Copyright v. Copyright- Indian Designs Act and Copyrights Act

In an interesting decision by the Delhi High Court several issues pertaining to the overlap between Copyright Law and Design laws were laid to rest in the matter between Microfibres Inc Vs. Girdhar and Co. and Ors. CS (OS) No. 1480/2002 Decided On 13.01.2006 {also 128(2006)DLT238, 2006(32)PTC157(Del)}

In this case the plaintiff, a US based company involved in the manufacturing, marketing, selling and exporting of upholstery fabrics, claimed that the defendants have violated its copyright in the artistic works applied to upholstery fabrics and alleged that the defendant attempted to pass off the goods of the defendant as that of the plaintiff.

The plaintiff stated that its upholstery fabrics are printed, unique and original artistic works which are conceptualized and drawn/printed by either its employees or other persons who have assigned the copyright in the works to the plaintiff. Thus the plaintiff claimed that this artistic work constitutes original artistic work as defined within the meaning of Section 2(c) of the Copyright Act. and protect able under the Berne Convention, Universal Copyright Convention read with Indian International Copyright Order, 1999.

The plaintiff claimed that in May 2002, the plaintiff discovered that defendant was manufacturing, marketing and distributing upholstery fabric. The upholstery fabric manufactured and sold by the defendant was stated to bear the artistic works which are identical copies or colourable imitations of the artistic work in which the plaintiff has a copyright and all the distinctive features of the plaintiff's artistic work was alleged to have been copied.

The primary defense raised by the defendants is that the plaintiff is not entitled to protection under the Copyright Act as the artistic works are actually designs relating to textile products and came within the scope of the Designs Act, 2000. The plaintiff had failed to apply for registration of designs in India under the provisions of the said Act or the predecessor Act being the Designs Act, 1911 (hereinafter referred to as the Designs Act, 1911) The plaintiff having failed to complete the requisite formalities under either of the two designs Acts, is alleged to be now seeking to claim protection under the Copyright Act, which is not permissible.

Defendant further claimed that in textile trade, the designs in use are built around permutations and combinations of a limited number of motifs/imitations drawn from various sources and requiring very little by way of distinguishing variations to claim originality. Thus the three fold submission of the defendants were:
i) The plaintiff was itself conscious of the fact that registration was required under the Designs Act and had applied for designs to be registered in U.K. under the local Designs Act;

ii) The certificate relied upon and issued by the United States Copyright Office refers to the subject as fabric designs and not artistic works;

iii) The Indian Patent and Designs Office has confirmed vide its letter-dated 19.07.2002 that the subject designs being textile designs are registrable under the Designs Act, 2000.

The defendants also alleged that the plaintiff is guilty of suppressio veri and suggestio falsi i.e. the plaintiff failed to disclose the prior litigation including criminal proceedings where investigation officer had submitted a report to the court clearly stating that no case under the copyright law had been made out.

In the conspectus of the aforesaid position, the eight issues were framed. We will restrict ourselves only to the relevant ones, which are -

1. Whether there is any Copyright in the stated artistic work of the plaintiff.
2. Whether any Copyright subsists in favour of the plaintiff in view of the provisions of Section 15 of the Copyright Act.

The plaintiff placed reliance upon the Berne Convention for protection of literary and artistic works. The plaintiff state that as per Article 16(a) of the Convention protection exists automatically and there is no registration required in India in view of India being a signatory to Berne Convention, the Universal Copyright Convention, 1971 and the International Copyright Order 1999 being promulgated.
The defendants emphasized that the crucial question to be considered would be whether the subject work in question is an 'artistic work' protected under the provisions of the Copyright Act or a 'design' under the Designs Act, 2000 (or the Designs Act, 1911). The defendants contended that the subject work in dispute is floral designs, which are applied upon fabrics used for upholstery through an industrial process. This is the reason why in United Kingdom the plaintiff has registered the subject work as a design. A practical proof of this is stated to be the letter dated 19.07.2002 issued by the Patent Office to the effect that 'textile design fabrics' are registrable under the Designs Act, 2000.

