Bombay High Court
Mody Pumps Inc And Anr vs Sovereign Pumping Solutions Pvt. ... on 27 April, 2022
Bench: N. J. Jamadar
ial-24609-2021.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION (L) NO.24609 OF 2021
IN
COMMERCIAL IP SUIT (L) NO.24602 OF 2021
Mody Pumps Inc and Another ...Applicants
In the matter between
Mody Pumps Inc and Another ...Plaintiffs
VISHAL
SUBHASH vs.
PAREKAR Sovereign Pumping Solutions Private Limited
and Another ...Defendants
Digitally signed by
VISHAL SUBHASH
PAREKAR
Date: 2022.04.27 Mr. Alankar Kirpekar a/w. Mr. Shekhar Bhagat, Mr. Rajas
20:20:41 +0530
Panandikar i/b. Shekhar Bhagat and Ms. Neelaja Kirpekar, for the
Plaintiffs/Applicants.
Dr. Farrukh Khan i/b. Mr. Chirag Chanani, for the Defendants.
CORAM : N. J. JAMADAR, J.
RESERVED ON : 3rd JANUARY, 2022
PRONOUNCED ON : 27th APRIL, 2022
-----------
ORDER:
1. This suit is a copyright infringement action.
2. By this interim application, the plaintiffs seek an order
restraining the defendants from infringing the plaintiffs' copyright
in the artistic work at Exhibit D, D-1, D-2 and D-3 to the plaint.
These are engineering drawings.
3. The plaintiff No. 1 is a company incorporated in the state of
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Nevada, USA. The plaintiff No. 2 is the wholly owned subsidiary of
plaintiff No. 1. The defendant No. 1 is a company registered under
the Companies Act, 2013. The defendant Nos. 2 to 4 are former
employees of plaintiff No. 2 company.
4. The suit proceeds on the premise that defendant Nos. 2 to 4
colluded with each other and stolen the copyrighted drawing/s and
confidential data relating to the products of the plaintiffs and
started manufacturing and marketing identical water pumps, as
manufactured by the plaintiffs, in the name of defendant No. 1.
5. Mr. D.N. Mody was the pioneer in manufacturing the water
pumps in India. Mr. Mody started the plaintiffs' business in the year
1960. Over a period of time, the plaintiffs invested in continuous
research and development in manufacturing the water pumps. The
plaintiff employees have prepared drawings titled, inter alia,
"CABLE GLAND BASE", "CABLE GLAND", "OUTLET 4 th HOSE" and
"SEAL HOUSING" (Exhibit D, D-1, D-2 and D-3). The plaintiffs claim,
sole proprietorship over the copyright in the suit engineering
drawings under the Copyright Act, 1957. In addition, the plaintiffs'
claim, the plaintiffs' employees have created 'operating instructions'
and installation and maintenance manual including the spare parts
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list of submersible dewatering pumps for the model No. G-504T
(Exhibit E) which was modified in the year 2006, copy of which is at
Exhibit F to the plaint.
6. The defendant Nos. 2 and 3 had been Managing Director and
General Manager(Operations) of the plaintiff No. 2 company.
Defendant No. 4 was employed with plaintiff No. 2 from 1st
September, 2017 to 2nd December, 2020 as a Junior Design Engineer.
Eventually, the defendant Nos. 2 to 4 separated from the plaintiff
No. 2 company.
7. The defendant No. 1 company came to be incorporated in the
year 2021. The defendant Nos. 2 and 3 are the Directors of
defendant No. 1. In the months of August, 2021, the plaintiffs
received an email sent by defendant No. 2 on behalf of defendant No.
1 providing drawings identical to the suit drawings and requesting
for a reasonable quote for development of Investment cast Dies. The
plaintiffs assert that all the drawings attached to the said email are
exact copies of suit drawings in all aspects, save and except that the
drawings bear the names of defendant No. 1 and date of 10 th August,
2021. The defendants have, according to the plaintiffs, colluded with
each other and intentionally copied the suit drawings which were
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within the knowledge of the defendants. Several documents are
pressed into service to demonstrate that the defendants are dealing
in the same business of water pumps like the defendants' operating
instructions (Exhibit K), brochure (Exhibit K-1). Hence, this action
for infringement of copyright, breach of confidentiality, damages
and other consequential reliefs.
