The Intersection of Industrial Design and Copyright Law

9th October, 2024 - 11:05 am Categories: Copyright Design Trademark 0 Comments

INTRODUCTION:

Intellectual Property Rights, constitute a group of rights that can sometimes overlap, resulting in multiple forms of protection to the owner over the same subject matter. This overlap is generally inevitable and occurs when the IPR holder/proprietor tries to assert his right under more than one concept. To address such situations, it is essential to ensure a harmonious coexistence among these overlapping rights. As a result, the Indian legislation, protects and distinguishes the rights for designs under The Designs Act, 2000 and copyright under The Copyright Act,1957. The issue of overlapping between design and copyright is addressed in Section 15 of The Copyright Act, 1957.

INTERPRETATION:

1. DISTINCTION BETWEEN COPYRIGHT AND DESIGN.

The Copyright Act,1957 under S.13 and S.14 of the Act, states the protection of original literary, dramatic, musical and artistic works, cinematograph films and sound recordings wherein artistic works including designs if they are original and depiction of 3-D or 2-D or both forms. Artistic works under this Act include paintings, sculptures, and architectural works, but it does not extend to designs that are industrially applied. The protection is granted to creators of original works.

On the other hand, The Designs Act, 2000 under S. 2(d) protects the aesthetic aspects of a design (shape, configuration, pattern, or ornament applied to an article) whether in 2-D or 3-D or both forms, that are appealing to the eye. The act also covers the formation process of design of the finished good including industrial, manual, mechanical, chemical processed whether combined or separate.

2. INTERSECTION OF DESIGN AND COPYRIGHT UNDER THE COPYRIGHT ACT.

The issue of overlap and dual protection is addressed under The Copyright Act, wherein Section 2(d)[1] of the Designs Act prevents any artistic work as defined in clause (c) of Section 2 of the Copyright Act from the ambit of a definition of a design which can be registered under the Designs Act.

Further S. 15 of the Copyright Act, which provides for a Special provision regarding Copyright in designs registered or capable of being registered under the Designs Act, 2000. The section lays down that-

S.15(1) Copyright is not going to subsist under the Act in any design which is registered under the Designs Act, 2000.

The contention is that once a design is registered under the Designs Act, it forfeits protection under the Copyright Act. Hence, that if a design is registered, the creator cannot claim copyright protection for that design. This avoids dual protection for the same design.

S.15(2) provides that the copyright in any design, which is capable of being registered but has not been registered, shall conclude/cease as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the said owner of the copyright or in case of licensing, by any other person.

The interpretation provides that if a design that is capable of being registered under the Designs Act, however it is not registered. Then in such cases the copyright protection under the Act ends if the design is reproduced more than 50 times through an industrial process. This provision ensures that creators cannot claim copyright protection, without registration and the said protection comes to a halt as provided by Section 15(2) of the Copyright Act.

3. JUDICIAL INTERPRETATION OF SECTION 15 OF THE COPYRIGHT ACT

To understand as to how copyright and design laws interact can be a complex situation, in particular when it comes to Section 15 of the Copyright Act, which deals with the overlap between copyright and industrial design protection. The distinction between the protection granted under both the Acts is discussed in several judgements to bring clarity over the original artistic works protectable under the Copyright Act and designs registrable under the Designs Act.

1. Microfibres Inc. v. Girdhar and Co. (2006) (32) PTC 157 (Del.)

Delhi High Court’s judgement in the case aimed at providing a clear vision to this overlapping. Microfibres Inc., a company specializing in upholstery fabrics, accused Girdhar and Co. the defendants of copying its artistic designs applied to fabrics. The core of the case revolved around the issue that whether the designs, once industrially applied and reproduced over 50 times, could still be protected under copyright law?

The DHC ruled that artistic works which are industrially applied and reproduced more than 50 times lose their copyright protection under the Copyright Act, emphasising that such designs should instead be registered under The Designs Act to receive protection. Hence the Division Bench provided that S.15(2) of the Copyright Act clearly states that designs reproduced more than 50 times are not protected by copyright and must be registered under The Designs Act for protection. The essence of such provision is a that if a design registrable under the Designs Act, but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. Such interpretation harmonizes the Copyright and Designs Act.

This ruling of Delhi High Court formed the basis of many other judicial interpretations so upholding the idea of co-existing of both the aspects of Intellectual Property Rights with clear interpretation and coordination.

2.Bulgari S.P.A vs Prerna Rajpal Trading as The Amaris Flagship [CS(COMM) 341/2014]

Bulgari is a renowned Italian Luxury Brand, well known for its exquisite craftsmanship and magnificent jewellery collection. They sued Prerna Rajpal (The Amaris Flagship Store) for allegedly copying the style of Serpenti Necklace and B.Zero1 Jewellery Collection. Bulgari argued that its ‘Serpenti Ocean Treasure Necklace’ was protected by Copyright Act as it is an original artistic piece. Bulgari asserted that the defendant being Amaris Flagship copied their products, and marketed them as their own.

The Delhi High Court after examining the evidence, noted similarities in structure and visual appearance between the contested designs and granted an injunction against Amaris for infringing on Bulgari’s rights.

In addition, the court agreed with Bulgari’s contention that the contested design, being handcrafted and reproduced fewer than 50 times with not been produced by any industrial process, it did not fall under Section 15(2). Therefore, it remained protected by copyright.

Therefore, the ruling reinforced the provision that the limit of 50 reproductions does not apply to handcrafted designs, and such designs can continue to be protected under The Copyright Law if they are not used for commercial productions or generated in mass.

4. ONGOING DEVELOPMENTS

A writ petition challenging Section 15(2) of the Copyright Act is currently under consideration by the Delhi High Court (Mukul Goyal vs. Union of India W.P (C) 8356/2014). The petition argues and focussed on the issue that the provision of Section 15 of the Copyright Act unfairly targets the applied art industry withholding threshold of 50 reproductions which might be arbitrary.

CONCLUSION

Hence, S.15 of the Copyright Act, emphasises upon the subject matter being put to industrial use for deciding the dilemma of copyright or design. When the design is put under commercial use, i.e. more than 50 designs being produced, the copyright ceases to exist. This interpretation has been made clear by the judgements provided by the Courts in India. The Copyright Act provides an inherent right of the artist or the proprietor whereas under The Designs Act a design needs to be compulsorily registered to be provided with protection.

Author: Hansika Bajaj, 5^th year student at Ideal Institute of Management and Technology, Affiliated with GGSIP, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.