Analysis of Overlap Between Copyright and Design Law

Under the Indian IP system, a clear distinction has been made between rights available under Design Act, 2000 and the copyright Act, 1957. To avoid overlap in protection under the two Acts, however, owing to similarity in the work protectable under these laws, creators and manufacturer have many times been left to answer a very basic question regarding the type of protection which they should avail when an artistic work is produced.

As per section 2(d) of the design Act a design has been defined to mean only the shape, configuration, pattern or ornament or composition of lines or color thereof applied to any article whether two dimensional or three dimensional or both forms, by any industrial process or means, whether manual or mechanical or chemical separated or combined, which in the finished article appeal to and are judged solely by the eye, but doesn’t include any model or principle or construction or anything which is in substance a mere mechanical device, and doesn’t include a 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 copyright Act, 1957.

As per sec 15(1) of copyright Act, copyright under the copyright

Act shall not subsist in a design protected under the design Act. Once a design is registered, the proprietor foregoes the protection under the copyright act. Further, under section 15(2) of the Act, if any design can be registered under the Design Act is not so registered then the copyright under the copyright Act on such design shall cease as soon as any article to which the design has been reproduced more than 50 times by an industrial process by the owner of the design or by any other person with the license of the owner. In this case, if the petitioner doesn’t get the design registered and manufactures more than 50 copies of the article with that design, the proprietor then ends up foregoing the copyright protection under the Act as well.

Intellectual property laws provide protection for some works under both copyright and design law. On face, the law on this point seems rather clear. However, Section 15 of the Copyright Act in affiliation with the definition of “Design” under the Design Act makes it slightly tricky. A recent case decided by the Delhi High Court has tried to differentiate between a copyright and a design on the basis of the nature of the work and its industrial application. The Judge has explained the basic concepts in detail.

The law

An artistic work is a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality. The author of the copyright has a 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 colours applied to any article in 2D or 3D by any industrial process and specifically excludes artistic work defined by the Copyright Act. Section 15 of the Copyright Act states that if a copyright which is capable of being registered as a design is not registered, the copyright in them ceases after more than 50 products are made by an industrial process.

The Double bench of delhi high court, clubbed appeals from two other cases which are having same issue- Mattel v. Jayant Aggarwalla and Dart Industries v. Technoplast. Though a final decision is yet to be delivered. The judgment made by the court sounds interesting and is quite long which is very difficult for the litigant to understand, it also showed how a provision could be subjected to varying interpretations in the hands of these dependents. It also raises, several critical questions such as the fundamental difference between the objectives sought to be achieved by the Designs Act and the Copyright Act were raised and answered too.

Microfibres case the fact was not disputed that, if at all 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, s.15 of the Copyright Act, which is specifically directed towards the 1911 Act, is to be deemed applicable to the work of the plaintiff. Therefore, since the work had been industrially applied for at least 50 times by the plaintiff, the copyright in the artistic work ceased to subsist which when combined with the fact that the non-registration under the Designs Act, 1911 by the plaintiff, deprived it of a right to claim infringement against the defendant.

Now, following are important inferences from the judgment of the Single Judge and questions Which one would expect the double bench to answer:-

1. What is the position of the law of designs, as it stands today, on 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 virtue of its existence, limit the right and term of a copyright owner of an artistic work, only in so far as the application of the work as a design by an industrial process is concerned? In other words, with regard to an artistic work, is the effect of the Designs Act, 2000 limited to governing the application of the work to an article without in anyway affecting the underlying copyright in the work?
3. 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?

I shall now discuss the submissions of some of the parties to seek answers to these questions. Microfibres Microfibres (shortnamed as MF) started off 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 since it is the nature of the work determines its status.