Overlap Between Copyright and Design Law

Introduction

With ever expanding laws for protecting Intellectual Properties, there are times when multiple laws can be applied to a property at the same time. With several rights applicable at the same time, it would lead to overlapping of the laws. Overlap is thus, the issue wherein a holder of the Intellectual Property protects his work in more than one concept. One such overlap which is not legislatively addressed is the overlap between copyrights and design rights.

Copyrights are special rights granted to the author of an original literary, dramatic or artistic work. These rights exclude people other than the author/owner or persons who have acquired such ownership, from using, selling or producing such works.

Section 13 (1) of the Indian Copyrights Act, 1957, states, ‘copyright shall subsist throughout India in the following classes of works, that is to say:

  1. original literary, dramatic, musical and artistic works.
  2. cinematograph films; and
  3. sound recordings’;

Copyrights protects a work for the period throughout the authors’ life plus sixty years from their death. Protection to a work does not mandatorily require registration of copyright. From the time the idea is expressed, it acquires a copyright. However, registration of copyright is encouraged as it is easier and more efficient during a dispute.

Design

Section 2 (d) of the Designs Act, 2000 defines designs as, “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957)”.

Designs protect a work for a period of ten years which can be renewed for a further period of five years on applying for such renewal along with the payment of the prescribed fee.

It must be noted here that, designs include any designs other than trademarks, property marks and artistic works under copyrights. The question of what other designs is the Design Act protecting is quite confusing to the naked eye.

Copyrights and Design are often confused on the basis of their application. The grey area about the two concepts is not yet clearly demarcated. However, there are certain basic differences between the two which are worth mentioning.

A design right only protects the aesthetic features of an invention, whereas, a copyright protects the underlying expression of ideas. Any expression of ideas, as long as it is the author’s own work is qualified for protection under copyrights. Computer games for example, are created by coding using a computer language. Copyright would protect only the code, but would not necessarily prohibit somebody from arriving independently at a similar work. Design right could be used to protect the characters and certain other graphics, giving protection to the ‘look and feel’ of the game.

Copyrights are ever available to the creator of a work from the minute the work is put in a tangible form making this right an inherent right. And design rights are provided only when the design is registered according to the statutes hence is a statutory right.

In India, Copyright protection is granted for a period of the lifetime of the author and an additional sixty years from the death of the author. This period can in no way be extended.

In the case of “films, sound recordings, photographs, posthumous publications, anonymous and pseudonymous publications, works of government and works of international organizations”, the protection lasts for sixty years starting from the date of publication.

In a case where an expression of an idea is granted copyrights, in order to get a design rights over the same work, the owner must have to forego the protection under the copyrights law and have his work protected only under the design law.

Copyright and design, both try to safeguard the same facet in a property, which is the originality. The difference is that in case of design, the protection is claimed for the works applied for protection and in case of copyright, the protection is claimed for the work as is.

The conflict arises here, since both the copyright and designs depend on the same criteria of originality.

As per Section 15 (1) of the Copyrights Act, 1957, “Copyright shall not subsist in any design which is registered under the Designs Act, 1911”. This means, in case a work is registered under the Designs Act, the copyright attached to such work will cease to exist.

As per Section 15 (2) of the Copyrights Act, 1957, if an expression of an idea, which has automatically gained its copyright is then registered under the Design Act, the copyrights on such work ceases to exist; and another scenario is in a case where in a copyrighted article which can be registered and used as a design is not registered, the copyright of such work ceases to exist when the work is reproduced more than fifty times by an industrial process.

For example, an apparel design gets a copyright as soon as the design is put on paper. Now, if the apparel is made and is registered under the Designs Act, the apparel now loses its copyrights. Further, if the made apparel is not registered under the Designs Act, and the number of copies of the apparel exceeds fifty, the apparel again, loses its copyright.

In Ritika Private Limited V. Biba Apparels Private Ltd1, the plaintiff, had not registered her sketches under the Designs Act and the same was reproduced more than 50 times. The court denied any protection against infringement by under both the Copyright Act and the Designs Act.

Whereas, in the case of Rajesh Masrani V. Tahiliani Design Pvt Ltd2, the reproduced copies had not crossed the required number of 50, and hence, the plaintiff was granted protection against infringement.

In Pranda Jewelry Pvt. Ltd. And Ors V. Aarya and Ors, the court on deciding what could constitute as artistic work made clear that if the work falls under the ambit of section 2(c) of the Copyright Act, 1957, it is considered as an artistic work. But when that artistic work is put to industrial use, it would be qualified for protection under Design Act, 2000. And if protection under Design Act is not taken, the article ceases to be protected once it is reproduced more than 50 times.

A slightly different approach was given in Microfibres Inc V. Girdhar & Co & Anr3, it was held that if there is a design created out of an original painting, and the design is not registered leading a reproduction of 50 times or more, the copyrights of the design will be waived and not the copyrights of the original painting.

In this case, an element of intention was brought fourth for the deciding cases of this nature. According to this, if the intention with which the design was made was to obtain a copyright, then such design is considered as an artistic work and copyright protection is granted and if the intention was to obtain design protection then the work is not considered as an artistic work making it eligible for design protection. Proving said intention is challenging to the courts.

In Dart Industries Inc. And Anr. V Techno Plast and Ors.4, it was held that in case of a 3 dimensional work derived from a drawing which is a 2-dimensional work, the 2D work (the drawing) gets a copyright protection and the 3D work (the mold) gets a design protection. In case of copying of the 3D work, indirect infringement of copyrights may be claimed.

Conclusion

In spite of the several judicial pronouncements over the year with regards to the overlap of copyright and designs, the exact position for the two concepts is not settled. Through this confusion, a question on the existence of and the need for the design rights arises. Because, when an artistic work is protected under the copyright regime, why should design (which also predominantly include artistic work) come into play? Along with the question on the existence of the Designs Act, a question of whether amending the Copyright Act including the provision for decrease in the protection period in circumstances where an artistic work is reproduced more than fifty times be effective?

Legislature should solve the lacuna, this overlap causes.

1 Ritika Private Limited V. Biba Apparels Private Ltd CS(OS) No.182/2011

2 Rajesh Masrani V. Tahiliani Design Pvt Ltd FAO (OS) No.393/2008

3 Microfibres Inc. V. Girishar and Co.,2006(32) PTC 157 (Del)

4 Dart Industries Inc. And Anr. V Techno Plast and Ors. 2007 (35) PTC 285 Del.

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Bharat Sharma

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