Intellectual Property Rights is a bundle of exclusive rights and hence, at times, the overlap between two types of protection is bound to happen. Such an overlap is quite unavoidable. One such blurred line is drawn between designs and copyrights. Consider a situation. Company 'A' created certain original and artistic patterns which it uses as prints for upholstery fabrics. Simultaneously, another Company 'B' was also in the business of manufacturing and selling upholstery. It came out with the similar design. Consequently, 'A' alleged the latter for copyright infringement. B contended that the works of 'A' must have been protected under Designs and thus, there is no ground for infringement.
Overlap in terms of Artistic works
Indian copyright and design laws have a curious and blurry overlap, the effect of which is most obvious in the applied art industry. A work created as a design for a commercial product can lead to all types of legal queries including questions on the intent with which the work was created or whether one's design's reproduction is limited to 50 copies or has exceeded that threshold. If one creates art with the aim of mass commercialisation, it is no longer an artistic work but a design entitled to a shorter 15-year monopoly maximum. If any work falls in the latter category, then protection must be sought by registering the design under the Designs Act.
In the judicial pronouncement of Pranda Jewellery Pvt. Ltd. vs. Aarya 24 kt & Ors., the Bombay High Court decided upon the plaintiff's claim for copyright infringement. The plaintiff engaged itself in the business of designing, marketing and selling the gold sheet articles of deities and religious symbols under the name 'Prima Art'. The allegation was put on the defendant with respect to producing identical gold sheet articles of deities and religious symbols. Further, the defendants argued that the artistic works were capable of registration under the Designs Act and not under Copyright Act after being applied to a product for more than 50 times by a particular industrial process. The hon'ble court stated that an 'artistic work' so long as it qualifies as an artistic work reproduced in any form shall be eligible for requisite protection under Copyright Act 1957. However, when it is used as the basis for designing an article by its application by an industrial process or any similar means, meaning an article other than artistic work itself in two- or three-dimensional form, it would enjoy a lesser period of copyright protection. The same is provided under Section 11 of the Designs Act, 2000. The exclusive rights under Section 15(2) of the Copyright Act, 1957 shall cease to exist after the registration under the Designs Act 2000. The work shall continue to enjoy complete protection as original artistic work under the Copyright Act but what it would cease to enjoy is the copyright protection in its industrial application for production of an article.
Further, in 2014, in the case of Jagdamba Impex vs. Tristar Products, the Delhi High Court decided upon the copyright claim over the 2D industrial drawings that were used commercially for manufacturing 3D equipment to make combs. Jagdamba began manufacturing combs using an identical machine that was later revealed to be based on Tristar's industrial drawings. Tristar succeeded in restraining Jagdamba from its copyright infringing actions but on appeal, the court observed that industrial drawings used to produce combs had no independent existence and also therefore, did not qualify for artistic works under the Copyright framework. Tristar's entitlement to copyright protection under Section 15(2) was lost once the drawings were used to produce more than 50 combs by a particular industrial process. Moreover, since the drawings were not registered as designs, there can be no cause of action against Jagdamba. Further, when the Special Leave Petition was filed by Tristar before the hon'ble Supreme Court, Delhi High Court's decision regarding exhaustion of copyright protection was set aside and the trial court was directed to examine the issue. However, the decision of the trial court is still awaited.
Difference based on Legal Provisions
Designs
Section 2(d) of the Designs Act, 2000 states that a design majorly comprises of aesthetics of any article or any product of manufacture. A design includes the following types and features: shape, configuration, pattern, ornament and composition of lines or colours. The designs are applied on any article, whether in a two-dimensional or three-dimensional or both forms. The article must be a result of any mechanical, manual or chemical industrial process. It can be a combination of multiple processes or an individual one. The provision exclusively excludes any mode or process of construction of any mechanical device. In the provision, it also excludes any trademark or artistic work that has been applied for protection under the act.
According to Section 5 of the Design Act, the validity for a registration lasts for ten years which can be further renewed for another five years.
Copyright
Copyright is an exclusive right that is conferred upon the owner of a work, which restricts any third-party to copy. The original owner is protected from any infringement. The 'original works of authorship' are protected if they are not copied and are a result of one's thoughts. Any person with his/her original work, done by one's intellect, has an automatic copyright. The literary, artistic and scientific works are protected under the copyright framework. Any 'work' within this purview means that it is a creation of the mind in the given categories, expressed in any mode or form. However, certain works are excluded from the bigger circle of copyright protection:
- News of the day because these are merely information in the public domain.
- Legal instruments, administrative and related documents within the judicial domain.
- Any process, system, operational method or principle.
Unlike any design, the registration of any artistic, literary or any other form of work protected under the Copyright regime, is mandatory. Moreover, unlike the general validity of a design, the validity period for copyrights differs on the basis of nature of the work. For instance, the protection for cinematograph works, photographic works and any other works of applied art extends till seventy-five years.
Conclusion
A writ petition filed before the Delhi High Court challenged the constitutional validity of Section 15(2) of the Copyright Act 1957. The petition urges that the provision arbitrarily singles out the applied art industry and the threshold related to reproduction i.e., 50 products, is arbitrary because it is not based on any reasonable or prudent consideration. Pronouncing on the cases involving such Intellectual Property overlaps, has never been easy. However, the particular issue related to a conflict between designs and copyrights has remained ambiguous for far too long and it is hoped that clear guidelines will emerge from the courts in the near future.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