8. During the pendency of the suit, the plaintiffs have sought
interim relief in the nature of appointment of a Court Receiver as a
Receiver of defendants impugned products and associated products,
documents etc., restraining the defendants from using in any
manner whatsoever any of the drawings shown in Exhibit I to the
plaint and/or any other drawings which are deceptively similar to
the suit drawings, from printing and/or publishing the 'operating
instruction/s, installation and maintenance manual including spare
parts list for submersible dewatering pump for model SPG 53 M
(Exhibit K to the plaint), brochure (Exhibit K-1 to the plaint) and
from disclosing and/or using any engineering drawings for
manufacturing and marketing the defendants' products and/or
products of any other party so as to breach the confidentiality in
any manner whatsoever and/or so as to infringe the plaintiffs
copyright in the artistic work of any of the suit drawings and/or any
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other work and/or literary work or artistic work in any manner
whatsoever.
9. The defendants have resisted the application by filing a detail
affidavit in reply. At the outset, the defendants contend that the
plaintiffs action suffers from suggestio falsi and suppressio vary.
Thus the plaintiffs are not entitled to any of the equitable reliefs.
The defendants categorically assert that the product which Mody
Industries (F.C.) Private Limited, founded by Mr. D.N. Mody, was
manufacturing and trading was actually inspired by the dewatering
pumps introduced by WEDA Pumps, a UK based company.
Therefore, there exists no intellectual property right, whether in
the form of industrial design, patent, copyright or trade mark as the
dewatering pump which were then manufactured by Mody
Industries (F.C.) Private Limited were actually a direct copy of the
products manufactured by WEDA Pumps.
10. According to the defendants, over a period of time, Mody
Industries (F.C.) Private Limited came to be managed by Mr. Samir
Mody and a new company Mody Pumps Inc., plaintiff No. 1, came to
be formed in the year 1996 in USA. The defendant No. 2 claimed to
have resurrected the flagging business of Mody Industries (F.C.)
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Private Limited. According to defendant No. 2 it was explicitly
agreed amongst the promoters of the Mody Industries (F.C.) Private
Limited and defendant No. 2 that all the inventions which would be
procured by the efforts of defendant No. 2 qua the said product
would vest with defendant No. 2. In the meanwhile, on account of
escalation of interse family disputes amongst the family members of
late Mr. D.N.Mody, defendant No. 2, based on the representations,
assurances and warranties given by Mr. Samir Mody, joined hands
with Mr. Samir Mody and a new entity by name Mody Pumps
(India) Private Limited, the plaintiff No. 2, came to be incorporated.
11. The defendant No. 3, at the persuasion of defendant No. 2
joined the plaintiff No. 2.
12. The defendants further contend that the defendant Nos. 2 and
3 were the only persons who were carrying the business operations
of the plaintiff No. 2 from manufacturing to sale. The defendants
assert that differences arose between Mr. Samir Mody and
defendant Nos. 2 and 3 and the situation came to such a pass that
defendant Nos. 2 and 3 were coerced to sever the ties with plaintiff
No. 2, which they had built with painstaking efforts, intellect and
perseverance.
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13. Without disputing that defendant No. 1 was incorporated in
the month of January, 2021, with defendant Nos. 2 and 3 as its
Directors, the defendants categorically controvert the assertions of
the plaintiffs that the defendants have copied the engineering
designs of the plaintiffs. The defence proceeds on the premise that
the product in question is generic in nature and several companies
in India are manufacturing similar products under different brand
names. All the drawings of dewatering pumps being manufactured
and sold in India, by various entities, are actually based on original
designs of WEDA Pumps. The claim of infringement is also assailed
on the ground that allegedly copyrighted designs are neither
registered under Indian Designs Act, 2000 nor Indian Patent Act,
1970 nor are they the original invention of the applicant. The
defendants have specifically denied that the brochure (Exhibit K) is
a copy of the brochure of plaintiff No. 2. The defendants contend
that when the defendant Nos. 2 and 3 placed an order to its designer
for preparation of brochure pertaining to defendant No. 1, the
designers initially thought that defendant No. 1 would have same
association with plaintiff No. 2 as it was the defendant No. 2 who
was responsible for running the business of plaintiff No. 2. On
account of the said confusion, the said designer might have
prepared design of the brochure. The defendants contend that the
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such design of the brochure was, however, never put to use.
14. Lastly, the defendants categorically reiterate that neither the
plaintiff nor the defendants are the prior users, registered
proprietors of the artistic work and no one has exclusive right to
use the said artistic work as it is generic in nature and extensively
used by other manufactures in the same industry.
15. A counter is filed by the plaintiff to controvert the contentions
in the affidavit in reply.
16. In the backdrop of the aforesaid pleadings, I have heard Mr.
Alankar Kirpekar, for the Plaintiffs/Applicants and Dr. Farrukh
Khan, for the Defendants at some length. The learned counsels have
taken me through the pleadings and documents tendered in support
of the rival claims.
