Analysis of Overlap Between Copyright and Design Law

Under the Indian IP system, a clear distinction has been made between rights available under the Design Act, 2000 and the Copyright Act, 1957. To avoid overlap in protection under the two Acts, creators and manufacturers often face a fundamental question about the type of protection they should seek when an artistic work is produced.

Examination of the Intersection Between Copyright and Design Law

As per Section 2(d) of the Design Act, a design is defined to include only the shape, configuration, pattern, ornament, or composition of lines or colors applied to any article, whether two-dimensional, three-dimensional, or both, by any industrial process or means. This includes manual, mechanical, or chemical processes, either separated or combined, and the finished article is judged solely by the eye. However, it does not include any model, principle, construction, mere mechanical device, trademark as defined in clause (v) of subsection of Section 2 of the Trademark and Merchandise Marks Act, 1958, property marks, or artistic works as defined under Section 2(c) of the Copyright Act, 1957.

According to Section 15(1) of the Copyright Act, copyright shall not subsist in a design protected under the Design Act. Once a design is registered, the proprietor forfeits protection under the Copyright Act. Furthermore, under Section 15(2) of the Act, if a design that can be registered under the Design Act is not registered, the copyright on such a design ceases once the design is reproduced more than 50 times by an industrial process by the owner or any other person with the license of the owner. In this scenario, if the petitioner does not register the design and manufactures more than 50 copies of the article with that design, the proprietor ends up forfeiting copyright protection as well.

Complexities in Intellectual Property Laws

Intellectual property laws provide protection for some works under both copyright and design law. On the surface, the law appears clear. However, Section 15 of the Copyright Act, in conjunction with the definition of "Design" under the Design Act, complicates the matter. A recent case decided by the Delhi High Court attempted to differentiate between a copyright and a design based on the nature of the work and its industrial application. The judge explained the basic concepts in detail, offering a deeper insight into the complexities of the law (Delhi High Court, 2021).

The Law Explained

An artistic work includes a painting, sculpture, drawing (including diagrams, maps, charts, or plans), engraving, or photograph, regardless of artistic quality. The author has the right to reproduce the work in any material form, including depiction in 2D or 3D. The definition of a design includes only the features of shape, configuration, pattern, ornament, or composition of lines or colors applied to any article in 2D or 3D by any industrial process, specifically excluding artistic work as defined by the Copyright Act. Section 15 of the Copyright Act states that if a copyright capable of being registered as a design is not registered, it ceases after more than 50 products are made by an industrial process (Copyright Act, 1957).

Case Studies

The Double Bench of the Delhi High Court clubbed appeals from two other cases with the same issue—Mattel v. Jayant Aggarwalla and Dart Industries v. Technoplast. Though a final decision is yet to be delivered, the judgment is interesting and complex, making it difficult for litigants to understand. It demonstrated how provisions could be subject to varying interpretations and raised several critical questions, such as the fundamental differences between the objectives sought by the Designs Act and the Copyright Act (Mattel v. Jayant Aggarwalla, 2021; Dart Industries v. Technoplast, 2021).

In the Microfibres case, it was undisputed that if the impugned work was capable of design registration, the appropriate act was the Designs Act of 1911. The definition of design under the 1911 Act did not exclude artistic works, so Section 15 of the Copyright Act, directed towards the 1911 Act, applied to the plaintiff's work. Since the work had been industrially applied at least 50 times by the plaintiff, the copyright in the artistic work ceased to exist. Combined with the fact that non-registration under the Designs Act, 1911 deprived it of a right to claim infringement against the defendant (Microfibres Inc. v. Girdhar & Co., 2006).

Important Inferences and Questions

Following are important inferences from the judgment of the Single Judge and questions that one would expect the Double Bench to answer:

1. What is the position of the law of designs, as it stands today, on the industrial application of a work to an article, when the status of the work as an artistic work under the Copyright Act, 1957 is not in doubt?
2. Does the Designs Act, 2000, by its existence, limit the right and term of a copyright owner of an artistic work only in terms of the application of the work as a design by an industrial process? In other words, regarding an artistic work, is the effect of the Designs Act, 2000 limited to governing the application of the work to an article without affecting the underlying copyright in the work?

If yes, this would mean that the Designs Act, 2000 was intended to carve out an area from conventional copyright law to administer the industrial application of any work, be it an artistic work under the Copyright Act or a design under the Designs Act, 2000, leaving untouched the rest of the bundle of rights guaranteed to the owner of an artistic work under the Copyright Act, 1957. Again, is there a statutory basis to arrive at this conclusion?

Submissions and Discussions

I shall now discuss the submissions of some of the parties to seek answers to these questions. Microfibres (shortened as MF) began by questioning the rationale underlying the distinction between designs and artistic works. It contended that even if the distinction was justified, the opinion of the single judge that its work lacked independent identity was without sufficient explanation. Further, according to MF, since the Copyright Act did not require a subjective assessment of the artistic quality of the work, the Single Judge’s distinction was artificial. MF also rightly pointed out that the presence of textile fabric in the classification did not automatically bring the work within the ambit of the Designs Act, as it is the nature of the work that determines its status (Microfibres Inc. v. Girdhar & Co., 2006).