One of most controversial provisions of the Copyright Act, 1957, states that copyright in any design that could be registered under the Designs Act, 2000, but has not been so registered will cease when any article to which the design has been applied has been reproduced more than 50 times by an industrial process.
The judgment of a division bench of Delhi High Court in Microfibres Inc v Girdhar & Co & Anr (2009) provided much needed clarity with respect to the conflict between original artistic work as defined under the Copyright Act and design as defined in the Designs Act. It was held that copyright would exist in the original work of art and the author or copyright holder would continue enjoying the longer protection granted under the Copyright Act in respect of the original artistic work.
For example, a famous painting will continue to enjoy the protection available to an artistic work under the Copyright Act. A design created from such a painting for the purpose of industrial application on an article may also be entitled design protection in terms of the provisions of the Designs Act. If the design is registered under the Designs Act, the design would lose its copyright protection under the Copyright Act but the original painting would retain this protection. If the design is registrable under the Designs Act but has not been registered, the design would continue to enjoy copyright protection until the threshold limit of its application on an article by an industrial process 50 times is reached. Once that limit is crossed, it would lose its copyright protection under the Copyright Act.
It was further held that the original artistic work on which the industrially produced designed article is based would continue to fall within the meaning of artistic work as defined under section 2(c) of the Copyright Act and would be entitled to the full period of copyright protection as evident from the definition of “design” under section 2(d) of the Designs Act. The court held that the legislative intent was to grant greater protection to original, purely artistic works such as paintings, sculptures, etc., and lesser protection to design activity which is commercial in nature. The protection accorded to a work which is commercial in nature is lesser than and not to be equated with the protection granted to a work of pure art. Thus, the creator or copyright holder would continue enjoying the longer protection granted under the Copyright Act in respect of the original artistic work.
Using this rationale, Delhi High Court in Ritika Private Limited v Biba Apparels Private Limited (2016) held that because of the language of section 15(2) of the Copyright Act, no copyright can subsist in a drawing, sketch or design used for the creation of dresses, once more than 50 dresses have been produced. The court considered the observation in the Microfibres case that the legislature intended to give a lesser period of copyright protection when a design is created which is applied for commercial purposes. The court observed that an interpretation to give protection under the Copyright Act although the drawing, sketch or design is to be registered under the Designs Act would result in the Designs Act being redundant, and that every design originates with an intermediate product such as engraving, mould or diagram, based on the artistic work.
In the case of Holland Company LP and Ors v SP Industries (2017), Delhi High Court interpreted the relevant sections of the Designs Act and the Copyright Act and held that where a design of an article is prepared for industrial production of an article, it is a design and registrable under the Designs Act, and under section 14(c) of the Copyright Act, the author of such a design can claim copyright. Since such a design is registrable under Designs Act, if the design has been used for production of articles by an industrial process more than 50 times by the copyright owner or by any other person with the owner’s permission, the copyright in the design ceases.
Considering the above judgments, it has become settled that if original drawings made solely for the industrial production of an article meet the criteria of a design, they can be protected by registration under the Designs Act, but even if such registration is not sought, the author continues to enjoy rights over the drawings if the article made from such drawings is produced by an industrial process no more than 50 times.
Omesh Puri is an associate partner at LexOrbis.
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