Delhi High Court
Ritika Private Limited vs Biba Apparels Private Limited on 23 March, 2016
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) No.182/2011
% 23rd March, 2016
RITIKA PRIVATE LIMITED ..... Plaintiff
Through: Ms.Tanvi Misra, Advocate.
versus
BIBA APPARELS PRIVATE LIMITED ..... Defendant
Through: Mr.Jayant K. Mehta, Mohd. Saeed
Hussain, Ms. Roopa Dayal and
Mr.Yash Karan Jain, Advocates.
CORAM:
HON'BLE MR. JUSTICE VALMIKI J.MEHTA
To be referred to the Reporter or not? Yes
VALMIKI J. MEHTA, J (ORAL)
IA No. 13045/2011 (under Order VII Rule 11 CPC filed by the
defendant) & CS (OS) No.182/2011
1. Though this application is titled under Order VII Rule 11 of the
Code of Civil Procedure, 1908 (CPC), counsel for the defendant states that
this application actually is under Order XII Rule 6 CPC for dismissing the
suit on the admitted facts and legal position, and since the heading of the
CS(OS) No.182/2011 Page 1 of 37
application will not change the substance, the subject application be treated
as an application under Order XII Rule 6 CPC. Ordered accordingly.
2. Plaintiff has filed the present suit claiming copyright in various
drawings and sketches which are created by the plaintiff for dresses being
sold under the trade name/brand RITU KUMAR. It is pleaded that the
drawings and sketches are distinctive, exclusive and identifiable with the
brand RITU KUMAR of the plaintiff and the brand enjoys goodwill and
reputation. It is pleaded that there is originality in the garment prints and
sketches created by the plaintiff for the dresses/garments. It is pleaded that
ensembles of the plaintiff are so designed that each component, such as
sleeves, front and back panels etc are delineated and are co-ordinated with
unique features. The plaintiff is stated to be maintaining digital records of the
creation of each drawing and print by giving it identification code and name
which is also shown in the invoices issued by the plaintiff. The claim of the
plaintiff with respect to its copyright work is set out in the form of process
adopted by the plaintiff as detailed in paras 10, 11 and 12 of the plaint and
which paras read as under:-
"10. The initial stage of the Plaintiff‟s creative process in
general may be summarized as follows:
CS(OS) No.182/2011 Page 2 of 37
(a) A drawing or sketch is created by Mrs.Ritu Kumar
and/or other designers employed by the Plaintiff. The same is
an original derivative artistic work.
(b) The drawing is put in digital form and completed on a
computer assigninig colours. The same is independently a
derivative artistic work.
These first stages result in the creation of independent artistic
works which can be enjoyed for their own sake or used for
various purposes including different garments.
11. The artistic works so created are then suitably adapted
for different garments and different partes of garment
ensembles, as described below. Each such variation is a further,
derivative work, which does not affect the Plaintiff‟s separate
rights in the original.
(a) Screems are prepared for each colour facilitationg an
initial printing ("swatching") to test the design on different
fabrics.
(b) The artisti work so created is then available for use in
connection with different products.
(c) Acording to requirement and market assessment, but
artistic work is then customized for use on different garments
with appropriate variations.
12. Further, in some cases embriodiery of an artistic
characher is done on each garment individually, by hand or
using a machine, by a skilled craftsman. Such garments are
works of artistic craftsmanship".
3. Plaintiff claims to be the first owner of the copyright in all the
products of the plaintiff‟s company created from the sketches, drawings,
designs etc.
4. Plaintiff also pleads violation of its trade secrets by the
defendant inasmuch as defendant is employing erstwhile employees of the
CS(OS) No.182/2011 Page 3 of 37
plaintiff. The said employees are Ms. Neelam Arora and Ms. Reshu Singbal.
It is stated that these employees are in know of the trade secrets of the
plaintiff‟s work and are revealing these trade secrets to the defendant. The
issue with respect to violation of trade secrets of the plaintiff by the
defendant is pleaded as per paras 16 and 17 of the plaint and these paras
read as under:
"16. Fashion products have a short life, and the Plaintiff‟s
business depends on the Plaintiff‟s knowledge and understanding
of trends and changing tastes, its corporate judgment under Mrs.
Ritu Kumar‟s creative leadership of what will meet with success
next season. There is a long gestation period for each product
during which the utmost confidentally has to be maintatined
within the Plaintiff‟s organization; surprise innovation is the
lifeblood of the Plainitff‟s business. Starting with the Plaintiff‟s
skilled market assessment, going through the technical creative
process described above, but also including the general
conceptualization of each collection of each outfit and of each
individual garment and accessory, there is thus a multiplicity of
creative inputs which cumulatively reflect the Plainitff‟s know
how and incorporate valuable trade secrets.
17. It is submitted that such confidentally is an inherent
feature of the industry, without which no fashion enterprise would
be viable. Though the confidentiality of the Plaintiff‟s trade
secrets does not depend on contractual agreements, the Plaintiff
nevertheless takes due care to ensure that its employees appreciate
their confidentiality obligations. The copies of employment
agreements filed in these proceedings contain the following
conditions which directly and indirectly ensure that confidentiality
and exclusivity of the employee‟s work for the Plaintiff....."
5. The subject suit is filed by the plaintiff claiming the relief of
injunction seeking restraint against the defendant from reproducing, printing,
CS(OS) No.182/2011 Page 4 of 37
publishing, distributing, selling, offering etc of prints or garments which are
colourable immitaion or substantial reproduction of the plaintiff‟s prints and
garments. Other related reliefs of injunctions and rendition of accounts are
also claimed against the defendant.
