From Art to Industry: Decoding the Clash between Copyright and Design in Indian Law

The relationship between copyright and design law in India, particularly as governed by Section 15(2) of the Copyright Act, 1957¹, has been the subject of multiple judicial interpretations. This provision deals with the complex issue of when a design that is capable of being registered under the Designs Act, 2000², can lose its copyright protection once it is reproduced more than 50 times through an industrial process. This article seeks to unravel the nuances of Section 15(2) by examining landmark judgments such as Microfibres Inc. v. Girdhar & Co.³ and others. These cases provide insights into how courts balance artistic expression with the need for promoting innovation in design.

Artistic work versus design: Defining the concepts

Before analysing Section 15(2), it is essential to distinguish between “artistic work” and “design”—

(i) Artistic work: Under Section 2(c) of the Copyright Act, 1957⁴, artistic works include paintings, drawings, sculptures, and photographs, which are protected due to their originality. An artistic work can be a standalone creation not necessarily intended for industrial application and enjoys protection for a significant period (life of the creator plus 60 years).

(ii) Design: Section 2(d) of the Designs Act, 2000⁵, defines design as features of shape, configuration, pattern, or composition applied to an article by an industrial process, which are judged solely by the eye. Designs are protected under the Designs Act but for a shorter period (15 years). If the design is capable of registration under the Designs Act, it must be registered to maintain protection beyond a limited number of reproductions.

Section 15(2) of the Copyright Act: Limiting copyright protection for industrial designs

Section 15(2) of the Copyright Act specifies that once an artistic work is applied to an article more than 50 times through an industrial process, it ceases to enjoy copyright protection unless the design is registered under the Designs Act. This limitation ensures that creators who wish to use their artistic works in commercial and industrial contexts cannot rely on long-term copyright protection but must instead register their designs under the Designs Act, which grants protection for a shorter duration.

Judicial interpretations of Section 15(2): A case law analysis

Several key cases have clarified the interpretation of Section 15(2), particularly how copyright and design law overlap and the extent to which copyright protection extends to industrial designs.

Microfibres Inc. v. Girdhar & Co.⁶

The Microfibres case⁷ is foundational in understanding the interpretation of Section 15(2). Microfibres Inc., a manufacturer of upholstery fabrics, claimed copyright protection over its fabric designs. The case revolved around whether the upholstery designs created by Microfibres Inc. could be protected as “artistic works” under the Copyright Act, 1957⁸ or whether they fell exclusively within the scope of the Designs Act, which governs industrial designs.

For ease of understanding, the analysis of this judgment will be broken down into five sub heads:

1. Artistic works and the Copyright Act

   The Court began by examining whether the fabric designs in question qualified as “artistic works” under Section 2(c) of the Copyright Act, 1957. The appellant argued that their designs were original artistic works either created by their employees or by third parties who had assigned the copyright to them. They contended that these designs should be protected under the Copyright Act, which grants exclusive rights to reproduce or license the work. The Court, however, focused on whether the designs in question could standalone as “artistic works”. It noted that the fabric designs were not independent works of art in the classical sense but were created specifically for commercial, industrial use. The Court held that while the designs may have involved skill and labour, their primary purpose was functional, to be applied to upholstery fabrics, which disqualified them from being protected solely under the Copyright Act. The Court referenced the fact that the designs lacked independent existence and were meant to be used in an industrial context.

2. Industrial use and the Designs Act

   The core issue raised by the Court was the intention behind the creation of these designs — whether they were made with an industrial purpose in mind. The Court referred to Section 2(d) of the Designs Act, which defines a “design” as the features of shape, configuration, pattern, ornament, or composition of lines or colours applied to an article, by any process, manual, mechanical, or chemical, that appeal to the eye.

   The Designs Act provides protection for designs that are novel or original and are meant to be applied to manufactured articles. The Court observed that fabric designs, specifically textile patterns, were capable of being registered under the Designs Act. In fact, such designs fall within Class 05 of the new Design Rules, 2001⁹, which specifically includes fabric designs as registrable under the Designs Act.

   The Court highlighted that the Designs Act was enacted to provide a specific form of protection for industrial designs and not for artistic works per se. The Court agreed with the learned Single Judge that fabric designs are inherently industrial in nature and are meant for mass production. Therefore, they are eligible for protection under the Designs Act and not the Copyright Act, unless they meet the criteria of original artistic works that can standalone as art.

