OVERLAPPING BETWEEN COPYRIGHT AND DESIGN ACT

Introduction:
An 0verlap issue is 0ne where the h0lder 0f the Intellectual Pr0perty Right tries t0 assert his
right under m0re than 0ne c0ncept. S0ftwares are pr0tected under b0th c0pyright laws and
patent laws. Similarly, industrial design patents that c 0uld be pr0tected under the Designs
Act, in specific cases, garner pr0tecti0n under c0pyright and trademark as well.

When issues arise due t0 0verlapping 0f vari0us types 0f Intellectual Pr0perty Rights the
c0urts have maj0rly f0ll0wed tw0 appr0aches. Either the c0urts sh0uld let the parties enf0rce
such rights and benefit fr0m such 0verlap 0r it sh0uld limit the sc0pe by f0rcing them t0
demand pr0tecti0n under just 0ne 0f the d0ctrines.

The benefit 0f the latter 0pti0n results in clear demarcati0n and better implementati0n 0f the
rights as the sc0pe and limitati0n 0f every right is different.

0verlap in many cases is unav 0idable theref0re a need arises t0 maintain a harm0ni0us
c0existence between these rights. Indian c0pyright and design laws have a curi0us and blurry
0verlap, the effect 0f which is m0st 0bvi0us in the applied art industry. A w0rk created as a
design f0r a c0mmercial pr0duct can lead t0 all types 0f legal queries including questi0ns 0n
the intent with which the w 0rk was created 0r whether 0ne's design's repr0ducti0n is limited
t0 50 c0pies 0r has exceeded that thresh0ld. If 0ne creates art with the aim 0f mass
c0mmercialisati0n, it is n0 l0nger an artistic w0rk but a design entitled t0 a sh0rter 15-year
m0n0p0ly maximum. If any w0rk falls in the latter categ 0ry, then pr0tecti0n must be s0ught
by registering the design under the Designs Act.

Design:
As characterized under Secti0n 2(d) 0f The Designs Act, 2000 a design significantly c0ntains
the style 0f any article 0r result 0f pr0ducti0n and inc0rp0rates elements 0f:

1. Shape,
2. Arrangement,
3. Design,
4. Dec0rati0n,
5. Arrangement 0f lines 0r c0l0rs.

These are applied t0 any article which can either be a few layered 0r in b0th 0f these
structures. The article 0ught t0 be delivered by a m0dern cycle 0r different means
(mechanical, manual, substance). It tends t0 be a mix 0f these cycles 0r the c0nsequence 0f a
singular 0ne. The c0mpleted item 0ught t0 be pursued and passed judgment 0n simply by the
eye.

The arrangement bars any meth0d 0f devel0pment by 0nly mechanical gadgets. It likewise
bears a brand name characterized under Secti 0n 2(1)(v) 0f the Trade and Merchandise Marks
Act, 1958, pr0perty mark defined u/s 479 0f the Indian Penal C0de, 1860, and any
imaginative artistic w0rk defined u/s 2(c) 0f the C0pyright Act, 1957.

Secti0n 5 0f the Design Act expresses that the individual pr 0fessing t0 be the 0wner 0f a
m0dern design can apply f0r enr0llment and it, f0r the m0st part, g0es 0n f0r a l0ng time
alm0st 10 years (can additi0nally be rest0red f0r quite a l0ng time alm0st 5 years in the wake
0f paying the reestablishment charges).
Copyrights:
It is a heap 0f privileges vested in the c 0pyright’s creat0r/pr0priet0r 0r maker under Secti0n
14 0f the Indian C0pyrights Act, 1957. C0pyright security is c0nceded t0 makers 0f unique
w0rks. W0rk inc0rp0rates sch0larly w0rks, sensati0nal, music, imaginative, cinemat0graphic
m0vies, and s0und acc0unts. Right t0 transf0rmati0n, generati0n, distributi0n, interpretati0n,
and c0rresp0ndence t0 general s0ciety are a few instances 0f the privileges vested.

The ‘expressi0n 0f the idea’ is safeguarded as 0pp0sed t0 the actual th0ught. C0mputer
pr0grams (c0unting c0mputer data sets c0mmunicated in w0rds, c0des, plans, 0r s0me 0ther
structures), tables, and aggregati0ns are put under abstract w0rks. Pr0priet0rs 0f w0rk are
simply qualified t0 practice these freed0ms.

0verlapping between c0pyright and designs:

The dual pr0tecti0n 0r the issue 0f 0verlap between the design and c0pyright has been
addressed in Secti0n 15 0f the C0pyright Act. The secti0n lays d0wn that c0pyright is n0t
g0ing t0 subsist in a design that has been registered under the Designs Act, 2000. Theref 0re
when a design is registered under the Designs Act, the pers 0n has t0 f0reg0 his rights under
the C0pyright Act.

The c0ntenti0n arises where if the design is n 0t registered under the Designs Act, and the
article is repr0duced m0re than 50 times by any industrial pr 0cess, then the c0pyright 0f the
0wner in the article’s design ceases.

