India: Designs And Artistic Works: Microfibres’ Appeal Falls Through

Last Updated: 9 June 2009

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.

© Lex Orbis 2009

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions