The Indian legal system has two primary means of protecting visual creativity: through the Copyright Act, 1957 and the Designs Act, 2000. Copyright is for artistic & literary works, while design law protects the appearance of articles made using an industrial process. In the case of articles, the overlap occurs when an artistic work is claimed under copyright for industrial use, but is eligible for protection under design law.
Copyright vs. Design: Conceptual Differences
| Elements | Copyright | Designs |
|---|---|---|
| Statute | Copyright Act, 1957 | Designs Act, 2000 |
| Subject | Artistic, literary, dramatic, musical works | Aesthetic features applied to articles |
| Duration | Lifetime of creator + 70 years | 10 years + 5 years (renewable) |
| Purpose | Original expression | Visual appeal in industry |
| Registration | Optional | Mandatory for enforcement |
| Scope | Protects expression | Protects appearance |
Section 15(2) of the Copyright Act: The 50-Copy Threshold
As stated in Section 15(2), Copyright Act, when a design subject to registration under the Designs Act, is reproduced more than 50 times using an industrial process, there is no copyright protection - unless the design is registered under the Designs Act.
Section 15(2) of the Copyright Act states:
"Copyright shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process, unless it has been registered under the Designs Act."
This means that when an artistic work is applied to a product that is mass produced, the original creator cannot claim copyright in respect of their work unless it is registered as a design. The rationale behind this provision is to prevent the creator from circumventing the relatively short monopoly provided under the Designs Act, by issuing a claim to a much longer term copyright protection.
Why the Distinction Matters
Copyright protects original artistic, literary, musical, and dramatic works, and it provides rights for the life of the creator plus 60 years, although in most scenarios it does not involve any requirement to register the works to enforce rights.
Design law protects the appearance of an article (particularly where it can have an industrial application), with the maximum registered protection term being 15 years. Registration with the Design Office is one of the requirements to obtain these rights.
The crossover is where a two-dimensional drawing or sketch, such as the design of a fabric print or an industrial design drawing, is used in the course of creating a commercial product. If the drawing was never registered (under the Designs Act,) and it has been successfully reproduced a lot, the copyright may also be defeated under Section 15(2) of the Copyright Act.
In Lucasfilm Ltd. v. Ainsworth [2009] EWCA Civ 1328, Lucasfilm purported copyright in the Stormtrooper helmets made famous in the Star Wars films, and sought to prevent Ainsworth from reproducing and selling his Stormtrooper helmets. The Court decided that the helmets were utilitarian, without standing alone as having artistic merit, and could only be registered under design law which had expired. The Court denied copyright.
In Microfibres Inc. v. Girdhar & Co. [2006] (32) PTC 157 (Del), Microfibres alleged copyright in floral designs applied to upholstery fabrics. The Court made use of the "object test" and decided that the artistic work had no independent existence, and was made for industrial application. The copyright of the design ceased to exist under Section 15(2), because the designs had been applied more than 50 times and were not registered.
In Aga Medical Corp. v. Faisal Kapadi [2003] 26 PTC 349 (Del), there was a dispute concerning the protection of medical device designs. The Court ruled that if a design is capable of registration and is industrially applied more than 50 times, it must be registered under the Designs Act or copyright will cease.
Implications for Creators and Businesses
Strategic Registration: Designers need to make early decisions about whether to protect their works as copyright or (in the case of physical and manufactured articles) register the work as design, in particular, if they are producing it for mass commercialisation.
Litigation Risks: A copyright litigation featuring commercial designs may be thrown out by the court if the plaintiff cannot demonstrate registration under the Designs Act and there has been mass reproduction of the design works.
Preventing Abuse: The law is designed to prevent misuse of the longer copyright term for industrial articles that ought to be afforded design protection.
Conclusion
Section 15(2) is particularly important in the context of copyright versus design in India. It serves to avoid dual monopolies and gives creators the opportunity to choose the correct legal regime to protect their work and the evaluated use. The courts are evidencing a trend that:
- Practical artistic works that are utilised for industry must be registered under the Designs Act.
- When it is applied to more than 50 products a designer loses copyright for unregistered designs.
- The courts conduct an "object test" to assess the preeminent purpose of the work.
For creators, and certainly fashion, textiles, jewellery, industrial design and other similar sectors, understanding this interplay is important because the risks involved and choosing to register a design proactively avoid loss of rights and enforceability in a commercial context.
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.