The defendants contended that the legislative intent behind the repealed Designs Act, 1911 and coming into force of the new Designs Act, 2000 remained the same and the exclusion of 'artistic work' in the definition in the new Designs Act, 2000 is only clarificatory and was intended to exclude only artistic work pure and simple such as paintings, sculptures and works of art.

The court held that in order for the work of the plaintiff to qualify as 'artistic work', it must fall within the definition of Sub-section (c) of Section 2 of the Copyright Act. A reading of the said provision would show that attempt of the plaintiff can only be to bring it within the concept of 'painting'.

The court observed that “there is no doubt that labour has been put and there is some innovativeness applied to put a particular configuration in place. Such configuration is of the motifs and designs which by themselves would not be original. The originality is being claimed on the basis of the arrangement made. What cannot be lost sight of is the very object with which such arrangements or works had been made. The object is to put them to industrial use. An industrial process has to be done to apply the work or configuration to the textile. It is not something which has to be framed and put on the wall or would have any utility by itself. The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of art. In fact, it has no independent existence of itself.”

The court further held that In India there are special legislations governing the protection of different nature of rights. For instance the industrial designs the protection is provided under the Designs Act, 2000 and the now repealed Designs Act, 1911.

The court observed “An important and relevant aspect is that both under the old Act and the new Act, fabric designs on textile goods have been classified as proper subject matter of design protection by inclusion as a specific class in the Rules framed under the Acts. In the Designs Act of 1911, class 13 and 14 of the Fourth Schedule of the Rules dealt with printed or woven designs of textile goods other than checks and stripes and checks and stripes respectively. Such protection is now provided under Class 05 of the new Design Rules of 2001. Furthermore, the legislative intent is also to be kept in mind which is to provide protection for a certain period of time for commercial exploitation.”

Therefore nature of protection is quite different for an artistic work under the Copyright Act which is for the lifetime of the author / creator + 60 years. This is not so in the case of commercial exploitation as under the Designs Act and the Patent Act the period is much lesser. In the present case, the configuration was made only with the object of putting it to industrial / commercial use.

The exclusion of an 'artistic work' as defined in Section 2(c) of the Copyright Act from the definition of 'design' under Section 2(d) of the Designs Act, 2000 is only meant to exclude the nature of artistic works like painting of M.F. Hussain. It is, thus, the paintings, sculptors and such works of art which are sought to be specifically excluded from the new Act.

Thus, the intention of the legislature has been expressed as one to protect any artistic work which has to be commercially exploited by the owner of the copyright by not providing the protection under the Copyright Act, but under the earlier the Designs Act, 1911.

“To this extent, I see no difference between the intent under the old Act and the new Act. A perusal of the Statement of Objects and Reasons for introduction of the new Act, the handouts issued by the Design Office and the registrations made of textile fabrics both under the old Act and the new Act leave little manner of doubt that the protection for such configurations, designs or works (by whichever name it may be called) is provided under the Designs Act. It is, thus, apparently clear that in the context of the Indian Law, it is the Design Act of 1911 or 2000, which would give protection to the plaintiff and not the Copyright Act.

The application of mind and skill is not being denied nor the fact that the defendants have copied the same, but that would still not amount to the works in question being labeled as 'artistic work' within the definition of Section 2(c) of the Copyright Act and, thus, the protection is not available under the Copyright Act. Issue No. 1 is answered accordingly.”

As regards the second issue arising from the provisions of Section 15 of the Copyright Act. The Section provides that copyright subsists under the Copyright Act in any design, which is registered under the Designs Act, 1911 and in case a design is capable of being registered under the Designs Act, 1911, the copyright shall cease as long as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or his licensee.

The court held that the patterns and designs of the plaintiff were capable of registration both under the old Designs Act and the new Designs Act and the plaintiff failed to do so with the result that the protection is not available to the plaintiff, which would have arisen if they had been so registered.

The suit was accordingly dismissed in favour of the defendants.