6. The issue urged on behalf of the defendant for seeking dismissal
of the suit is as per the provision of Section 15 (2) of the Indian Copyright
Act, 1957 and which provides that once a copyright in a design is applied to
an article by an industrial process for more than 50 times, ownership of the
copyright ceases because the copyright resulting in creation of the article is
capable of being registered under the Designs Act, 2000 but has not been
registered by the plaintiff. Section 15 of the Indian Copyright Act, 1957
reads as under:
"Section 15 of the Indian Copyright Act, 1957
15. Special provision regarding copyright in designs registered
or capable of being registered under the Designs Act, 2000 (16 of
2000). --
(1) Copyright shall not subsist under this Act in any design which is
registered under the Designs Act, 2000 (16 of 2000).
(2) Copyright in any design, which is capable of being registered
under the Designs Act, 2000 (16 of 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 licence,
by any other person."
CS(OS) No.182/2011 Page 5 of 37
7. It is also argued on behalf of the defendant that the paragraphs
of the plaint with respect to violation of trade secrets as alleged by the
plaintiff are no averments as required of a cause of action in law because not
only what are the specific trade secrets are not mentioned resulting in the fact
that a general order of alleged violation of unspecified trade secrets should
not be passed, but also that really the so called trade secrets are nothing but
the copyrights claimed by the plaintiff as applied to garments and dresses
and that once copyright does not subsist in the plaintiff because of Section
15(2) of the Indian Copyright Act, there does not arise the issue of any
violation of trade secrets as is falsely alleged by the plaintiff.
8. The only issue which is called for decision by this Court is that
once the copyrighted works of the plaintiff are applied for making of dresses,
and production of which dresses exceeds 50 in number, whether the plaintiff
does not lose out in ownership of the copyright works, inasmuch as, the
copyright works of the plaintiff are capable of being registered as designs
under the Designs Act, but the plaintiff has not secured registrations of the
sketeches, drawings, designs etc under the Designs Act.
9. I may at the outset note that it is not the case of the plaintiff in
the plaint that plaintiff has not created dresses out of its designs and sketches
CS(OS) No.182/2011 Page 6 of 37
only upto 50 times, and therefore, this Court proceeds on the basis that
designs and sketches have been applied by the plaintiff on the dresses
manufactured by the plaintiff and such dresses etc have exceeded 50 in
number. Even during the course of arguments, it has not been the case of the
plaintiff that the drawings, designs and sketches with respect to the garments
and dresses had not been applied by the plaintiff to the garments and dresses
only upto 50 times.
10. I may note that learned counsel for the plaintiff who argued the
case on behalf of the plaintiff had initially sought an adjournment as it was
stated that counsel for the plaintiff Sh. Pravin Anand who has to argue the
case had gone abroad, but, the counsel for the defendant has very
vehemently opposed the adjournment on the ground that adjournment cannot
be granted if a counsel chooses to go abroad once the specific date is fixed in
the presence of the counsels for both the parties including the counsel who
appeared on the last date when today‟s date was fixed. In view of the strong
opposition by the defendant to the adjournment, I have refused the
adjournment, more so because the issue which calls for decision is fully
covered by the ratio of a Division Bench judgment of this Court and which
binds this Court.
CS(OS) No.182/2011 Page 7 of 37
11. Besides referring to Section 15(2) of the Indian Copyright Act
for the purposes of the present decision, the definition of design under the
Designs Act, 2000 would also have to be seen alongwith Section 4 of the
Designs Act. Section 4 of the Designs Act is being referred to inasmuch as
some arguments were urged on behalf of the plaintiff by referring to Section
4. Sections 2 (d) and 4 of the Designs Act read as under:
"Section 2(d) of the Designs Act, 2000
2(d). "design" means only the features of shape, configuration,
pattern, ornament or composition of lines or colours 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);
"Section 4 of the Designs Act, 2000
4. Prohibition of registration of certain designs. --A design
which--
(a) is not new or original; or
(b) has been disclosed to the public anywhere in India or in any
other country by publication in tangible form or by use or in
any other way prior to the filing date, or where applicable, the
priority date of the application for registration; or
CS(OS) No.182/2011 Page 8 of 37
(c) is not significantly distinguishable from known designs or
combination of known designs; or
(d) comprises or contains scandalous or obscene matter, shall
not be registered"
12. The arguments which have been urged on behalf of the plaintiff
are as under:
(i) What is a subject matter of copyright continues to be a subject
matter of copyright in the exclusive ownership of the owner of the copyright
inspite of the copyright being used for manufacturing of an article for more
than 50 times inasmuch as the definition of design by its very language in its
last part excludes an artistic work which is the subject matter of a copyright
under Section 2(c) of the Indian Copyright Act and once copyright artistic
work is excluded from the definition of a design under the Designs Act,
Section 15(2) of the Indian Copyright Act does not come into play as the
precondition for application of Section 15(2) is that that the copyright work
is included as a design under Section 2(d) of the Designs Act. In other words
it is sought to be argued that copyright can continue to exist in a sketch or a
design of a dress, although the said sketch, drawing or design is capable of
being registered as a design inasmuch as the drawing, sketch or design which
is the subject matter of Section 2(c) of the Indian Copyright Act is not a
CS(OS) No.182/2011 Page 9 of 37
design because it is excluded from the definition of design by the last few
words and lines as found in the definition of design under the Designs Act. It
is, therefore, argued that non-registration under the Designs Act by the
plaintiff of its drawings, sketches or design with respect to its garments and
dresses will not extinguish the rights of the plaintiff to the copyrights
existing in the plaintiff in such works and the defendant is, therefore, liable
to be injuncted from infringing the copyrighted works of the plaintiff.