17. To begin with, it is necessary to note that there is not much
controversy over the jural relationship between the plaintiff Nos. 1
and 2 and the fact that the plaintiff Nos. 1 and 2 have been engaged
in the business of manufacturing and sale of water pumps. Nor the
jural relationship between defendant No. 1 and defendant Nos. 2 and
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3 is in dispute. The fact that the defendant No. 1 came to be
incorporated under the Companies Act, 2013 in January, 2021 is
also incontestible. There is not much controversy over the fact that
the defendant Nos. 2 and 3 were holding the position of Managing
Director and General Manager (Operations) of plaintiff No. 2. By
and large, it is an admitted position that suit drawings titled as
"CABLE GLAND BASE", "CABLE GLAND", "OUTLET 4 th HOSE" and
"SEAL HOUSING" (Exhibit D, D-1, D-2 and D-3) were created and
used by the plaintiffs whilst the defendant Nos. 2 and 3 were in
charge of the affairs of plaintiff No. 2. The fact that after
incorporation of defendant No. 1, the defendant No. 2 addressed a
communication seeking a reasonable quote for cast Dies as per the
drawings attached to the said communication (Exhibit I) (page Nos.
98 to 101), is also rather indisputable. The controversy essentially
revolves around the question as to whether suit engineering designs
constitute artistic work, whether the plaintiffs have copyright in
suit engineering designs and the defendants infringed or threatened
to infringe the plaintiffs' right.
18. Mr. Kirpekar would urge that in the light of the indisputable
position of the defendant Nos. 2 to 4 being former employees of
plaintiff No. 2, the impugned drawings which are identical in each
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and every aspect with the suit drawings, can only be said to be an
attempt at unabashedly copying the artistic work of the plaintiff
and thereby infringe the right of the plaintiffs. Comparing and
contrasting the each of the suit and impugned engineering
drawings, Mr. Kirpekar would urge that no other inference than
that of infringement of copyright is plausible.
19. It would be suffice to note that each and every particular of
the engineering drawing of the CABLE GLAND BASE (6 HOLES) of
defendant No. 1 corresponds with the copy of engineering design of
CABLE GLAND BASE (Exhibit D) of the plaintiff, approved by
defendant No. 2 on 17th November, 2014. Likewise, the engineering
design of CABLE GLAND of defendant No. 1 prima facie appears to
be a copy of the plaintiff's drawing of CABLE GLAND (Exhibit D-1).
Prima facie the engineering drawing of model SPG 103M of the
defendant No. 1 appears to be a copy of the engineering drawing of
OUTLET 4th HOSE (Exhibit D-2) of the plaintiff. And "SEAL
HOUSING" of the defendant No. 1 copies in all material particulars,
the engineering drawings of the plaintiff's SEAL HOUSING (Exhibit
D-3). All the impugned engineering drawing of defendant No. 1 are
approved on 10th August, 2021.
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20. An endevour was made on behalf of the defendants, to
demonstrate that all these engineering drawings are based on
common technology. There is neither any novelty, nor any
originality in these drawings. Since the drawings are not registered
under the Designs Act, 2000, no copyright subsists.
21. Dr. Khan, the learned counsel for the defendants would urge
that in the absence of registration of the design under the Designs
Act, 2000, the plaintiff can not claim any copyright in the
engineering drawings. Therefore, the action of infringement is
wholly misconceived. To lend support to this submission, Dr. Khan
placed reliance on a judgment of Delhi High Court, in the case of
Holland Company LP and Anr. vs. S.P. Industries1.
22. In the said case, the plaintiff claimed ownership of industrial
drawings of Automatic Twist Lock system in securing cargo
containers. The plaintiff claimed that drawings of ATL and its part
constituted an artistic work in which the plaintiffs have copyright.
A learned single Judge of Delhi High Court, after adverting to the
provisions of the Copyright Act held that drawing of ATL device of
the plaintiffs were registrable under the Designs Act. 2000. Yet, the
drawings were not registered under the Designs Act, 2000.
1 (2017) 71 PTC 630.
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Moreover, the plaintiffs did not dispute that while using those
engineering drawings, it were used for more than 50 ATL devices by
industrial process and, therefore, it was clear that the plaintiffs had
used those drawings for more than 50 times in an industrial
process. Thus by virtue of section 15(2) of the Copyright Act even if
it was assumed that the plaintiffs had copyright in those
engineering drawings, it ceased to have the same.
