The line between provisions of the Copyright Act and Design Law although independent of each other, find parties approaching the Court to debate these provisions increasingly. This is pertinently true of the definition of "artistic works" as in S. 2(c) of the Copyright Act, 1957 and the exclusión of works subject to copyright from the ambit of Design law. Addressing an appeal against the Ld. Single judge of the High Court of Delhi in the case of Microfibres Inc. v. Girdhar & Co. & Anr. (Suit No. 1480/2002), the Double Bench of the Delhi High Court dwelled on the question of interpretation of Section 2(c) of the Copyright Act read with Section 2(d) of the Designs Act and Section 15(2) of the Copyright Act and their interplay with each other. Noticing that issues of commonality also existed with two other appeals, viz. Mattel Inc & Ors v. Jayant Aggarwalla & Ors. FAO(OS) NO. 447/2008 and Dart Industries Inc. & Anr v. Techno Plast & Ors. FAO(OS) NO. 326/2007 the division bench has allowed the parties to make submissions on common legal principles arising in these appeals.
Microfibres and Girdhar are engaged in the business of upholstery fabrics. The impugned judgment held that the designs of Girdhar were a substantial reproduction of the Microfibres artistic works. Microfibres were however Aggrieved by the judge's decision that the designs in question were capable of being registered under the Designs Act, 2000 and in the event of were not capable of being protected under the Copyright Act, 1957. Microfibres had not sought registration under the Designs Act.
Microfibres contended that their works qualified as original artistic works within S.2(c) and that there was no distinction between purely artistic works and others and hence they could claim exclusive rights to the same under Section 14(c) of the Copyright Act. Further, they went on to aver that the Designs Act, 2000 specifically excluded "artistic works" as defined by Section 2(c) of the Copyright Act, 1957 from the definition of 'Design'. They went on to state that the original underlying paintings made by Microfibres which were applied to the textiles with certain modifications fell within the meaning of 'original artistic works'. They further stated that the work of art in question had an independent existence in itself. It was also contended that 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 was not restricted to the exclusion of the nature of artistic works like painting of M.F. Hussain, but artistic works of varied nature. They alleged that Girdhar & Co. had indulged in unfair trade practice which was an aspect that had been completely ignored in the impugned judgment.
In addendum, Mattel Inc. and Dart Inc. highlighted that the process involved in manufacture of a final product was the preparation of drawing, followed by the production of the mould and then the final product. They stated that preparation of the drawing and production of the mould were copyright protectable u/s 2(c) along with S. 14(c) (i) of the Copyright Act, 1957 and that the loss of copyright upon registration of design was restricted to the third stage whereby it was applied to the final product.
Girdhar & Co. contended that the distinction between a 'design' and an 'artistic work' lay in the applicability of the former to an article and the intention to be used as model of patterns to be multiplied by an industrial process. The patterns and designs of Microfibres were used industrially and commercially in India and abroad. Further, it was stated that a design necessarily required something in the nature of a drawing or tracing and such a drawing or tracing did not qualify protection under copyrights. They also stated that Microfibres final product had been sold in India & overseas in numbers exceeding fifty. They also stated that to circumvent the standing in S. 15(2) of the Copyright Act, a new plea of original work being modified to be applied to the final product had been placed forth the bench which was never raised in their original plea.
Giridhar & Co.'s co-respondents also argued that the artistic copyright in the fabric designs was affected by the definition of 'design' in the new Designs Act, 2000. Further, it was stated that the intention with which the artistic work was made was to be taken into consideration and to view if the artistic work was always intended to be an industrial product for the production of a commercially produced fabric and marketed commercially. Further, they averred that S.15 (2) of the Copyright Act places a bar on any copyright protection available to any artistic work been applied to by an industrial process more than 50 times. They also noticed a similar design to that of microfiber had been registered under the U.K. Designs Act, 1949 in UK.
Techno Plast and its co-respondents, parties to (FAO (OS) No.326/2007) contended that it was necessary to determine the purpose for which the artistic work was created so as to determine which enactment applies. They also propounded that the work which was created for industrial application and its segregation into two or three stages was not feasible under the Copyright or the Designs Act. With respect to Section 15(2) of the Copyright Act, it was stated that once the work as applied to final product as a design, the provision does not provide any copyright protection to the intermediate stages. Jayant Aggarwalla, respondents in (FAO(OS) No.447/2008) in addition stated that the protection seeked for different stages of production would render the Designs Act otiose. They also stated that the appellants in the matter claimed a larger monopoly by the design proponent in spite of commercial production, which defeated the intent of the Designs Act. They substantiated their stand by stating that every design was traceable to a mould or a drawing and the only test which needed to be applied dealt with the intent of creating the mould. They also added that the article needed to be seen as a whole and the appeal of the article, subject matter of the design protection formed part of the article itself and hence could not be protected as separate work of art.