3. The copyright-design overlap

   A significant part of the Court’s analysis focused on Section 15 of the Copyright Act, 1957, which addresses the overlap between copyright protection and design registration. The provision states that if a design is capable of being registered under the Designs Act, but is not, and is applied to more than 50 articles through an industrial process, copyright protection ceases.

   The Court emphasised that this provision was created to prevent dual protection under both copyright and design law. It pointed out that Section 15(2) of the Copyright Act specifically excludes from copyright protection any design that has been reproduced more than 50 times and is capable of being registered under the Designs Act. The rationale behind this limitation is to encourage design registration and prevent the monopolisation of designs for extended periods under copyright law, which would otherwise last for the life of the author plus 60 years.

   Since the designs at issue were capable of being registered under the Designs Act, but had not been, and had been applied to upholstery fabrics on a large scale (more than 50 reproductions) the Court concluded that Microfibres Inc. could no longer claim copyright protection for these designs.

4. Substantive and procedural requirements for design registration

   The Court discussed the requirements for registering a design under the Designs Act. A design must be new, original, and not disclosed to the public before its registration. The Court noted that Microfibres Inc. had not sought to register their designs under the Designs Act at the relevant time, even though the designs were eligible for such protection. In fact, the Court noted that the appellant had registered their designs in England, but not in India. This failure to register in India meant that they could not claim the exclusive rights available under the Designs Act.

5. Interpretation of Section 2(d) of the Designs Act, 2000

   The Court addressed the appellant’s argument that their designs should not be classified as industrial designs because they are artistic works. The appellant cited the exclusion of “artistic works” from the definition of “design” under Section 2(d) of the Designs Act. The Court rejected this argument, holding that the exclusion was intended to apply to works like paintings and sculptures that have a purely artistic purpose and are not intended for industrial use. The Court made a clear distinction between works of fine art, like paintings by M.F. Hussain, and designs meant for commercial application, such as fabric patterns.

   Ultimately, the Court upheld the decision of the learned Single Judge and dismissed the appeal. The Court found that the designs in question were industrial designs capable of being registered under the Designs Act, and because they were not registered, copyright protection ceased under Section 15(2) of the Copyright Act after 50 reproductions.

   The Court reaffirmed the principle that works intended for mass production and industrial use fall under the protection of the Designs Act, not the Copyright Act, unless they are purely artistic works with no intended industrial application. The failure to register the designs under the Designs Act meant that Microfibres Inc. could not claim any further protection for them.

   This case serves as a critical precedent in clarifying the distinction between copyright and design protection in India, especially in industries like textiles, where the overlap between art and functionality often creates complex legal questions.

Ritika (P) Ltd. v. Biba Apparels (P) Ltd.¹⁰

In Ritika (P) Ltd. case¹¹, the plaintiff claimed that its fashion designs, created for the “Ritu Kumar” brand, were original artistic works protected by copyright. However, the defendant, Biba Apparels, invoked Section 15(2), arguing that since the designs had been applied to more than 50 garments, the copyright had expired, and the designs should have been registered under the Designs Act.

The Court, citing Microfibres case¹², held that the plaintiff’s designs were no longer eligible for copyright protection once they crossed the 50-article threshold. This case further clarified that when designs are mass-produced, they must be registered under the Designs Act to retain any form of protection. The Court held in favour of Biba Apparels, reaffirming the principle set out in Microfibres case¹³. Since the plaintiff had not registered the designs under the Designs Act, the copyright protection had lapsed after the designs were applied to garments through an industrial process more than 50 times. The Court ruled that Ritika Private Limited could no longer claim copyright protection and should have registered the designs to continue enjoying legal protection.

Holland Co. LP v. S.P. Industries¹⁴

In this case, Holland Company LP sought an injunction against S.P. Industries for allegedly copying its industrial drawings for the automatic twist lock (ATL) system used for securing cargo containers. Holland claimed that these drawings were artistic works protected by copyright. However, the Court found that the designs were capable of registration under the Designs Act, as they had been used industrially for producing more than 50 units.

Applying Section 15(2), the Court dismissed the plaintiff’s request for an injunction, ruling that the copyright protection had ceased due to the industrial application of the designs. The Court’s decision reinforced the principle that designs applied through industrial processes cannot retain copyright protection unless registered under the Designs Act.

