. This copyright was held to be distinct from the copyright in the underlying drawings. The court also added that even in the case that they are designs, and not artistic works, it has not been shown that there have been more than fifty applications. The court does not appear to be entirely sure of its decision, as it has considered the possibility of the three dimensional gold plate constituting a design.

The situation would be quite different if the jewellery itself is considered to be a design, distinct from the copyright in the drawings of the design. If the drawing is considered to be protected under copyright law and the jewellery is protected under design law, i.e., simultaneous protection under design and copyright law, wouldn’t that essentially mean that the design is being protected for way longer than fifteen years?

A fashion clothing case might better help us to understand the position with regard to jewellery in case it is manufactured more than fifty times. In Ritika Private Limited v. Biba Apparels, a single bench of the Delhi High Court held that as Ritu Kumar had reproduced a specific design on clothing more than fifty times, the design was neither entitled to design protection, nor entitled to copyright in the original drawing. The court stated that if the prints were created from copyrighted works and then printed on dresses, ‘may be in such a case without saying so finally on this aspect’, a copyright infringement suit might have arisen. But since, the dresses were being created by industrial process and not by exact affixation of the print taken from the copyrighted work on the dress, the court stated that copyright has not been violated. In essence, the court held that there is no IP protection available to a certain design that has been reproduced on clothing more than fifty times. (discussed in detail here) In case of jewellery, the court would probably take the same stand if someone decides to produce more than fifty copies of another’s designs through industrial process.

That brings us to another question, what about protection of bespoke designs that have been handcrafted, couldn’t they be protected as works of ‘artistic craftsmanship’? On 9 February, in the case of A. Sirkar v. B. Sirkar Jahuree Pvt. Ltd., the commercial court at Alipore allowed a temporary injunction application for copyright infringement and passing off of jewellery. In this case, both the parties were jewellers and the plaintiff had claimed its jewellery to be the result of ‘artistic craftsmanship’, but the court did not question, discuss or decide upon this aspect. In Pranda Jewelery, the court held gold sheet jewellery to be artistic work itself, i.e., it was protected under the same category as a drawing, and did not discuss anything regarding artistic craftsmanship.

In Microfibers Inc. v. Girdhar and Co., a division bench of the Delhi High Court observed that the legislative intention behind the Copyright Act, 1957 and Designs Act, 2000 appears to be granting higher protection to ‘pure original artistic works’ and ‘lesser period of protection to design activity commercial in nature’. The term of protection granted by the legislature for copyright is life plus 60 years, while for a design it is 15 years and thus, the court reflected that the legislature intended to treat commerce and art differently.

After examining the above cases, the answer for IP protection of jewellery does not seem straightforward. It’s difficult to predict what decision a court would give regarding a particular piece of jewellery, whether it would consider the piece to be an artistic work or a design. It cannot be surely determined where design rights begin and copyright protection ceases. The only thing that is clear is that copyright in the original drawing continues to exist, while it ceases to exist for a design under Section 15 of the Copyright Act, 1957, if more than fifty applications are done. If a design has been applied more than fifty times without registration and the court decides to follow the judgement in Biba Apparels, then protection to the original drawing may also not be given. This might leave the jeweller in a position where they can’t prevent others from duplicating their designs.

Thus, if a jeweller plans on making more than fifty applications of a certain jewellery design, then the safe way to go would be registration of jewellery designs under Designs Act, 2000 and if the plan is to make less than 50 copies, then based on the law non-registration does not appear to be a problem. If the decision regarding the number of copies has not been made before hand, then the designs should be filed for registration prior to marketing and sale, as Section 4 of the Designs Act, 2000 prohibits the registration of a design that ‘has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration’. Another consideration is whether the jewellery would fall under the category of artistic craftsmanship, because if it does then design protection is out of question.

Adaptation or Reproduction Right

When original drawing of a jewellery design is brought to life, i.e., converted from paper to their three dimensional form, should this conversion to be called an ‘adaptation’, or ‘reproduction’, In A. Sirkar, the court called it the former, while in Pranda Jewelery, the conversion of sketches into gold articles was referred to as ‘reproduction’. The legal implications of using both these terms needs to be understood better, in order to see which may be a more appropriate term for describing the creation of jewellery from a drawing.

Section 2(a) of the Copyright Act, 1957 defines adaptation in relation to an artistic work as ‘any use of such work involving its rearrangement or alteration’ (emphasis supplied) and also as ‘the conversion of the work into a dramatic work by way of performance in public or otherwise’. Section 14(c)(i) grants the copyright holder the exclusive right of reproduction in case of artistic works, in ‘any material form including – …(C) depiction in two-dimensions of a three-dimensional work’. Since jewellery is generally created in the exact manner as it has been initially drawn on paper, reproduction seems to be the suitable term in this context. The right to adaptation would be applicable, if the three-dimensional outcome is slightly different than the two-dimensional drawing, or if a drawing for jewellery has been inspired from an earlier work, or if the jewellery has been altered at any point. Reproduction or adaptation, whichever the appropriate term depending on the particular piece of jewellery, it would be applicable irrespective of whether the jewellery would be protected under design or copyright law, as the underlying work would be protected under copyright law.

(H/t to A. Banerjee for drawing our attention to A. Sirkar v. B. Sirkar case).