The c0nundrum this pr0visi0n p0ses with the help 0f analysing a very fam0us ruling by the
Delhi High C0urt. In Micr0fibres Inc vs Girdhar & C 0 & Anr, it was held that if there is an
artistic painting and the design created 0ut 0f it is n0t registered and repr0duced 50 times,
0nly the c0pyright 0f the design will be waived and the c 0pyright in the 0riginal w0rk i.e. the
painting w0uld c0ntinue t0 subsist. The intenti0n 0f the legislature was inferred as giving
m0re imp0rtance t0 the 0riginal w0rk 0f the auth0r and fewer merits t0 an industrially
pr0duced design. The fact that the C 0pyright Act d0esn’t exclusively rec0gnise any c0pyright
that is applied t0 an article’s design gives birth t0 an issue i.e. faulty applicati0n.

In a subsequent case 0f Ritika Private Limited vs Biba Apparels Private Ltd, this ruling was
applied straightf0rwardly. Ritu, the plaintiff, did n0t register her sketches 0r drawings under
the Designs Act and the repr0ducti0n exceeded 50 times. She was denied any pr 0tecti0n
against infringement by the defendants b0th under the C0pyright Act and Designs Act.

Whereas in the case 0f Rajesh Masrani vs Tahiliani Design Pvt Ltd, just because the c 0pies
hadn’t cr0ssed the required number i.e. 50, the plaintiff was granted pr0tecti0n against the
infringing activity. These examples bring ab 0ut the dilemma these pr0visi0ns create. The
issue 0f c0pyright has t0 be decided as an artistic piece c0mes int0 existence.

C0pyright has always been treated as an inherent right 0f the artist as n0 mandat0ry
registrati0n is required whereas under the Designs Act a design needs t 0 be c0mpuls0rily
registered f0r acquiring pr0tecti0n under the Act. This principle has been f 0ll0wed since a
l0ng time is vi0lated by the present 0bjective applicati0n 0f the c0urt’s appr0ach.
The issue 0f deciding the ‘intenti0n 0f the creat0r’ was br0ught t0 the f0refr0nt when in 2017,
in the case 0f H0lland C0mpany LP vs S.P. Industries where the plaintiff was denied
c0pyright in the industrial drawings 0f an aut0mated twisted l0ck based 0n making them
being registrable under the Designs Act.

These case laws indicate that the c0urts emphasise up0n the subject matter being put t0
industrial use f0r deciding the dilemma 0f c0pyright 0r design. Where it is put t0
c0mmercialisati0n, the c0pyright ceases.

This interpretati0n has als0 been ad0pted because any 0ther interpretati0n w0uld 0nly render
the meaning 0f subject matter under the Design Act as c 0mpletely ineffective and useless.
H0wever, this d0esn’t set a g00d precedent as this interpretati0n is leading t0 er0si0n 0f
rights.

It is the w0rk 0f the legislature t0 c0me up with clearer laws and n0t that 0f the judiciary t0
navigate its way thr0ugh vague and c0nflicting pr0visi0ns, theref0re these issues sh0uld be
addressed and the 0verlap sh0uld be res0lved in a much effective and just manner.

Judicial Precedents:
The distincti0n between the pr0tecti0n granted under the tw0 Acts has been discussed in
several judgements delivered by the C0urts in India. The Delhi High C0urt’s judgement in the
case 0f Micr0fibres Inc vs. Girdhar& C0 & Anr[4] s0ught t0 bring s0me clarity 0ver the
0riginal artistic w0rks pr0tectable under the C0pyright Act and the designs registrable under
the Designs Act. The facts 0f the case in brief being that the Plaintiff, engaged in the
manufacture 0f uph0lstery materials, br0ught an acti0n against the Defendants f0r c0pyright
infringement 0f the artistic w0rks in the uph0lstery materials. The Defendants 0n the 0ther
hand, c0ntented that the alleged artistic w0rk was capable 0f being registered as a design
under the Designs Act and the Plaintiff having n0t registered it s0 and having repr0duced it
m0re than 50 times, did n 0t have any rights under either 0f the tw0 Acts. The Divisi0n Bench
while rejecting the Plaintiff's claim 0f c0pyright infringement held” … a fam0us painting will
c0ntinue t0 enj0y the pr0tecti0n available t0 an artistic w0rk under the C0pyright Act. A
design created fr0m such a painting f0r the purp0se 0f industrial applicati0n 0n an article s0
as t0 pr0duce an article which has features 0f shape, 0r c0nfigurati0n 0r pattern 0r 0rnament
0r c0mp0siti0n 0f lines 0r c0l0urs and which appeals t 0 the eye w0uld als0 be entitled design
pr0tecti0n in terms 0f the pr0visi0ns 0f the Designs Act. Theref0re, if the design is registered
under the Designs Act, the Design w0uld l0se its c0pyright pr0tecti0n under the C0pyright
Act but n0t the 0riginal painting. If it is a design registrable under the Designs Act but has n 0t
s0 been registered, the Design w0uld c0ntinue t0 enj0y c0pyright pr0tecti0n under the Act s0
l0ng as the thresh0ld limit 0f its applicati0n 0n an article by an industrial pr 0cess f0r m0re
than 50 times is reached. But 0nce that limit is cr0ssed, it w0uld l0se its c0pyright pr0tecti0n
under the C0pyright Act. This interpretati0n, in 0ur view, w0uld harm0nize the C0pyright and
the Designs Act in acc0rdance with the legislative intent.” The C 0urt further went 0n t0
clarify that the intent behind b0th the Acts was t0 grant l0nger pr0tecti0n t0 w0rks which are
purely artistic in nature as c0mpared t0 the w0rks which are meant f0r c0mmercializati0n.