(ii) Whereas what is the subject matter of the copyright has to be
original in view of Section 13(1)(a) of the Indian Copyright Act, because the
language of Section 4 of the Designs Act prohibits the registration of a
design which is not new/original, consequently, an existing copyrighted
artistic work under Section 2(c) of the Indian Copyright Act cannot be the
subject matter of registration of design under the Designs Act being excluded
from the registration as a design under the Designs Act, thus resulting in
inapplicability of Section 15(2) of the Indian Copyright Act. It is argued that
a copyright work has to be original whereas a design need not be original or
novel and, therefore, this Court should protect original artistic work which is
the subject matter of copyright under Section 2(c) of the Indian Copyright
Act.
CS(OS) No.182/2011 Page 10 of 37
13. Reliance is placed upon the two judgments of Hon‟ble Division
Benches of this Court in the cases of Midas Hygiene Industries Pvt. Ltd.
Vs. Sudhir Bhatia, 225 (2015) DLT 178 (DB) and Rajesh Masrani Vs.
Tahiliani Design Pvt. Ltd., 2009 (39) PTC 21 (Del.) and it is argued that
these judgments lay down the ratios which support the plaintiff that
copyrighted works even if not registered as a design under the Designs Act,
though capable of being registered as a design, copyrighted artistic works
will continue to have protection as copyrights under the Indian Copyright
Act.
14. Ordinarily, the issues which are raised on behalf of the plaintiff
would have called for detailed discussion and analysis of various sections of
the Indian Copyright Act and the Designs Act alongwith the arguments of
the plaintiff, however, this Court need not venture on the same as the issue to
be decided in this case is clearly and completely covered against the plaintiff
by a judgement of a Division Bench of this Court in the case of Microfibres
Inc. Vs. Girdhar & Co. & Anr. 2009 (40) PTC 519 (Del): 2009 SCC Online
Del 1647. The very arguments which are urged on behalf of the plaintiff of
contending that copyright in a drawing or a sketch will continue even if the
same is not registered as a design and an article is produced on the basis of
CS(OS) No.182/2011 Page 11 of 37
the drawing, sketch or design for more than 50 times by an industrial process
or means, has been squarely dealt with against the plaintiff in terms of the
following paragraphs of the judgment in Microfibre's case (supra). Though
the paragraphs are many, I have no option but to reproduce them as all of
them pertain to the ratio laid down in Microfibre's case (supra). These para
nos.20 to 33 and 35 to 46 are reproduced below:-
"20. After taking into account the above pleas, we are of the view that
Section 2(c) of the Copyright Act defines 'artistic work' to mean a
painting, sculpture, a drawing (including a diagram, map, chart or
plan), and engraving or photograph, whether or not any such work
possesses artistic quality. It also includes a work of architecture and
any other artistic craftsmanship. This definition 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.
21. The rights to which a holder of an original artistic work is entitled
are enumerated in Section 14(c) of the Copyright act. These are, the
right:
(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)
22. Therefore, it is the exclusive right of the holder of a Copyright in
an original artistic work to reproduce the work in any material form.
CS(OS) No.182/2011 Page 12 of 37
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.
When the copyright holder of an original artistic work reproduces the
same in another material form, he may, or may not do so by
employing an industrial process or means which may be manual,
mechanical or chemical, separate or combined, on an article. If the
reproduction of the original artistic work is done by employing an
industrial process, as aforesaid, on an article, and the same results in a
finished article which appeals to the eye as adjudged solely by the
eye, then the features of shape, configuration, pattern, ornament or
composition of lines or colours applied to the article by the industrial
process constitutes a 'design' , within the meaning of this expression
as defined under the Designs Act.
23. There is, therefore, a clear distinction between an original artistic
work, and the design derived from it for industrial application on an
article. This position is clarified by the use of the expression 'only'
before the words 'the features of shape, configuration, pattern,
ornament or composition of lines or colours' in the definition of
'design' in the Designs Act. Therefore, the original artistic work,
which may have inspired the creation of a design, is not merely the
feature of shape, configuration, pattern, ornament or composition of
lines or colours which are created to apply to an article by an
industrial process. The original artistic work is something different
from the design. Secondly, the definition of 'design' expressly
excludes, inter alia, any artistic work defined in Section 2(c) of the
Copyright act, 1957.
24. It needs to be emphasized that it is not necessary that in every
case a design has to be preceded by an artistic work upon which it is
founded. A craftsman may create a design without first creating a
basic artistic work. This may best be illustrated by a weaver who may
straightaway create a design while weaving a shawl, which product
could be created even without the basic artistic work.
25. Whether or not a design is preceded by an original artistic work, a
design would, in its own right qualify to be termed as an artistic work
within the meaning of Section 2(c) of the Copyright Act. This is so
because the expression „artistic work‟ as defined in Section 2(c) of
the Copyright Act bears a wide definition to mean 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. However, the design may or may not enjoy a
CS(OS) No.182/2011 Page 13 of 37
copyright protection under the Copyright Act, depending on whether
it is an „original artistic work‟ or not.
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 entitled to protection
under the Designs Act.
27. Under the Designs Act, a copyright has a different connotation
from a copyright under the Copyright Act. Under the Designs Act,
copyright means the exclusive right to apply the design to any article
in any class in which the design is registered.
28. The issue with regard to the extent of, and the conditions for the
copyright protection to such an artistic work, as an artistic work under
the Copyright Act, which is a design registered or capable of
registration under the Designs Act, is what is dealt with, by
Section 15 of the Copyright Act. Once the distinction between the
original artistic work and the design derived from it, and the
distinction between Copyright in an original artistic work under the
Copyright Act, and a copyright in a design under the Designs Act is
appreciated, the meaning and purport of Section 15 of the Copyright
Act becomes clear.
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
CS(OS) No.182/2011 Page 14 of 37
holder cannot claim protection or complain of copyright infringement
in respect of the registered Design under the Copyright Act.
