Copyright vs. Design: Where Does One End and The Other Begin?

Ritvik M. Kulkarni, III BSL LL, Law College, Pune

A few days ago, I came across a beautifully written article in Loksatta Newspaper titled “Kaleysaathi ki Vyaparasaathi?” (translated: For Artistic Pleasure or For Business Exploitation?), written by Professor Dr. Mrudula Bele. Dr. Bele is an Assistant Professor at the NDMVPS’s College of Pharmacy in Nasik at Maharashtra. She is also a pharmaceutical development scientist and patent consultant

 In her article dated 21st May 2015, Dr. Bele has discussed inter alia the difference between the nature of copyright protection and design protection. She has very succinctly explained the theory behind affording protection on varied terms depending upon the nature of intellectual property. She has stated that while copyrightable works are created from an artistic intent, other industrial works are created with a view to exploit them and gain profit. Furthermore, copyrighted works in any case are commercially much weaker than its industrial counterparts. For this reason, copyrightable works are afforded stronger protection in terms of the period of protection.  

On this note I have taken the opportunity to discuss a few points in relation to the landmark case of Microfibres v. Giridhar and Co.[1] (“Microfibres”) cited and discussed by Dr. Bele in her article.

A design right can be best described as an amalgamation of trademark, patent and copyright. This is because the function of a design is to appeal to the eye of the onlooker; thereby allowing the product (carrying the design) to assume a distinctive feature. Such distinctiveness is most likely to be achieved for a design as it is mandatorily required to be a new design. However, Indian design law does not protect a design if it is functional or it has utilitarian features; it aims to protect only the ornamental properties therein. And unlike copyright, a design must be compulsorily registered to be protected under the Designs Act, 2000; there is no common law remedy of passing off to protect against design piracy.

Consider the lamps of a car for example. Did you know that every car has different headlamps and tail lamps? The only function of a lamp is to appeal to the eye; the bulb behind the lamp case is the functional feature of the lamp. Its design takes birth as a drawing on paper and subsequently is reborn into an actual three dimensional model. Until the time that it remains a drawing, the lamp is protected under copyright law as an artistic work.

Once this drawing is applied to other materials to make an actual lamp, the said lamp model qualifies for design protection. However, if the said lamp is manufactured for more than 50 times, it loses its copyright protection and qualifies only for design protection; which can be secured only by getting it registered in the name of the manufacturer.

In Microfibres v. Giridhar and Co., the Division Bench of the Delhi High Court was faced with a question as to whether an unregistered design owner can claim for infringement of copyright for an original artistic work. The Bench mainly dealt with the interplay between copyright under the Copyright Act, 1957 and a copyright as under the Designs Act, 2000.

In the said case, Microfibres claimed that Giridhar has blatantly copied its designs for upholstery products. It stated that even though it hasn’t procured registration for design (thereby disqualifying it from protection under the Designs Act); the original artistic works or the drawings used to make these design are protected under copyright law.

However, Giridhar retorted by saying that the copyright (as under the Copyright Act) in any artistic work of the upholstery products had exhausted after it had been industrially reproduced for the 50th time by Microfibres. Thereafter it can only be protected under the Designs Act after due registration is sought. Giridhar also pointed out that Microfibres had in fact procured such registrations for its products in the UK, where the UK Designs Act makes similar provisions as the Indian Act.

After due deliberation, the Bench stated that:

“Section 15(2) deals with the situation where the design, which is capable of being registered under the Designs Act, is not so registered.  It provides that copyright in such a design shall cease as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process… It  is  clear  to  us  that  the  Parliament  in  Section  15  of  the  Copyright  Act  was  dealing  with  the  aspect  of  copyright  in  a  registered/registrable  design,  as  understood  in  the  Copyright  Act  and  not  the  Designs Act. Else, there was no need to deal with this aspect in the Copyright Act. The same would have been dealt with under the Designs Act. Therefore,   the  law  tolerates  only  a  limited  industrial,  or  shall  we  say  commercial, exploitation of the original artistic work by  the  application/reproduction of the said work in any other form or reproduction of copies thereof in exercise of the rights under Section 14(c)(1) and 14(c)(iii) of the Copyright Act. Beyond the specified limit, if the design derived from the original artistic work is exploited (i.e.  if the design is applied more than 50 times by an industrial process on an article)  the  copyright  in  the  design  ceases  unless  it  is  registered  under  the Designs Act.” (Para 30)

Furthermore, the Bench stated that it is important to trace the intention behind the creation of the said work. It clarified that commerce and art have been treated differently by the Legislature and any activity which is commercial in nature has been granted lesser period of protection.

“A  perusal  of  the  Copyright  Act  and  the  Designs  Act  and  indeed  the Preamble  and the Statement of Objects  and Reasons of  the  Designs Act makes it  clear  that  the  legislative  intent  was  to  grant  a  higher  protection  to  pure original  artistic  works  such  as  paintings,  sculptures  etc  and  lesser  period  of protection  to  design  activity  commercial  in  nature.   The  period  of  copyright would  be  the  author‘s  life  span  plus  60  years.   However, the  legislature  has allocated a lesser time span for the protection available to a registered design as only being 15 years.” (Para 32)

On the basis of the aforesaid reasoning, the Court refused to accept the claims of copyright infringement, and dismissed the appeals before it.

[1] RFA (OS) No. 25/2006 Delhi High Court

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