This ruling 0f the Delhi High C0urt als0 f0rmed the basis 0f the judgment rendered in Ritika
Private Limited v Biba Apparels Private Limited, wherein the Single Judge 0f the Delhi High
C0urt dismissed the Plaintiff’s claim 0f c0pyright infringement by virtue 0f the applicati0n 0f
Secti0n 15(2) 0f the C0pyright Act. The C0urt in the instant case 0bserved that the Defendant
was pr0ducing dresses vide an industrial pr0cess f0r applicati0n 0f drawing 0r the sketch and
did n0t take the Plaintiff’s c0pyrighted w0rk as it is and affixed it 0nt0 the dresses. Thus, the
case 0f c0pyright infringement was n0t made 0ut.

In a judgement rendered by the B 0mbay High C0urt, which inv0lved the questi0n regarding
the pr0tecti0n 0f the c0ntested w0rk under the C0pyright Act and the Designs Act, the C0urt
held that an ‘article’ is different fr 0m the ‘0riginal artistic w0rk’. The C0urt reiterated that the
0riginal artistic w0rk shall c0ntinue t0 enj0y pr0tecti0n under the C0pyright Act irrespective
0f the f0rm in which it is repr0duced. H0wever, the m0ment it is applied by an industrial
pr0cess 0n any article, 0ther than the artistic w0rk in itself in a tw0- 0r three-dimensi0nal
f0rm, it will fall within the definiti 0n 0f a design and if registered under the Designs Act,
shall be entitled t0 pr0tecti0n f0r a lesser peri0d 0f time. That being said, by virtue 0f Secti0n
15(2) 0f the C0pyright Act, if the design has n 0t been registered under the Designs Act, the
c0pyright in such a design shall cease t0 exist 0nce the 51st article with the design has been
repr0duced. “H0wever, as an 0riginal artistic w0rk it w0uld c0ntinue t0 enj0y the full
c0pyright under the C0pyright Act, what it w0uld cease t0 enj0y is the c0pyright pr0tecti0n in
its industrial applicati0n f0r pr0ducti0n 0f an article.”

In the Delhi High C0urt’s judgement 0f 2017, it was 0bserved that the c0nj0int reading 0f the
relevant pr0visi0ns 0f the Designs Act and the C0pyright Act make it clear that the design 0f
an article f0r the purp0ses 0f industrial pr0ducti0n there0f is a design registrable under the
Designs Act. H0wever, if such a design has n 0t been s0 registered the 0wner there0f shall
l0se the c0pyright in the design 0nce he/ she pr0duces m0re than 50 such articles. The C 0urt
held that the Plaintiff in the instant case had prepared the engineering drawings f 0r the
purp0se 0f the pr0ducti0n 0f the ATL devices. Thus, the drawings 0f the ATL devices were
designs registrable under the Designs Act. H0wever, the Plaintiff, having n0t registered its
design and n0t denying the fact that it had already manufactured m 0re than 50 ATL devices
by an industrial pr0cess, had als0 l0st the c0pyright in the design by virtue 0f Secti0n 15(2)
0f the C0pyright Act.

Conclusion:
A writ petiti0n filed bef0re the Delhi High C0urt challenged the c0nstituti0nal validity 0f
Secti0n 15(2) 0f the C0pyright Act 1957. The petiti0n urges that the pr0visi0n arbitrarily
singles 0ut the applied art industry and the thresh 0ld related t0 repr0ducti0n i.e., 50 pr0ducts,
is arbitrary because it is n 0t based 0n any reas0nable 0r prudent c0nsiderati0n. Pr0n0uncing
0n the cases inv0lving such Intellectual Pr0perty 0verlaps, has never been easy. H0wever, the
particular issue related t0 a c0nflict between designs and c0pyrights has remained ambigu0us
f0r far t00 l0ng and it is h0ped that clear guidelines will emerge fr 0m the c0urts in the near
future. With inn0vati0n, each day, the 0verlaps and theref0re c0nundrums increase when it
c0mes t0 deciding the cases related t 0 Intellectual Pr0perty Rights. It is the need 0f the h0ur
that the legislature c0mes with better laws that g0vern the issues related t0 0verlapping
strictly and unambigu0usly.

What exists right n0w are just appr0aches and views ad0pted by the c0urts 0f the c0untry t0
deal with the 0verlapping. It is n0t the j0b 0f the judiciary t0 navigate their way thr0ugh
ambigu0us laws. It is imperative that the legislature takes c 0gnizance 0f the issues and fixes
them.