30. Sub-section (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.
31. We are also of the view that it is not correct on behalf of the
appellant to urge that the intention of the creation of the work
determines the Intellectual Property Rights contained therein, and not
whether such work fell within the classification of 'Designs' under the
Designs Act or the Copyright Act. The Designs Act nowhere
stipulates the intention of the creator of the work as a determinative
criteria and the exhaustive definition given not only in the Designs
Act but indeed the Copyright Act clearly rules out such interpretation
as suggested by Shri Raju Ramachandran. In fact, the appropriate
occasion to evaluate the registrability of a design would arise when
the artistic work is translated into an object having features of shapes,
configuration, pattern, ornament or composition of lines or colors
whether two dimensional or three dimensional by employing an
industrial process. Significantly, the appellant themselves have
registered their product under the Designs Act in U.K. Furthermore,
as submitted by the appellant, even if there is very little variation
between the original artistic work and the design which is industrially
applied to an article to produce a product, nevertheless, such a design
can claim registration under the Designs Act, provided such
registration was sought. The interpretation suggested by the
CS(OS) No.182/2011 Page 15 of 37
appellant would clearly afford not only the design protection in
case of registered works but also in addition, the copyright
protection to the works which were industrially produced, which
interpretation does not reflect the legislative intent.
32. 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 period of protection to design activity
commercial in nature. The period of copyright would be the author„ s
life span plus 60 years. However, the legislature has allocated a lesser
time span for the protection available to a registered design as only
being 15 years. Thus, commerce and art have been treated differently
by the Legislature and any activity which is commercial in nature has
been granted lesser period of protection. On the other hand, pure
artistic works per se have been granted a longer protection.
33. The Statement of Objects and Reasons of the Designs Act, 2000
reads as follows:
"Since the enactment of the Designs Act, 1911 considerable
progress has been made in the field of science and technology.
The legal system of the protection of industrial designs requires
to be made more efficient in order to ensure effective
protection to registered designs. It is also required to promote
design activity in order to promote the design element in an
article of production. The proposed Designs Bill is essentially
aimed to balance these interests. It is also intended to ensure
that the law does not unnecessarily extent protection beyond
what is necessary to create the required incentive for design
activity while removing impediments to the free use of
available designs."
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.
xxxxx
35. However, there can be no quarrel with the plea of Shri
Ramachandran that the operation of Section 15(2) of the Copyright
Act does not exclude from the ambit of Copyright protection either
the original 'artistic work' upon which the design is based or the
design which by itself is an artistic work. It cannot be disputed that
the original paintings/artistic works which may be used to industrially
produce the designed article would continue to fall within the
CS(OS) No.182/2011 Page 16 of 37
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. This is also evident from the definition of the
design under Section 2(d) of the Designs Act. This, in our view, in
fact is a factor which would go against the appellants in construing
the nature of protection to be given to the original artistic work such
as a painting, as contrasted with the applied artistic work that is the
design, which in the present case does not mean the intermediary
medium such as a mould, engraving devised/produced only to enable
industrial application of the painting to produce the furnishing
products of the appellant. Thus, while the original painting would
indeed be entitled to the copyright protection, the
commercial/industrial manifestation of such paintings such as the
design derived from and founded upon the original painting for the
purpose of industrial production of furnishings would only be covered
by the limitations placed in Section 15 of the Copyright Act and
would get protection if registered as a design under the Designs Act
but would enjoy lesser period of protection in case of a registered
design.
36. This clearly shows that the legislature intended that even if the
artistic work such as a painting has been used as the basis for
designing an industrially produced object for commerce, such as the
furnishing in the present case, nevertheless the original painting
would indeed enjoy full copyright protection, while the result of the
industrial application of such painting, namely, the design used in the
industrial production of the ultimate product shall enjoy lesser period
of protection as stipulated under the Designs Act provided it is
registered as a design under the Designs Act. Thus, we are of the
view that an original artistic work initially acquires protection under
the Copyright Act as an „artistic work‟ or else the protection under
the Designs Act qua the product created from the artistic work when
industrially applied.
37. Dr. Abhishek Manu Singhvi, the learned Senior Counsel
appearing for the respondent in FAO (OS) No. 447/2008 had
submitted, and in our view rightly so that the object of the two
legislations was to prevent long term usage by the person who was
commercially exploiting something and yet wanting to claim an
exclusive monopoly through longer period of copyright protection
afforded to an artistic work. Section 15 of the Copyright Act
demonstrates the legislative intention of integrating the Copyright and
Designs Acts and any other interpretation would, as rightly submitted
by Dr. Singhvi, render the registration under the Designs Act as
meaningless as a design proponent will always get a longer period of
copyright protection under the Copyright Act. In our view, the above
plea would make a registration under the Designs Act meaningless,
which the legislature could have never intended. In fact, the plea of
Dr. Singhvi that a design which has been granted the protection under
the Designs Act cannot be granted protection under the Copyright Act
is correct and this is evident from Section 15(1) of the Act.
38. Thus, while it is not open to the respondent to reproduce such
paintings per se, which formed the basis of the design that was
applied to the fabric, nevertheless, such protection qua the design
imprinted on the product through industrial application is available
only under the Designs Act, provided there is a registration. 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. This clearly indicates that the legislature intended to
provide industrial and commercial application of an artistic work for
commerce lesser protection.