23. Reliance was also placed on a Division Bench judgment of the
Delhi High Court in the case of Microfibres Inc. vs. Girdhar & Co.
and Anr.2. The Division Bench while construing the interplay
between the provisions of the Copyright Act and the Designs Act, in
the context of the artistic work in a design, expounded the legal
position as under:-
26. The expression "copyright in any design" used in
Section 15(2) means the copyright as understood under
the Copyright Act, and not under the Designs Act. This is
evident from the expression "copyright shall not subsist
under this Act" used in sub-section (1) of Section 15.
However, copyright in an artistic work subsists provided it
is an original artistic work. Therefore, there can be no
claim for Copyright under the Copyright Act in an artistic
work which does not have the quality of possessing
originality. The holder of a copy of an original artistic work
cannot claim copyright protection. Therefore, to be entitled
to protection under the Copyright Act, the design should
have originality. That is not to say that if the design is not
entitled to copyright protection under the Copyright Act, on
account of it not possessing originality vis-à-vis the original
artistic work, the design does not require, or cannot be
granted registration under the Designs Act for it to be
2 2009 SCC OnLine Del 1647.
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entitled to protection under the Designs Act.
.......... ................
29. Section 15 of the Copyright Act is in two parts. The first
part i.e. sub- section (1) states that copyright shall not
subsist under the Copyright Act in any design which is
registered under the Designs Act. Consequently once the
design is created and got registered under the Designs Act,
whether or not the design is eventually applied to an article
by an industrial process, the design loses its protection as
an artistic work under the Copyright Act. Therefore,
subject to whatever rights that are available under the
Designs Act, the registered design holder cannot claim
protection or complain of copyright infringement in respect
of the registered Design under the Copyright Act.
30.Subsection (2) of section 15 deals with the situation
where the design, which is capable of being registered
under the Designs Act, is not so registered. It provides that
copyright in such a design shall cease as soon as any article
to which the design has been applied has been reproduced
more than 50 times by an industrial process by the owner
of the copyright or with his licence, by any other person. It
is clear to us that the Parliament in Section 15 of the
Copyright Act was dealing with the aspect of copyright in a
registered/registrable design, as understood in the
Copyright Act and not the Designs Act. Else, there was no
need to deal with this aspect in the Copyright Act. The same
would have been dealt with under the Designs Act.
Therefore, the law tolerates only a limited industrial, or
shall we say commercial, exploitation of the original
artistic work by the application/reproduction of the said
work in any other form or reproduction of copies thereof in
exercise of the rights under Section 14(c)(1) and 14(c)(iii)
of the Copyright Act. Beyond the specified limit, if the
design derived from the original artistic work is exploited
(i.e. if the design is applied more than 50 times by an
industrial process on an article) the copyright in the design
ceases unless it is registered under the Designs Act.
........ ........... ........
45. Learned counsel Shri Praveen Anand, appearing
on behalf of the appellant in FAO (OS) No.447/2008 has
contended that there is a vital difference between the
subject matter of copyright and design protection. In our
view, while this plea is sustainable, nevertheless, it cannot
be ignored that different kinds of protection for an artistic
work, and the design founded upon the artistic work which
is industrially and commercially exploited, has been
intended by the Legislature. He has further submitted that
what stands extinguished under Section 15 of the
Copyright Act is the copyright in the design itself as applied
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to an article and not the copyright in the artistic work
itself. There is no quarrel with this proposition. However,
that does not advance the case of the appellant. We do hold
that in the original work of art, copyright would exist and
the author/holder would continue enjoying the longer
protection granted under the Copyright Act in respect of
the original artistic work. Thus, for instance a famous
painting will continue to enjoy the protection available to
an artistic work under the Copyright Act. A design created
from such a painting for the purpose of industrial
application on an article so as to produce an article which
has features of shape, or configuration or pattern or
ornament or composition of lines or colours and which
appeals to the eye would also be entitled design protection
in terms of the provisions of the Designs Act. Therefore, if
the design is registered under the Designs Act, the Design
would lose its copyright protection under the Copyright Act
but not the original painting. If it is a design registrable
under the Designs Act but has not so been registered, the
Design would continue to enjoy copyright protection under
the Act so long as the threshold limit of its application on
an article by an industrial process for more than 50 times
is reached. But once that limit is crossed, it would lose its
copyright protection under the Copyright Act. This
interpretation, in our view, would harmonize the Copyright
and the Designs Act in accordance with the legislative
intent.