Jagdamba Impex v. Tristar Products (P) Ltd.¹⁵

In Jagdamba Impex case¹⁶, the plaintiff, a manufacturer of cosmetic products including combs, alleged that the defendant had copied its designs for a “teeth cutting machine”. The plaintiff argued that the designs were artistic works protected by copyright. The defendant countered that the designs were capable of being registered under the Designs Act and that the plaintiff had applied them more than 50 times in manufacturing.

The Court ruled in favour of the defendant, stating that under Section 15(2), the plaintiff’s copyright protection had lapsed after the design was applied industrially more than 50 times. The Court emphasised that the plaintiff should have registered the designs under the Designs Act to retain protection.

Rajesh Masrani v. Tahiliani Design (P) Ltd.¹⁷

In this case, Tahiliani Design claimed copyright protection for fashion sketches and sought an injunction against the defendant for alleged infringement. The Court ruled in favour of Tahiliani Design, finding that the sketches qualified as artistic works under Section 2(c) of the Copyright Act. The Court held that as long as the designs had not been applied more than 50 times through an industrial process, the copyright remained valid.

This case distinguished between artistic works and designs based on their industrial application. The Court clarified that an artistic work would continue to enjoy copyright protection until it crossed the 50-times threshold for industrial application, after which Section 15(2) would come into play.

Pranda Jewelry (P) Ltd. v. Aarya 24 KT¹⁸

In this case, the Bombay High Court focussed on the interplay between the Designs Act and the Copyright Act. It observed that designs, which have an aesthetic appeal and are applied to articles for industrial purposes, are protected under the Designs Act. However, the Court also recognised that if the work qualifies as an original artistic work under the Copyright Act, it enjoys higher protection, as copyright gives exclusive rights that last for a much longer period.

The Court agreed with the principle that once an artistic work is applied to an article for mass production, it moves into the domain of design protection. This gives the design protection only under the Designs Act, which limits the protection to a period of ten years (extendable by five years). The Court discussed the notion that artistic works that have no application beyond aesthetics (without being intended for replication or industrial manufacture) would receive the higher protection under copyright law.

The plaintiff contended that their works were unique creations, primarily meant for aesthetic purposes, not functional replication, and thus should be protected by copyright rather than being reduced to mere designs under the Designs Act. The Court, while agreeing with the plaintiff, observed that while there is overlap between artistic works and designs, the distinction hinges on the purpose of the work. If the primary objective of the work is aesthetic and not related to mass replication or industrial use, the work would remain under the protection of copyright.

The interplay between copyright and design: Key principles

The above judgments provide a consistent interpretation of Section 15(2), which governs the balance between copyright and design protection in cases of industrial application. Several key principles emerge:

1. Artistic work versus design: Artistic works are protected under the Copyright Act for their originality. However, once these works are applied through industrial processes, they transform into designs that must be registered under the Designs Act to continue enjoying protection.

2. Threshold of 50 reproductions: Section 15(2) sets a clear limit — when a design is applied more than 50 times through an industrial process, the copyright ceases unless the design is registered under the Designs Act.

3. Shorter protection for industrial designs: Designs that are used commercially receive shorter protection under the Designs Act (15 years) compared to artistic works under the Copyright Act (life plus 60 years). This distinction reflects the legislative intent to promote innovation and competition in commercial fields while reserving longer protection for purely artistic works.

4. Legislative intent: The legislative purpose behind Section 15(2) is to prevent creators from claiming long-term copyright protection for industrial designs. The Designs Act provides the appropriate legal framework for such works, with a focus on encouraging innovation and limiting monopolies in commercial design.

Conclusion

The interpretation of Section 15(2) of the Copyright Act, as developed through the judgments discussed above, highlights a clear legal distinction between copyright and design protection. Creators of original artistic works can claim copyright protection as long as their works remain in the artistic domain. However, once the works are applied industrially, they must be registered under the Designs Act if the creator seeks continued protection after crossing the 50-times reproduction threshold.

In Microfibres Inc. case¹⁹, Ritika (P) Ltd. case²⁰, Holland Co. LP case²¹, and Jagdamba Impex case²² all reinforce the principle that designs used for commercial purposes must be registered under the Designs Act to retain protection. Section 15(2) ensures that industrial designs are not afforded the longer-term protection available to artistic works, thus promoting innovation and competition in the commercial sphere.