39. Shri Arun Jaitley, the learned Senior Counsel appearing for the
appellant in FAO (OS) No. 326/2007 titled as Dart Industries Inc.
and Anr. v. Techno Plast and Ors. had only made submissions in the
present appeal in respect of Section 15 of the Copyright Act to the
extent it could affect the appeal filed by his clients. He had advanced
a very attractive argument as to the three stages of processes leading
to the eventual designed product. He submitted that the first stage is
of the preparation of drawing or artistic work which leads to the
production of mould/engraving which is the second stage and such
mould/engraving leads to the final commercially marketable product,
which is the third stage. He has also submitted that the products of the
respondent were made by the process of reverse engineering starting
from the final product leading to the second stage of creating a
moulding, and from it a final drawing. His plea was based upon the
premises that the mould and the drawing of the appellant are
copyright protectable under the Copyright Act and cannot be or are
incapable of forming part of the design registration regime. It is
submitted that the product of the respondent involves the copying of
the mould/drawing of the appellant.
40. While the argument is very attractive but nevertheless it is not
legally sustainable because such a plea would enlarge the monopoly
in industrial design from the current maximum time of 15 years to the
longer period available under the Copyright Act. While the original
drawings of the appellant could be entitled to copyright protection
under the Copyright Act as artistic works, the designs derived
therefrom as moulds which are used for industrial application of the
design on the articles would not qualify for protection as artistic
works under the Copyright Act except in accordance with
Section 15(2) of the Copyright Act. It is not the case of the appellant
Microfibres or even that of Mr. Jaitley„ s clients that the design
applied on the fabric (in the case of Microfibres) or the plastic (in the
case of Mattel Inc.) has not been applied for more than 50 times.
There designs have been used more than 50 times. The learned Single
Judge in paragraph 51 of the impugned judgment held as follows:
"The plea of the plaintiff is also sought to be negated on the
issue of definition of a „design‟ under Section 2(d) of the
Designs Act, 2000 whereby an „artistic work‟ as defined in
Clause (c) of Section 2 of the Copyright Act has been
specifically excluded. The submission was, thus, advanced that
this would have the effect of rendering the law of designs
redundant for the simple reason that each design registered
thereunder would be able to trace its origin to a diagram, chart,
drawing, etc. and, thus, cease to be governed by the Designs
Act. The legislative intent could not have been this because the
law of designs is based on the same principle as applicable to
other monopolies and to fuel industrial innovativeness by
granting limited time-limit to the monopolies and allow others
to make use of them after they have passed into the public
domain. Thus, the plea of the plaintiff, if accepted, would be
anti-competitive and would throttle and stagnate the industry.
(Emphasis supplied)"
In our view the learned Single Judge has felicitously summed up the
legislative intent that limited monopoly should be granted to fuel
industrial inventiveness in the field of commerce. We fully approve
and reiterate the aforesaid view.
41. As rightly submitted by Shri Rajender Kumar, the learned
Counsel for the respondent No. 2 in the present appeal, the
interpretations canvassed by the appellant would, render the
design legislation otiose, because every registered design would
then be able to trace its origin to a chart, drawing, diagram etc.
and consequently also claim copyright protection under the
Copyright Act in addition to the protection as a registered design
under the Designs Act.
42. Shri Prashanto Chandra Sen, the learned Counsel appearing on
behalf of the respondent No. 1, contended that the difference between
a design and an artistic work lies in the applicability of the former to
an article as evident from the decision in Con Planck Ltd. case 1923
KB 804, wherein it was held that the fundamental distinction between
a design and a simple artistic work lies in the applicability of the
former to some other article. In our view, the interpretation suggested
by Shri Jaitley would result in every industrial tracing, drawing or
mould which may not be an original artistic work within the meaning
of Section 2(c) read with Section 13 of the Copyright Act, and which
lead to the designed product, being afforded protection under the
Copyright Act as an original artistic work and also being at the same
time industrially and commercially exploitable by being applied to
marketable articles by claiming protection under the Designs Act,
2000.
In the case of Interlego (1988) RPC 343, the following position of
law was laid down:
"The definition of „design‟ in Section 1(3) of the Act of 1949 is
hardly a model of Parliamentary draughtsmanship and this is by
no means the first case in which its meaning and application
have been called in question. In approaching the question of
construction there has to be borne in mind that the purpose of the
Act, as appears both from its terms and its legislative history, is
to protect novel designs devised to be „applied to‟ (or, in other
words, to govern the shape and construction of) particular
articles to be manufactured and marketed commercially. It is not
to protect principles of operation or inventions which, if
protected at all, ought to be made the subject-matter of a patent.
Nor is it to prevent the copying of the direct product of original
artistic effort in producing a drawing. Indeed the whole purpose
of a design is that it shall not stand on its own as an artistic work
but shall be copied by embodiment in a commercially produced
artifact. Thus, the primary concern is what the finished article is
to look like and not with what it does and the monopoly provided
for the proprietor is effected by according not, as in the case of
ordinary copyright, a right to prevent direct reproduction of the
image registered as the design but the right, over a much more
limited period, to prevent the manufacture and sale of articles of
a design not substantially different from the registered design.
The emphasis therefore is upon the visual image conveyed by the
manufactured article."
Thus, in the case of Pugh v. Riley 1912 RPC 196 the general
principle was laid down that any application for registration must be
accompanied by a representation of the design which ought to be in
the nature of a drawing or a tracing, by means of which the
suggestion constituting the design may be imparted to others. A
person looking at the drawing must be able to form a mental picture
of the shape, configuration, pattern or ornament of the article to
which the design has been applied. Further, in the case of Interlego
(supra) it was laid down that the purpose of design is not to protect
the principles of operations or inventions which, if protected at all,
must be made the subject matter of the patent. This process of
operation or invention such as a moulding/engraving could at best be
granted patent protection and thus, Mr. Jaitley„ s plea that such
intermediary process be granted copyright protection cannot be
accepted. Thus, what is granted is a right, over a lesser period, to
prevent the manufacture and sale of articles of a design not
substantially different from those industrially produced by the
application of the registered design. The emphasis therefore, is upon
the visual image conveyed by the manufactured article and thus the
above judgment of Interlego (supra) also supports the case of the
respondent, that the intermediary process of creation of a design from
an original artistic work cannot be afforded protection under the
Copyright Act if it crosses the lakshman rekha of having been applied
more than 50 times industrially to produce an article.
