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Overlap Between Copyrights And Designs In India – Copyright



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Intellectual Property Rights is a bundle of exclusive rights and
hence, at times, the overlap between two types of protection is
bound to happen. Such an overlap is quite unavoidable. One such
blurred line is drawn between designs and copyrights. Consider a situation. Company
‘A’ created certain original and artistic patterns which it
uses as prints for upholstery fabrics. Simultaneously, another
Company ‘B’ was also in the business of manufacturing and
selling upholstery. It came out with the similar design.
Consequently, ‘A’ alleged the latter for copyright
infringement. B contended that the works of ‘A’ must have
been protected under Designs and thus, there is no ground for
infringement.

Overlap in terms of Artistic works

Indian copyright and design laws have a curious and
blurry overlap, the effect of which is most obvious in the applied
art industry. A work created as a design for a commercial product
can lead to all types of legal queries including questions on the
intent with which the work was created or whether one’s
design’s reproduction is limited to 50 copies or has exceeded
that threshold. If one creates art with the aim of mass
commercialisation, it is no longer an artistic work but a design entitled to a shorter 15-year monopoly
maximum. If any work falls in the latter category, then protection
must be sought by registering the design under the Designs Act.

In the judicial pronouncement of Pranda Jewellery
Pvt. Ltd. vs. Aarya 24 kt & Ors.
, the Bombay High
Court decided upon the plaintiff’s claim for copyright
infringement. The plaintiff engaged itself in the business of
designing, marketing and selling the gold sheet articles of deities
and religious symbols under the name ‘Prima Art’. The
allegation was put on the defendant with respect to producing
identical gold sheet articles of deities and religious symbols.
Further, the defendants argued that the artistic works were capable
of registration under the Designs Act and not under Copyright Act
after being applied to a product for more than 50 times by a
particular industrial process. The hon’ble court stated that an
‘artistic work’ so long as it qualifies as an artistic work
reproduced in any form shall be eligible for requisite protection
under Copyright Act 1957. However, when it is used as the basis for
designing an article by its application by an industrial process or
any similar means, meaning an article other than artistic work
itself in two- or three-dimensional form, it would enjoy a lesser
period of copyright protection. The same is provided under Section
11 of the Designs Act, 2000. The exclusive rights under Section
15(2) of the Copyright Act, 1957 shall cease to exist after the
registration under the Designs Act 2000. The work shall continue to
enjoy complete protection as original artistic work under the
Copyright Act but what it would cease to enjoy is the copyright
protection in its industrial application for production of an
article.

Further, in 2014, in the case of Jagdamba Impex vs.
Tristar Products
, the Delhi High Court decided upon
the copyright claim over the 2D industrial drawings that were used
commercially for manufacturing 3D equipment to make combs. Jagdamba
began manufacturing combs using an identical machine that was later
revealed to be based on Tristar’s industrial drawings. Tristar
succeeded in restraining Jagdamba from its copyright infringing
actions but on appeal, the court observed that industrial drawings
used to produce combs had no independent existence and also
therefore, did not qualify for artistic works under the Copyright
framework. Tristar’s entitlement to copyright protection under
Section 15(2) was lost once the drawings were used to produce more
than 50 combs by a particular industrial process. Moreover, since
the drawings were not registered as designs, there can be no cause
of action against Jagdamba. Further, when the Special Leave
Petition was filed by Tristar before the hon’ble Supreme Court,
Delhi High Court’s decision regarding exhaustion of copyright
protection was set aside and the trial court was directed to
examine the issue. However, the decision of the trial court is
still awaited.

Difference based on Legal Provisions

Designs

Section 2(d) of the Designs Act, 2000 states that a design
majorly comprises of aesthetics of any article or any product of
manufacture. A design includes the following types and features:
shape, configuration, pattern, ornament and composition of lines or
colours. The designs are applied on any article, whether in a
two-dimensional or three-dimensional or both forms. The article
must be a result of any mechanical, manual or chemical industrial
process. It can be a combination of multiple processes or an
individual one. The provision exclusively excludes any mode or
process of construction of any mechanical device. In the provision,
it also excludes any trademark or artistic work that has been
applied for protection under the act.

According to Section 5 of the Design Act, the validity for a
registration lasts for ten years which can be further renewed for
another five years.

Copyright

Copyright is an exclusive right that is conferred upon the owner
of a work, which restricts any third-party to copy. The original
owner is protected from any infringement. The ‘original works
of authorship’ are protected if they are not copied and are a
result of one’s thoughts. Any person with his/her original
work, done by one’s intellect, has an automatic copyright. The
literary, artistic and scientific works are protected under the
copyright framework. Any ‘work’ within this purview means
that it is a creation of the mind in the given categories,
expressed in any mode or form. However, certain works are excluded
from the bigger circle of copyright protection:

  1. News of the day because these are merely information in the
    public domain.

  2. Legal instruments, administrative and related documents within
    the judicial domain.

  3. Any process, system, operational method or principle.

Unlike any design, the registration of any artistic, literary or
any other form of work protected under the Copyright regime, is
mandatory. Moreover, unlike the general validity of a design, the
validity period for copyrights differs on the basis of nature of
the work. For instance, the protection for cinematograph works,
photographic works and any other works of applied art extends till
seventy-five years.

Conclusion

A writ petition filed before the Delhi High Court challenged the
constitutional validity of Section 15(2) of the Copyright Act 1957.
The petition urges that the provision arbitrarily singles out the
applied art industry and the threshold related to reproduction
i.e., 50 products, is arbitrary because it is not based on any
reasonable or prudent consideration. Pronouncing on the cases
involving such Intellectual Property overlaps, has never been easy.
However, the particular issue related to a conflict between designs
and copyrights has remained ambiguous for far too long and it is
hoped that clear guidelines will emerge from the courts in the near
future.

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.

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