In retort, the appellants to the matter examined the election theory, (the creator of an artistic work loses his copyright upon application of the work to an article) and the intention theory stating them to be flawed. They also stated that the copyright in the design, applied to an article is extinguished and not the copyright in the artistic work itself under S.15 (2).
Taking note of the arguments advanced the Court went on to address the issues that were framed. Examining the question of whether the artistic work fell under the purview of design copyright or artistic copyright, Section 2(c) of the Copyright Act defines "artistic work" to mean a painting, sculpture, a drawing (including a diagram, map, chart or plan), and engraving or photograph, whether or not any such work possesses artistic quality. This definition was opined to possess a wide connotation and even extend to artistic works without any visual appeal. The Bench stated that under S.14(c), the holder of a Copyright had an exclusive right of in an original artistic work to reproduce the work in any material form. It was observed that the reproduction of the original artistic work was conducted by employing an industrial process, which resulted in a finished article which possessed appeal to the eye as adjudged solely by the eye then the industrial process constitutes a "design", within the purview of the Designs Act. The Court also found that a design qualifies to be termed as an artistic work within the meaning of Section 2(c) of the Copyright Act, provided that it is original. Under the Designs Act, copyright was said to mean the exclusive right to apply the design to any article in any class in which the design is registered. Addressing the difference between a design and an artistic work, the Con Planck Ltd. case 1923 KB 804, was referred wherein it was held that the fundamental distinction between a design and a simple artistic work lay in the applicability of the former to some other article. It was concluded that the original artistic work fell under original artistic work but its derivatives fell under the purview of Designs.
The Bench also pondered upon the question of whether the intention of the creation of the work determined the regime of Intellectual Property Rights and stated that doing so was incorrect. Observing that the artist's intent at the time of creation of the artistic work may be indecipherable, the intention at the time of the creation of the artistic work was said not plausible to determine the nature of protection available to the artistic work. The Bench went on to conclude that the design, which was a slight variant of the original artistic work, was industrially applied to an article to produce a product, can only claim registration under the Designs Act and not under the Copyrights Act, irrespective of the intention of the creator.
Examining the vehement argument dealing with the different stages of production being individually protectable under Intellectual Property Rights, the same was said to be legally not sustainable because the same would enlarge the monopoly in industrial design to the longer period available under the Copyright Act. The legislative intent behind the Copyrights Act & Designs Act was opined to revolve around the grant of a higher protection to pure original artistic works and any activity which is commercial in nature was to be granted a lesser period of protection. Microfibres' contention of splitting the stages of production was said to not only afford design protection in case of registered works but also in addition, the copyright protection to the works which were industrially produced. Such an interpretation was said to make the legislation otiose owing to the traceability of the origin of every registered design. The judgment in the Interlego case (1988) RPC 343 was also referred which supports that the intermediary process of creation of a design from an original artistic work cannot be afforded protection under the Copyright Act if been applied more than 50 times industrially to produce an article. Therefore it was decided that intermediate stages of production are not copyrightable.
The Court also took note of the question of whether Section 15 of the Copyright Act excluded from the ambit of Copyright protection either the original "artistic work" upon which the design is based or the design which by itself is an artistic work. The original paintings/artistic works which may be used to industrially produce the designed article were said to continue to fall within the meaning of the artistic work defined under Section 2(c) of the Copyright Act, 1957 and be entitled to the full period of copyright protection which was also evident from S. 2(d) of the Designs Act. The original painting was said to be entitled to copyright protection, but the design derived therefrom for the purposes of industrial production were said to be covered by the limitations placed in Section 15 of the Copyright Act and the same be protected if it was registered as a Design under the Designs Act. The Bench reiterated that any other interpretation would render the registration under the Designs Act as meaningless and the protection under the Designs Act cannot be granted protection under the Copyright Act, which is evident from Section 15 of the Act. Designs derived from original artistic works such as moulds, used for industrial application of the design on the articles would not qualify for protection as artistic works under the Copyright Act except in accordance with Section 15(2) of the Copyright Act.
In this light, the Bench pronounced that no merit existed in the facts & arguments raised in the appeal and hence the appeal was dismissed.
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