[This post is authored by SpicyIP intern Surabhi Katare. Surabhi is a recent graduate from Hidayatullah National Law University, Raipur. She is interested in IPR, media, and tech laws and wants to pursue a career in IP and allied areas. Her previous posts can be found here.]
The fashion industry will never go out of business! In 2022, the size of the domestic textile and apparel industry was estimated at a whooping $125 billion. Players in the fashion industry benefit largely from IP rights over their trade names through trademarks, drawings through copyrights and garments through design rights and copyrights.
This can be seen from the interest of Indian Fashion designers in protecting their works under relevant IPRs. For instance in 2017, Rohit Bal became the first designer to get a copyright over his entire collection. Following suit, on April 3 we saw the Delhi High Court grant an ex parte ad interim injunction to fashion designer Gaurav Gupta in an IP dispute. Gaurav Gupta (plaintiff), a designer who has worked with international celebrities like Beyonce, Cardi B, Aishwarya Rai Bachchan to name a few alleged that the defendant (Abdus Salman Khan) had infringed copyright of the plaintiff by copying ‘sculpted boning’ technique, which makes his garments unique. The plaintiff explained that the technique gives his garments a molded and structured 3-dimesional look. The plaintiff alleged that the defendant has not only engaged in the business of creating, advertising and selling counterfeited goods but has also uploaded multiple videos on YouTube claiming to teach how to make the plaintiff’s garments. In the YouTube videos, the defendant is seen using the plaintiff’s trademark and making copies of the plaintiff’s garments with only slight tweaks in colors. Thus, in the suit, Gaurav Gupta alleged copyright, trademark, and design infringement. In the following discussion, the author has analyzed the recent ex-parte ad interim injunction granted by the Court and highlighted a few legal points of interest.
In the ex-parte ad interim injunction order, , the Delhi High Court held that the defendant has infringed upon the rights of the plaintiff in copyrights and designs by blatantly copying the latter’s garments. The defendant was also held liable for copying 2-D drawings and transforming them into 3-D form under Section 14(c) and Section 51 of Copyrights Act, 1957. The defendant was also held liable for infringing plaintiff’s trademark ‘Gaurav Gupta’. Accordingly, the Court, based on the prima facie case of the plaintiff, passed an ex parte ad interim injunction restricting the defendants from creating, advertising and selling counterfeit goods.
An interesting direction in the order is that the defendant shall take down all videos that use the plaintiff’s copyrighted material and trademark ‘Gaurav Gupta’ from all social media handles like YouTube, Instagram and Facebook. The Court held that the use of plaintiff’s registered trademark by the defendant on YouTube channel is an attempt to take unfair advantage of the goodwill and reputation of the plaintiff. The author believes that via YouTube videos, the defendant only strives to transfer the know-how of ‘sculpted boning’ technique. The defendant was not selling any garments on its YouTube channel, unlike Instagram and Facebook pages. The author argues that while the use of plaintiff’s mark on Instagram and Facebook may amount to infringement, the use of plaintiff’s mark on YouTube may not necessarily amount to infringement. The present situation warrants Court’s special attention to the fact that the use of the mark was not for any commercial activity or to hop on to the goodwill or reputation of the plaintiff. The defendant has used the mark only to describe the goods which were the subject matter of the video, an act permissible under Section 30(2)(a) of the Trade Marks Act, 1999. The section enunciates the doctrine of descriptive fair use and reads that a mark used only to identify the goods/ services in discussion does not amount to trademark infringement. Here the mark ‘Gaurav Gupta’ is only used to describe the goods in his videos , much like how food critics use the name of a restaurant to indicate what restaurant the review is about. Thus, the Court should have adopted a broader outlook to the present facts.
Though copyright infringement was not argued in context of the defendant’s Youtube videos, in arguendo, if the issue would have arisen, the same would have fallen flat under the fair dealing provision. Inthe US, section 107 of the copyright law allows unauthorized use of copyrighted work for purposes of teaching. In India however, Section 52 of the Copyrights Act, 1957 does not explicitly provide for exemption in cases of teaching outside classrooms. Courts however, refer to the decision in Hubbard v. Vosper to hold that it is difficult to define fair dealing and that the court of facts must decide it. An extension of the proposition would suggest that the Courts are at liberty to interpret the provisions to protect knowledge-transfer outside classrooms as well.
The author argues that the use of the plaintiff’s trademark, selling counterfeit goods and copying the plaintiff’s designs are all punishable under IP laws. Thus, the author concurs with the Court’s decision on these aspects. However, the author argues that designer clothes are generally hand-made and expensive and require a great deal of maintenance. If the designers do not disclose the techniques used by them to manufacture the garments, the consumers cannot possibly maintain them the best. This makes the present decision a good starting point to the discussion of how IP rights holders prevent knowledge transfer by preventing others from using their protected material. The author ponders if the direction to take down the said videos affects transfer of knowledge of craftsmanship which is argued to be an important facet of right to repair.