43. Undoubtedly, it is true as contended by Shri Jaitley that the
artistic work defined under Section 2(c) of the Copyright Act need
not possess artistic quality. His plea about the copyright protection
available to moulding/engraving/drawing is postulated on the above
premise. Nevertheless, we cannot lose sight of the fact that the
design, based upon a moulding or an engraving derived from the
original artistic work, which is used for industrial application on an
article and which evolves during any process intermediate to the
reproduction of the finally designed article, would not qualify as an
artistic work. The case of Dover LD (supra) clearly requires the
exercise of intellectual activity so as to originate some novel
application and thus, this principle cannot be applied to a mould, or
an engraving i.e. the intermediates which are mere derivatives of the
original artistic work. In the case of Pugh v. Riley (supra) also it was
held that a design is preceded by a drawing or tracing which
incorporates the design to be imparted to produce the designed article
and upon being applied to an article become incapable of being
registered as a design.
Thus, the interpretation as suggested by the appellant would have the
effect of rendering the design legislation in India redundant as every
design could have its origin to an intermediate product such as a
engraving, mould, diagram etc. It is also anti-competitive and
stagnates innovativeness beside in effect negating the legislative
intent of giving lesser protection of 15 years to a „design‟ under the
Designs Act as compared to the larger protection of 60 years to an
„artistic work‟ under the Copyright Act.
44. We cannot accede to the plea of Shri Sanjay Jain that the intention
of creating an artistic work would determine as to which enactment
applies. The artist‟s intent at the time of creation of the artistic work
is indecipherable at the best of times. Artists are governed more often
than not by their emotions and moods and whatever be the intention
at the time of the creation of the artistic work cannot, in our view,
determine the nature of protection available to the artistic work.
Indeed such a plea of Shri Ramachandran has already been rejected
by us, as the stupendous and commercial success of a particular
artistic work may spur on the artist to permit commercial utilization
and exploitation of such a work of Article To this extent, we agree
with Mr. Praveen Anand that an intention of creation is difficult to
ascertain and cannot form the basis of determining the rights. Thus,
even if the original painting was intended to be created only as a work
of art, a latter intention may transform it by its industrial application
into a commercially viable object. To this extent, we agree with the
plea of Shri Sanjay Jain that once the artistic work, by industrial
application transforms into a commercially marketable artifact its
design falls within the domain of the Designs Act and the protection
to the design founded upon the artistic work is limited by
Section 15 of the Copyright Act and the provisions of 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 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 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."
(emphasis added by me).
15. The underlined and emphasised portions of the above
paragraphs leave no manner of doubt that it has been held by the Hon‟ble
Division Bench of this Court, and which is binding upon this Court, that
once a drawing, a sketch or a design is used for creation of dresses, then,
once the dresses cross 50 numbers, no copyright can subsist in the drawing
and sketch under the Indian Copyright Act because of the language of
Section 15(2) of the Indian Copyright Act. The Hon‟ble Division Bench of
this Court in Microfibre's case (supra) has noted that the legistature
intended to give lesser period of protection to a copyright when from the
copyright a design is created which is applied for commercial purposes. The
Hon‟ble Division Bench has also clearly observed that if the interpretation as
is sought to be urged by the plaintiff in this case, and which was also urged
on behalf of the plaintiff in that case is accepted, then registrations of designs
would be rendered meaningless (vide paras 37 & 41). The Division Bench in
para 42 of its judgment has also observed that the interpretation as is
canvassed on behalf of the plaintiff in the present case, and which is also
canvassed in that case of entitlement of protection under the Indian
Copyright Act even if the design is not registered under the Designs Act,
would lead to a design under the Designs Act being given protection of
copyright even under the Indian Copyright Act as an original artistic work
resulting in rights being enforced simultaneously under the Indian Copyright
Act and the Designs Act which was not the intention of the legislature. In
para 43 of the judgment, the Division Bench has clearly observed that an
interpretation to give protection under the Indian Copyright Act although the
drawing, sketch or design is to be registered under the Designs Act would
result in the Designs Act being redundant because every design for its origin
would have an intermediate product such as engraving or mould or diagram.
The same aspect is reiterated in para 45 of the judgment in Microfibre's case
(supra) clearly holding that if the design is not registered under the Designs
Act, the design will lose its copyright protection under the Indian Copyright
Act and the copyright will subsist only till the threshold limit of application
of a copyright to an article by an industrial process is upto 50 times in
number and once that limit is crossed, the design loses protection as a
copyrighted work under the Indian Copyright Act. This is finally so stated in
para 46 (i) of the judgment by observing that the interpretation given in the
Microfibre's case (supra) would harmonize the Indian Copyright Act and
the Designs Act in accordance with the legislative intent.
16. In view of the categorical ratio in Microfibre's case (supra), it
is not permissible for the plaintiff to reargue the case noting that the same
counsel who appears for the plaintiff in the present case had unsuccessfully
argued the same aspects before the Division Bench in Microfibre's case
(supra).
17. Reliance placed by the plaintiff upon the judgment in the case
of Midas Hygiene Industries Pvt. Ltd.(supra) is clearly misconceived as the
judgment in the case of Midas Hygiene Industries Pvt. Ltd. (supra) dealt
with the application of a copyright work to a carton or a packaging and
accordingly observations were made. Midas Hygiene Industries Pvt. Ltd.