46.We thus summarize our findings as follows:
a. The definition of 'artistic work' has a very wide
connotation as it is not circumscribed by any limitation of
the work possessing any artistic quality. Even an abstract
work, such as a few lines or curves arbitrarily drawn would
qualify as an artistic work. It may be two dimensional or
three dimensional. The artistic work may or may not have
visual appeal.
b. The rights to which a holder of an original artistic work is
entitled are enumerated in Section 14(c) of the Copyright
act.
c. It is the exclusive right of the holder of a Copyright in an
original artistic work to reproduce the work in any
material form. For example, a drawing of an imaginary
futuristic automobile, which is an original artistic work,
may be reproduced in the three-dimensional material form
using an element, such as a metal sheet.
d. The design protection in case of registered works under
the Designs Act cannot be extended to include the
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copyright protection to the works which were industrially
produced.
e. A perusal of the Copyright Act and the Designs Act and
indeed the Preamble and the Statement of Objects and
Reasons of the Designs Act makes it clear that the
legislative intent was to grant a higher protection to pure
original artistic works such as paintings, sculptures etc and
lesser protection to design activity which is commercial in
nature. The legislative intent is, thus, clear that the
protection accorded to a work which is commercial in
nature is lesser than and not to be equated with the
protection granted to a work of pure art.
f. The original paintings/artistic works which may be used
to industrially produce the designed article would continue
to fall within the meaning of the artistic work defined under
Section 2(c) of the Copyright Act, 1957 and would be
entitled to the full period of copyright protection as evident
from the definition of the design under Section 2(d) of the
Designs Act. However, the intention of producing the
artistic work is not relevant.
g. This is precisely why the legislature not only limited the
protection by mandating that the copyright shall cease
under the Copyright Act in a registered design but in
addition, also deprived copyright protection to designs
capable of being registered under the Designs Act, but not
so registered, as soon as the concerned design had been
applied more than 50 times by industrial process by the
owner of the copyright or his licensee.
h. In the original work of art, copyright would exist and the
author/holder would continue enjoying the longer
protection granted under the Copyright Act in respect of
the original artistic work per se.
i. If the design is registered under the Designs Act, the
Design would lose its copyright protection under the
Copyright Act. If it is a design registrable under the Designs
Act but has not so been registered, the Design would
continue to enjoy copyright protection under the Act so
long as the threshold limit of its application on an article by
an industrial process for more than 50 times is reached.
But once that limit is crossed, it would lose its copyright
protection under the Copyright Act. This interpretation
would harmonize the Copyright and the Designs Act in
accordance with the legislative intent.
24. Dr. Khan laid special emphasis on the aforesaid
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pronouncement to draw home the points that to be entitled to
protection under the Copyright Act, the design should have
originality and it is necessary to register the design under the
Designs Act, 2000 to claim protection of the copyright under the
Copyright Act, 1957.
25. Mr. Kirpekar joined the issue by canvassing a submission that
the propositions sought to be advanced on behalf of the defendants
are not in consonance with law. The aforesaid pronouncements,
according to Mr. Kirpekar, do not advance the cause of the
submission sought to be urged on behalf of the defendants. These
submissions are rooted in an incorrect impression of the nature of
copyright in an engineering drawing, submitted Mr. Kirpekar. To
bolster up this submission, Mr. Kirepekar placed a strong reliance
on three judgments of this Court in the cases of Sanjay Soya Private
Limited vs. Narayani Trading Company 3; Photoquip India Limited
vs. Delhi Photo Store and Another4 and Indiana Gratings Private
Limited and Ors. vs. Anand Udyog Fabricators Private Limited and
Ors.5.
26. Before adverting to consider the enunciation of law in the
3 2021 (87) PTC 185 (Bom.)
4 2014 SCC Online Bom 1088.
5 2009 (39) PTC 609 Bom.
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aforesaid judgments, it would be necessary to note the relevant
provisions contained in the Copyright Act, 1957 and the Designs
Act, 2000.
27. Section 2(c) of the Copyright Act, 1957 defines an artistic
work to mean :-
(i) a painting, a sculpture, a drawing (including a
diagram, map, chart or plan), an engraving or a
photograph, whether or not any such work
possesses artistic quality; (ii) work of architecture;
7 and
(iii) any other work of artistic craftsmanship.
28. Section 13(1) of the Copyright Act, 1957 reads as under:-
13. Works in which copyright subsists.-
(1) Subject to the provisions of this section and the
other provisions of this Act, copyright shall subsist
throughout India in the following classes of works,
that is to say,-
(a) original literary, dramatic, musical and artistic
works;
(b) cinematograph films; and
(c) [sound recordings;]
29. Section 14 expounds what a copyright means and reads as
under:-
14. Meaning of copyright.-
For the purposes of this Act, "copyright" means the
exclusive right subject to the provisions of this Act,
to do or authorise the doing of any of the following
acts in respect of a work or any substantial part
thereof, namely:-
(a) ......
(b) ......
