The inherent nature of intellectual property is such that the overlap between the bundle of rights available to an owner in a single subject matter is unavoidable. Consequently, maintaining harmonious co-existence between these rights and setting a precedent that fits all is proving to be a difficult task for enforcement bodies.
One such blurred line arises between copyright and designs law, particularly in relation to artistic works. The law governing copyright and designs in India however provides a fairly clear and simple distinction between both types of IP. A bare perusal of the Copyright Act, 1957 (“Copyright Act”) would reveal that a copyright subsists is any original work which grants the author an exclusive right over such work. The Designs Act, 2000 (“Designs Act”) defines a design as an external feature that is applied to an article and judged solely by the eye. Copyright protection in India is granted from the moment an original work is created. However, protection under the Designs Act is made available to an owner only when the design is granted registration. Therefore, copyright is often referred to as an inherent right, and a design is referred to as a statutory right.
The Copyright Act even addresses the issue of dual protection with designs explicitly in Section 15. As per Section 15(1), an owner of a design will forego protection under copyright law, once the design has been granted registration. Section 15(2) states that a copyright in an unregistered design shall cease, as soon as the article to which the design has been applied, has been reproduced more than fifty times by an industrial process.
This provision is often used as a defense in copyright infringement suits. For instance, in a 2016 Delhi High Court judgment, the defendant was able to successfully prove that no copyright subsists in a drawing of a dress because the drawing was applied to create more than fifty dresses. Further, given that the design in the dress was not registered by the plaintiff, the court denied the plaintiff from claiming design infringement as well. The plaintiff was thereby stripped off from claiming both copyright and design protection in its original design of the dress.
Even though the above ruling seems straightforward in its application to the facts of the case, it is unsettling that an original artistic work can be precluded from copyright protection by virtue of being depicted in three-dimensional or two-dimensional form and being reproduced or distributed to the public (which is covered under the meaning of copyright under Section 14(c) of the Copyright Act).
The court in this case made a reference to a popular 2009 judgment of the Delhi High Court, in which it was held that a copyright in an original artistic work, such as a painting, would subsist even if a design created from that painting is applied to an article more than fifty times, in which case only the copyright in the applied design would cease to exist. This interpretation, however, is problematic, given that the Copyright Act does not recognize a separate copyright in the ‘design’ that is applied to an article.
Nonetheless, the court in the aforementioned 2016 Delhi High Court case did not even allow the plaintiff to claim copyright infringement in its original artistic work, on the ground that since the defendant was creating dresses using an industrial process, there was no infringement of the plaintiff’s copyright.
Another 2017 Delhi High Court judgment reached a similar conclusion. The plaintiff was denied from enforcing a claim of copyright in its industrial drawings of automatic twisted locks on the basis of them being registrable under the Designs Act. Furthermore, this judgment brought the highly contentious issue of “intention of the creator” back to the forefront, wherein the artists’ intent at the time of creation of the artistic work is deciphered, in order to determine the nature of protection available to the artistic work.
One of the consistent trends that seem to have arisen out of these judgments is that copyright in a subject matter will exist until put to industrial use, at which time the subject matter will be covered under the ambit of the Designs Act. Courts have, time and again, propounded that any other interpretation would render the registration of a subject matter under the Designs Act as meaningless, thereby enunciating the importance of maintaining exclusive protection under the Designs Act separate from the Copyright Act. However, formulating an interpretation that leads to erosion of the perpetual rights of copyright owners subsisting in their original works is not a good precedent to set for the intellectual property regime in India, especially from the point of view of foreign investors, who might not see India as a viable market for commercializing copyright table subject matters. The need of the hour is to roll out a comprehensive law addressing the above-noted issues, so that the courts are not burdened with the task of navigating through vague and conflicting provisions existing in the statute.
Ritika Private Limited v Biba Apparels Private Limited MANU/DE/0784/2016
Microfibres Inc v Girdhar& Co &Anr MANU/DE/0647/2009
 Holland Company LP v S.P. Industries MANU/DE/2126/2017