(supra) was not a case of application of a copyright work by creating an
article more than 50 times by an industrial process or means. For the sake of
completeness let me refer to para 25 of this judgment in the case of Midas
Hygiene Industries Pvt. Ltd. (supra) which is being relied upon by the
plaintiff and which para 25 reads as under:
"25. The label is clearly both a trademark, as it indicates the brand and
the origin (i.e. the manufacturer or producer) as well as a copyright, as
it contains a combination of colours and stylized lettering, set in red
colour, with the image of a cockroach. The expression "LAXMAN
REKHA" and the other one, "KRAZY LINES" are at least in
combination with the colour scheme and get up, trade-marks; hence
they are labels and clearly excluded from the definition of "designs".
Furthermore, the respondent nowhere asserts that there are novel or
new elements in the shape or configuration of the packaging which
deserve design protection. By virtue of Section 4 (c) design registration
is refused if the work is "not significantly distinguishable from known
designs or combination of known designs..." It is not shown how the
packaging or label upon it, in this case is so unique or novel as to
distinguish it from known designs. The object of the Designs Act is to
confer protection to novel and unique designs. If every object based
upon some drawing were afforded design registration, soon, objects of
common utility- vessels, containers, furniture items, etc. could not be
replicated. Therefore, it is held that apart from the fact that the work in
the present case was copyrighted as an artistic work and thus stood
excluded from the definition of design- as well as the fact that it was a
trademark label, it is also held that it cannot also qualify for design
registration- the sole condition for operation of Section 15 (2). The
respondent had urged that the artistic work does not qualify for
registration because it is not original or creative. However, there is no
discussion on the issue by the Board."
18. I do not find anything in para 25 in Midas Hygiene Industries
Pvt. Ltd.'s case (supra) to support the arguments urged on behalf of the
plaintiff in the present case of a protection under the Indian Copyright Act to
continue although the copyright is capable of being registered as a design
under the Designs Act but not registered and the copyrighted drawings,
sketches or designs having applied to produce an article more than 50 times
in number by an industrial process or means.
19. It is very relevant to note that the observations which are made
by a court in a judgment have necessarily to be related to the facts of the case
and the ratio of a case cannot be dehors the facts of the case as held by the
Constitution Bench judgment of the Supreme Court in the case of Padma
Sundara Rao (Dead) and Others Vs. State of T.N. and Others, (2002) 3
SCC 533. Para 9 of this judgment is relevant and which reads as under:-
"9. Courts should not place reliance on decisions without
discussion as to how the factual situation fits in with the fact
situation of the decision on which reliance is placed. There is
always peril in treating the words of a speech or judgment as
though they are words in a legislative enactment, and it is to be
remembered that judicial utterances are made in the setting of
the facts of a particular case, said Lord Morris in Herrington v.
British Railways, Board. Circumstantial flexibility, one
additional or different fact may make a world of difference
between conclusions in two cases."
(underlining added)
20. Therefore, observations made by the Division Bench in the case
of Midas Hygiene Industries Pvt. Ltd. (supra) were in the facts of that case
of applying copyright work as it is to a carton or a packaging, and such
observations therefore cannot be read with respect to copyright continuting
to exist although from the copyrighted work articles are manufactured by an
industrial process or means more than 50 times in number.
21. The judgment in the case of Rajesh Masrani (supra) is also not
applicable for the same reason that the facts of the said case were different
and again the ratio of the Constitution Bench case in Padma Sundara Rao
(Dead) and Others (supra) is reitereated that the issue of interpretation of
Section 15(2) of the Indian Copyright Act never came up in Rajesh
Masrani's case (supra) as the admitted position in that case was that the
limit of 50 number of articles produced from the copyright work was not
crossed. The Division Bench in Rajesh Masrani's case (supra) in paras 27
and 28 distinguished the judgment of a learned Single Judge of this Court in
the case of Micro Fibre Inc Vs. Girdhar & Co., 2006 (32) PTC 157, and
which ultimately went up in appeal and was decided by the Division Bench
in Microfibre's case (supra) of 2009. These paras 27 and 28 of the Division
Bench in Rajesh Masrani's case (supra) distinguish the observations of the
said case from the issue in the case before the Division Bench in
Microfibre's case (supra) (and in this case), and these paras 27 and 28 of
Rajesh Masrani's case (supra) read as under:
"27. We may mention that in support of his plea, the learned Counsel for
the Defendant has strongly relied upon the judgment of this court in the
case of Micro Fibre Inc v. Girdhar and Co. 2006 (32) PTC 157. He
referred various paras of the said judgment, particularly Paras 62 and 72
said judgments which are reproduced as under:
"62. In order for the work of the plaintiff to qualify as an
'artistic work', it must fall within the definition of Sub-
section (c) of Section 2 of the Copyright Act. A reading of
the said provision would show that attempt of the plaintiff
can only be to bring it within the concept of 'painting'. The
comparison with the painting of M.F. Hussain would be
otiose as the work in question, in the present case, is not a
piece of art by itself in the form of a painting. There is no
doubt that labour has been put and there is some
innovativeness applied to put a particular configuration in
place. Such configuration is of the motifs and designs which
by themselves would not be original. The originality is being
claimed on the basis of the arrangement made. What cannot
be lost sight of is the very object with which such
arrangements or works had been made. The object is to put
them to industrial use. An industrial process has to be done
to apply the work or configuration to the textile. It is not
something which has to be framed and put on the wall or
would have any utility by itself. The two important aspects
are the object with which it is made (which is industrial) and
its inability to stand by itself as a piece of art. In fact, it has
no independent existence of itself.
