Given the inherent overlap between copyrightable artistic works and designs, the protection under the copyright law and designs law may often be considered overlapping. The Supreme Court of India ('Court') recently had the occasion to delve into the discussion of distinguishing 'copyright' and 'design'. In Cryogas Equipment Pvt. Ltd. vs. Inox India Ltd. & Ors.1, the Court formulated an approach to set these two distinct forms of intellectual property rights apart from each other.
Facts of the Case
To briefly summarise the facts, Inox India Ltd. ('Inox') filed a suit for infringement of their copyright subsisting in the engineering drawings of liquid natural gas semi-trailers developed by Inox. In response, the Defendants moved their application seeking rejection of the suit on the ground that it was not maintainable under Section 15(2) of the Copyright Act, 1957 ('Copyright Act'), contending that the proprietary engineering drawings fell within the definition of a 'design' under Section 2(d) of the Designs Act, 2000 ('Designs Act').
The Issue before the Court
For context, Section 15(2) of the Copyright Act states that any design that is capable of being registered under the Designs Act, if not registered, then the copyright protection in such design would terminate once that design is applied to any article and reproduced in excess of fifty times by an industrial process. To analyse the applicability of Section 15(2) of the Copyright Act in a given case, it is important to correctly classify an article as either a 'design' under the Designs Act or an 'artistic work' under the Copyright Act.
The Court, therefore, undertook the limited exercise of determining the distinction between a 'design' under the Designs Act and an 'artistic work' that might warrant copyright protection.
Court's Decision
After evaluating the criteria considered and tests adopted across various jurisdictions, including in India, the Court formulated a two-pronged approach to determine the distinction between copyright and design, i.e., – (i) whether the work in question is purely an 'artistic work' entitled to protection under the Copyright Act or whether it is a 'design' derived from such original artistic work and subjected to an industrial process; and (ii) if such work does not qualify for copyright protection, then the test of 'functional utility' will have to be applied to determine its dominant purpose and then ascertain whether it would qualify for design protection under the Design Act.
The Court referred to various case laws to reach the two-pronged approach. Regarding the first prong, it is relevant to refer to the case of Mircrofibers Inc. vs. Girdhar and Co.2, wherein the Delhi High Court distinguished 'pure original artistic works' from 'design' on the basis that a 'design' is commercial in nature. Thus, even if a work is 'purely artistic', it will lose copyright protection if it is put to industrial use (reproduced more than 50 times by industrial process).
The second prong of the test essentially states that if a work does not qualify as a subject matter of copyright, then it would not mean that it automatically gets protection as a 'design'. For a work to become a 'design', it will have to pass the 'functional utility' test. This test simply states that if a shape is solely for 'functional' purposes (to make the article work) and does not appeal to the eye, then it cannot deserve protection as a 'design'. Therefore, for design protection, the design needs to blend industrial efficiency with visual appeal.
Conclusion
The overlapping nature of design and copyright law often leads to complex legal and practical questions. While this issue has come up before different courts in the past, the Supreme Court has finally put it to rest by laying down a definitive test. As the protection under the Copyright Act is significantly longer than the protection under the Designs Act, creators would ideally want their work to be classified as an 'artistic work'. However, in light of this ruling, industrial application of a particular work may lead to loss of copyright in such work, and if it is not registered under the Designs Act, then design protection may also not be available. Therefore, it is important for the creators to be aware of the correct classification of their work and to seek timely protection accordingly.
Footnotes
1 Special Leave Petition (C.) No. 28017 / 2024
2 2009 SCC OnLine Del 1647
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