Lucknow, UP, India, 226028

THE COPYRIGHT ACT AND THE DESIGNS ACT: CONCEPTUAL UNDERSTANDING AND THE INTERPLAY BETWEEN THE TWO OF THEM

Design

INTRODUCTION

India, as one of the fastest growing economies in the world has an obligation to have in place as robust legal framework for the protection and promotion of Intellectual Property Rights. Just at the cusp of 21st Century, India enacted several legislations to render legal protection to different forms of Intellectual Properties, such as the Patents, Trademarks, Copyrights, Designs, Semiconductor Circuit Layouts, Plant Varieties., etc. However, with multiple legislations in place, it becomes imperative for the executive to ensure smoother working of legislations that may have certain overlapping aspects to them. Now, before analyzing the interplay between the Copyright Act as well as the Designs Act, it becomes imperative for us to first understand the two concepts separately.

BRIEF OVERVIEW OF LEGAL REGULATORY FRAMEWORK FOR COPYRIGHTS IN INDIA

The copyright protection in India is governed by the Copyright Act of 1957 which provides protection is to works such as, literary, dramatic, musical., etc. It must be noted that copyright in the work is recognised even if it is not registered under the act however in order to seek various remedies under the act in case of infringement of copyright, registration becomes important. Copyright Act has been amended in 1999, 2002 as well as in 2012 in order to bring it in line with international commitments of India.

The enforcement mechanism under the copyright act is robust in the manner that it provides for Civil as well as Criminal remedies. Civil remedies are provided in the form of Injunctions, Damages and Compensation whereby Criminal remedies are in the form of Imposition of Fines and Imprisonment as well. The International Copyright Order of 1999 provides for protection of foreign works in India. It must also be noted that the role of Judiciary has been quite proactive as far as protecting foreign works in India is concerned. The literary, dramatic and musical works are protected during the duration of the lifetime of the author or the artist, plus 60 years accounted from the year following the death of the author.

BRIEF OVERVIEW OF LEGAL REGULATORY FRAMEWORK FOR DESIGNS IN INDIA

The legal regime of designs in India is regulated by the Designs Act of 2000 that protects the originality of the design of an article. Registration of design under the act would help in protecting against the instances of piracy that have proven to be a menace. In order to secure various remedies under the Act, the registration of design is a compulsory thing. Register of Designs is also maintained by the Controller to ensure that the same design is not registered twice. The holder of registered design gets a copyright as a proprietor of that particular design.

Application for registration of design can be filed by any entity which is legally recognized, be it a corporate body or a partnership firm. The act also provides a list of certain designs which cannot be registered under the act, for example if a design is scandalous or obscene or if a design has been previously disclosed to the public or if it is not a new design or an original design, in such cases a design cannot be registered under the Act.

After the registration of a design under the Act, the proprietor of the registered design can exercise its exclusive rights over the registered design, under the act, for a period of 10 years from the date of the application for registration, which is further extendable by period of 5 years. This right essentially includes the right to apply a design to a particular article by an industrial process, be it mechanical, manual or otherwise.

INTERPLAY BETWEEN THE TWO

It is hereby pertinent to note that even though efforts have been made to clearly distinct the rights available under the Designs Act, 2000 and the Copyright Act, 1957, however, the similarity in the works that can be provided with protection under these laws is such that there have been instances where the proprietors themselves have had confusion as to which sort of protection should they avail for the protection of their artistic works.

The central point of discussion here is Section 15 of the Copyright Act, 1957. Sub-section (1) of Section 15 states that if a particular design is registered under the Designs Act, 2000 then that design shall not have a copyright protection under the Copyright Act, 1957. Here, the point of debate could be as to what would be an “artistic work” under Section 2(c) of the Copyright Act, 1957 and what could be a “design” under Section 2(d) of the Designs Act, 2000 so that a decision could be reached as to which legislation would protect a particular work.

It is hereby pertinent to note that a “Test” in this regard has been developed by the Delhi High Court in the case of Microfibers v. Girdhar[1]. The Delhi High Court in this case propounded the “Object Test” and observed that in order to determine whether a particular work is an “artistic work” or a “design”, the object behind such a work has to be considered and must be given due importance. In this case, the plaintiff contended that the defendant had infringed his copyright in the artistic work, which were the floral designs, by applying them to the upholstery fabric.

Defendant on the other side argued that the plaintiff is not entitled to any protection of copyright, as the floral designs were produced for the purposes of application to the upholstery fabric by an industrial process. The Delhi High Court ruled in favour of the defendant and observed that the floral designs made by the plaintiff were made with an object that these designs should be applied later on to an upholstery fabric by an industrial process and therefore they do not have any sort of independent existence or independent significance and would therefore fall under the ambit of “design” given under Section 2(d) of the Designs Act, 2000.

The Privy Council in the case of Interlogo v. Tyco Industries[2] observed that the intent behind enacting the designs legislature is to protect works which do not, of themselves, have any independent artistic existence or artistic merit but they hold significance only because the fact that they will later on be applied to a particular article by way of industrial process. This basically means that to truly ascertain the beauty of any artistic work or artistic merit, it has to be in conjunction with an industrially manufactured or produced article on which the design would be applied by an industrial process. In such a case, the artistic work would be considered to be a design.

CONCLUSION

In the end it may be said that conflict or overlapping between two legislations in some aspects is something which is inevitable in the field of law. However, the role of judiciary in this particular aspect becomes all the more important in order for it to apply the laws in a harmonious fashion to effectively deal with situations that are apparently ambiguous or seems to be tricky to be dealt with. When faced with such conflicting laws, the courts may try and ascertain the legislative intent behind the legislations in order to assist them in their exercise of judicial interpretation of the laws. This will assist in efficient and timely administration of justice without any undue delay and would thus safeguard the proprietors from tedious litigation battles.

Author(s) Name: Rahil Setia (Army Institute of Law)

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[1] 2006 (32) PTC 157 Del.

[2] 3 All ER 949.