(c) in the case of an artistic work,-
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(i) to reproduce the work in any material form
including depiction in three dimensions of a two
dimensional work or in two dimensions of a three
dimensional work;
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not
being copies already in circulation;
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to an adaptation of the work
any of the acts specified in relation to the work in
sub-clauses (I) to (iv);
(d) .......
(e) .......
Explanation : For the purposes of this section, a
copy which has been sold once shall be deemed to be
a copy already in circulation.
30. Section 15 incorporates special provision regarding copyright
in designs registered or capable of being registered under the
Designs Act, 2000 :-
15. Special provision regarding copyright in designs
registered or capable of being registered under the
Designs Act,1911.-
(1) Copyright shall not subsist under this Act in any
design which is registered under the Designs Act,
2000:-
(2) Copyright in any design, which is capable of
being registered under the Designs Act, 2000, but
which has not been so registered, shall cease as soon
as any article to which the design has been applied
has been reproduced more than fifty times by an
industrial process by the owner of the copyright or,
with his license, by any other person.
31. Section 2(d) of the Designs Act, 2000 defines "design" as
under:-
(d) "design" means only the features of shape,
configuration, pattern, ornament or composition of
lines or colours applied to any article whether in two
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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).
32. On a cumulative reading of the aforesaid provisions, it
becomes evident that drawings are artistic work within the
meaning of section 13(1)(a) of the Copyright Act and the copyright
in relation to an artistic work means a right to reproduce the work
in any material form including depiction in three dimensions of a
two dimensional work and in two dimensions of a three dimensional
work. Clause (d) of section 2 of the Designs Act specifically excludes
any artistic work as defined under section 2 clause (c) of the
Copyright Act, 1957, from the ambit of design.
33. In the case of Photoquip India Limited (supra) the learned
single Judge of this Court, explained as to what section 15 refers to.
It was observed that section 15(2) refers to only a 'design' and not
an 'artistic work'. It has no application to the latter, but only to the
former. Section 2(d) of the Designs Act makes this plain, for it
excludes from the definition of design all 'artistic works'.
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34. The judgment of this Court in the case of Indiana Gratings
(supra) appears to be on all four with the facts of the case at hand.
In the said case, the defendants (some of whom were former
employees of the plaintiff) were accused of copying the plaintiff's
drawings for the purpose of manufacturing gratings. It was urged by
the defendants that there was no copyright in those drawings as
they were designs and thus capable of registration under the
Designs Act, 2000 being drawings of industrial design.
35. A learned single Judge of this Court, found the aforesaid
submission on behalf of defendants therein, nothing but a feeble
attempt to wriggle out of the situation. After adverting to the
provisions of the Copyright Act and the Designs Act especially
section 2(d), the learned Single Judge observed as under:-
35. ......... .................A reading of the definition shows
that it relates to the final shape, pattern, etc. of an
article, whether in the drawings or in the object,
provided that the finished article shown in the design
must be appealing (have eye appeal). It specifically
excludes a mere mechanical device or an artistic work
under the Copyright Act. Aside from the specific
exclusion of the artistic work which is a diagram by
way of a drawing under Section 2(c)(i) of the copyright
Act, the definition of design also excludes a mere
functional mechanism which would be a product
reflecting a mere functional utility as against the final
product being appealing to eye.
36. It would be flattering to call the Plaintiffs' design
appealing to the eye. It has been held, as will be
presently shown, the appeal is the appeal to the eye of a
customer. The Plaintiffs' drawings, in this case, which
showed geometrical diagrams do not reflect any
finished products, let alone an appealing finished
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product. The drawings taken singularly do not even
show a final part of a product. Hence, the Plaintiffs
have as many as 330 drawings for manufacture of their
finished products. The drawings, which do not reflect
finished articles, let alone appealing finished articles,
but serve a mere functional purpose, therefore, does
not even fall within the definition of the term "design".
37. If the Plaintiffs' drawings do not qualify as design
under the Designs Act, they are not registrable as such.
Consequently, the copyright in registered designs,
which is available to the designs of the final product
under Section 11 of the Designs Act, could not be
available to the Plaintiffs.
36. Learned judge, in the facts of the said case, concluded as
under :-
54. A look at the various drawings of the
plaintiffs in this case would unmistakably show no
appeal and only mechanical devices and machine
parts to perform specified functions. The plaintiffs
drawings are, therefore, not design they are
contended to be. They are artistic works within the
meaning of section 2(c) of the Copyright Act, 1957
and their theft, copying, and subsequent use upon
purchase of parts similar products from the suppliers
of the Defendants 1 to 3 constitute infringement
under Section 2(m) of the plaintiffs' copyright under
section 14(c)(1) of the Copyright Act, 1957."
(emphasis supplied)
37. In the Photoquip India Limited (supra), the learned single
judge considered the pronouncement in the case of Microfibres Inc.
(supra) relied upon by Dr. Khan, and explicitly observed that the
pronouncement in the case of Microfibres Inc.(supra) does not
advance the cause of the submission on behalf of the defendants
that the plaintiffs drawings were not artistic work at all, but purely
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designs. The observations in paragraph 34 (after extracting the
observations of Delhi High Court in the case of Microfibres Inc.
(supra)) read as under:-
34. It is thus clear that a design produced from an
artistic work is very different from the artistic work
itself. I do not see how this decision can possibly
assist Mr. Grover. It does not support the
proposition he canvasses, which is that the
Plaintiff's drawings are not artistic works at all, but
purely designs. This is precisely the submission
negatived in Indiana Gratings and Microfibres both.
By an extension of Mr. Grover's reasoning, a sketch
of a novel automobile or an airplane would not enjoy
copyright protection if 50 articles derived or
inspired by that sketch and passing through a
'design' phase were finally produced. This is entirely
incorrect.
(emphasis supplied)
38. In the light of the aforesaid exposition of law it is too late in
the day to urge that the engineering drawings do not constitute
artistic work. Conversely, they do not constitute design within the
meaning of Designs Act, 2000 and are, therefore, not required to be
registered under the Designs Act. Thus, the submission that in the
absence of such registration, the provisions contained in sub-section
(2) of section 15 of the Copyright Act come into play and the
copyright therein ceases as soon as any article, to which the design
has been applied, has been reproduced more than 50 times by an
industrial process, by the owner of the copyright, or with his
license, by any other person, does not merit countenance. I am,
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therefore, not persuaded to accede to the challenge sought to be
mounted on behalf of the defendants to the tenability of the action of
infringement of the copyright on the premise that no copyright
subsists in engineering drawings.
39. The next challenge on the ground that there is neither any
novelty nor originality in the engineering drawings so as to sustain
the claim of copyright therein, also appears legally unsustainable. It
is imperative to note that the defendants have made an earnest
endevour to demonstrate that it was only on account of the time,
effort and expertise of the defendant No. 2, the plaintiff No. 2
customized the dewatering pumps as per the Indian standards so as
to ensure that the complaints with regard to the quality of the said
product would be minimized. At the same breath, the defendants
contend that there was no intellectual property in the drawings as
they were actually the direct copy of the products manufactured by
WEDA Pumps. This stand of the defendants is simply inconsistent if
not wholly contradictory.
40. Mr. Kirpekar was justified in canvassing a submission that not
only the suit drawings (Exhibit D to D-3) contain a warning that
those drawings were confidential but also the impugned drawings
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contain a warning that they belong to defendant No. 1 and are
strictly confidential and they shall not be circulated without the
defendants' authorization. Thus, the defendants, on facts, cannot be
permitted to take a somersault and contend that the drawings of the
plaintiffs were not original.
41. In law what is required to be seen is whether there is
originality in the expression of an idea. The term "original work"
does not mean or include an expression of original or inventive
thought. Since the Copyright Act is not concerned with originality of
ideas but with the expression of thoughts, the work in which
copyright is claimed must originate from the author.
42. A useful reference can be made to the three Judge Bench
judgment of the Supreme Court in the case of R.G. Anand vs. M/s.
Delux Films and Others6 wherein the concept of copyright and the
test for determination of its infringement were postulated. The first
three propositions culled out in paragraph 46 read as under:
46] Thus, on a careful consideration and
elucidation of the various authorities and the case
law on the subject discussed above, the following
propositions emerge:
1. There can be no copyright in an idea, subject
matter, themes, plots or historical or legendary
facts and violation of the copyright in such cases is
6 (1978) 4 Supreme Court Cases 118
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confined to the form, manner and arrangement and
expression of the idea by the author of the copyright
work.
2. Where the same idea is being developed in a
different manner, it is manifest that the source
being common, similarities are bound to occur. In
such a case the courts should determine whether or
not the similarities are on fundamental or
substantial aspects of the mode of expression
adopted in the copyrighted work. If the defendants
work is nothing but a literal imitation of the
copyrighted work with some variations here and
there it would amount to violation of the copyright.
In other words, in order to be actionable the copy
must be a substantial and material one which at
once leads to the conclusion that the defendant is
guilty of an act of piracy.
3. One of the surest and the safest test to determine
whether or not there has been a violation of
copyright is to seeing the reader, spectator or the
viewer after having read or seen both the works is
clearly of the opinion and gets an unmistakable
impression that the subsequent work appears to be
a copy of the original.
43. In the case at hand, even if the defence of the defendants that
water pumps are manufactured on the line of the products
manufactured by WEDA Pumps, is taken at par, at best, it can be
stated that the plaintiffs might have taken the idea of UK based
manufacturer. Though the idea remains the same, namely
manufacturing the water pumps, the distinctiveness lies in the
plaintiffs expression of idea in their drawings. As the defendants
themselves contend the drawings were modified and products were
customized to suit the Indian conditions, the expression of idea, as
documented in the suit engineering drawings, cannot be infringed as
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copyright subsists in the said artistic work. From this stand point,
defence to the action of infringement that the product is of generic
nature and therefore no copyright subsists in it, falls through.
44. The upshot of the aforesaid consideration is that in view of the
exact similarity between the suit engineering drawings and the
impugned drawings, coupled with the fact that the defendant Nos. 2
to 4 are the former employees of plaintiff No. 2 and have resorted to
the device of slavish copying of all the engineering drawings of the
plaintiff including the brochure of the plaintiffs, and for which the
lame excuse of confusion on the part of brochure designer was
offered, in my view, a strong prima facie case is made out by the
plaintiffs.
45. In the circumstances of the case, the balance of convenience
heavily tilts in favour fo the plaintiffs. A clear case of a design to ride
over the goodwill and reputation of the plaintiffs by obtaining undue
advantage of the past association with the plaintiffs and the
information gathered in the capacity of the employees of the
plaintiffs, becomes evident. In the event injunctive reliefs are not
granted, the plaintiffs would suffer irreparable loss.
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46. For the foregoing reasons, the application deserves to be
allowed.
Hence, the following order.
ORDER
1] Application stands allowed in terms of prayer clause (b) to (e)
which read as under:
(b) That pending the hearing and final disposal of the
suit the respondents by themselves, through their
Directors, agents, servants, stockiest, dealers and/or
distributors, partners, exporters, assignees or
otherwise be restrained by an order of temporary
injunction of this Court from using in any manner
whatsoever any of the drawings as shown in Exhibit I
to the plaint and/or any other drawings which are
deceptively/ confusingly similar to the applicants
drawings as shown in Exhibits D to D-3 to the plaint, so
as to infringe applicants' copyright in the artistic work
of engineering drawings as shown in Exhibits D to D-3
to the plaint.
(c) That pending the hearing and final disposal of the
suit the respondents by themselves, through their
Directors, agents, servants, stockiest, dealers and/or
distributors, partners, exporters, assignees or
otherwise be restrained by an order of temporary
injunction of this Court from printing and/or
publishing the 'operating instruction/s' installation
and maintenance manual including spare parts list for
submersible dewatering pump for model SPG 53 M
being Exhibit K to the plaint or any other publication
either electronic or physical in any manner
whatsoever so as to infringe applicants' copyright in
the original literary and artistic work of 'operating
instructions', installations and maintenance manual
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including the spare parts list of submersible
dewatering pump bearing model G-504T being Exhibit
F to the plaint.
(d) That pending the hearing and final disposal of the
suit the respondents by themselves, through their
Directors, agents, servants, stockiest, dealers and/or
distributors, partners, exporters, assignees or
otherwise be restrained by an order of temporary
injunction of this Court from printing and publishing
the brochure as shown in Exhibit K-1 to the plaint or
any other publication either electronic or physical so
as to infringe applicants' copyright in the artistic and
literary work in the brochure being Exhibit C to the
plaint in any manner whatsoever.
(e) That pending the hearing and final disposal of the
suit the respondents by themselves, through their
Directors, agents, servants, stockiest, dealers and/or
distributors, partners, exporters, assignees or
otherwise be restrained by an order of temporary
injunction of this Court from disclosing and/or usin
gany engineering drawings for manufacturing and
marketing the respondents' products and/or products
of any other party so as to breach the confidentiality in
any manner whatsoever and/or so as to infringe the
applicants copyright in the artistic work of any of the
engineering drawings and /or any other work and/or
literary work or artistic work in any manner
whatsoever.
All concerned to act on production of a digitally signed copy of
this order.
(N.J.JAMADAR, J.)
47. At this stage, the learned counsel for the defendants seeks
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stay of four weeks to the execution and operation of this order.
48. Having regard to the nature of the infringement, the prayer
for stay for a period of four weeks does not merit acceptance.
However, to advance the cause of justice and to rule out the
possibility of prejudice, the execution and operation of this order is
stayed for a period of one week.
(N.J.JAMADAR, J.)
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