72. The conspectus of the aforesaid shows that what the
plaintiff was actually required to do was to register the
designs which the plaintiff has failed to do. The designs are
older and, thus, would have been registrable under the
Designs Act of 1911. The plaintiff failed to register the
designs. Insofar as the Designs Act of 2000 is concerned, the
plaintiff has also admittedly not registered the designs under
the said Act. It has already been discussed above that these
designs were capable of registration under the earlier and the
current Designs Acts. In fact, the Registrar of Designs had
confirmed vide letter dated 19.07.2002 that the fabric
designs continued to be registered under the Designs Act of
2000. The plaintiff had even initiated criminal proceedings
where certain reports were filed by the investigative agency
saying that the offences were really under the Designs Act
and not under the Copyright Act. However, it is not
necessary to dwell greater in respect of that matter. It would
suffice to say that the patterns and designs of the plaintiff
were capable of registration both under the old Act and the
new Act and the plaintiff failed to do so with the result that
the protection is not available to the plaintiff which would
have arisen if they had been so registered. The said issues
are answered accordingly."
28. The above said case, in our view, is on an entirely different footing
from the present case for the following reasons:
a) In the present case, as per the pleadings, the work in question
has not been reproduced more than 50 times by an industrial
process by the plaintiff. In the case of Micro Fibre (supra),
the court has specifically noticed and highlighted in Para 62
of the said judgment, the fact that the intent of creating the
design in question was to put them into industrial use and the
production of the said work had occurred more than 50 times
as mentioned in Para 73 of the said judgment.
b) The court has also noticed in Para 47 of the said judgment that
the subject matter of the work in dispute are floral design
which are applied upon fabric used for upholstery through the
industrial process and the plaintiff has registered the subject
matter of the work of design in United Kingdom and the said
certificates of registration have also been placed on record.
c) In Para 72 of the judgment, it was further held that the plaintiff
failed to register the designs which were capable of being
registered under the Designs Act, therefore, the protection of
copyright in the design was not available to the plaintiff.
In the present case all the above said aspects are absent and, therefore,
the said judgment is not applicable to the facts and circumstances of the
present case. Moreover as we have already come to the conclusion that
the subject matter comes under Section 2(c) of the Copyright Act, this
judgment does not help the case of the appellant."
22. Learned counsel for the plaintiff placed strong reliance upon
para 26 of the judgment in Rajesh Masrani's case (supra) in support of the
plaintiff‟s arguments and this para 26 reads as under:
"26. We are, therefore, of the opinion that the plaintiffs' work is entitled
for protection under Section 2(c) of the Copyright Act and is an original
artistic work. Since the work is an 'artistic work' which is not covered
under Section 2(d) of the Designs Act, 2000, it is not capable of being
registered under the Designs Act and the provision of Section 15(2) is
not applicable."
23. The aforesaid para 26 of the judgment in Rajesh Masrani's case
(supra) holds and proceeds on the basis that the copyright work which is the
subject matter of the Indian Copyright Act being an artistic work is not
covered under the Designs Act because it is not capable of being registered
under the Designs Act resulting in Section 15(2) of the Indian Copyright Act
being not applicable. It is however noted that these observations were made
in the facts of that case which are different from the facts in Microfibre's
case (supra) and which points of distinction have been stated by the Division
Bench itself in Rajesh Masrani's case (supra) in para 28 which has been
reproduced above. Plaintiff cannot therefore derive any benefit of para 26 of
the judgment in Rajesh Masrani's case (supra).
24(i) At this stage, I would like to refer to the argument urged on
behalf of the plaintiff that copyright work is excluded by the definition of
designs and therefore once a copyright cannot be registered as a design by
virtue of definition of design under the Designs Act, hence, the copyright
will have an independent protection than the subject matter of design under
the Designs Act. What is essentially sought to be argued is that since a
copyright artistic work is excluded from the definition of a design, therefore,
a copyright work does not fall within the scope of the design and hence does
not fall within the scope of Section 15(2) of the Indian Copyright Act.
(ii) This argument urged on behalf of the plaintiff is misconceived
for the reason that Section 15 (2) of the Indian Copyright Act uses the
expression "capable of being registered" i.e it is capable though not actually
so registrable as a design because of the definition of design under the
Designs Act excluding copyrighted artistic work. Legislature has
consciously used the words "capable of being registered" meaning thereby
the possibility of a copyrighted sketch or drawing or artistic work being also
capable of being registered as a design though excluded from the definition
of design. The legislature deliberatly used the word capable in Section 15(2)
of the Indian Copyright Act. Therefore, it is not necessary that a drawing or
a sketch or a design must fall within the definition of design under the
Designs Act and only then can it be said that it will fall under Section 15(2)
of the Indian Copyright Act, inasmuch as, such an argument orverlooks the
expression "capable of being registered" deliberately so used under Section
15(2) of the Indian Copyright Act.
25. Finally, I would like to note that counsel for the plaintiff sought
to argue that there are judgments of foreign courts and there are judgments of
other High Courts which take different views than the view taken in
Microfibre's case (supra), however, there is no need for me even to refer to
such judgments, inasmuch as, I am bound by the ratio given by the Division
Bench of this Court and I cannot decide a case in violation of a ratio of the
judgment of the Division Bench of this Court. Thus, arguments accordingly
sought to be urged cannot be raised before this Court and can only be raised
before a Bench larger than the Division Bench of this Court inasmuch as
decision in Microfibre's case (supra) is a decision of a Division Bench of
this Court.
26. Lastly, I may note that in the facts of the present case it is not as
if the copyright work in itself is reprinted so to say on the dresses which are
created by the defendant. If the facts were that from the copyrighted works
of the plaintiff prints were created and such prints which have protection
under the copyright work are as it is lifted and printed upon the dresses of the
defendant, may be in such a case without saying so finally on this aspect, an
issue of violation of the copyright of the work of the plaintifff under Indian
Copyright Act may have arisen. However, in the facts of the present case the
defendant is creating dresses or creating articles by an industrial means and
process by application of the design or drawing or sketch and the defendant
is not as it is affixing a print taken from the copyrighted work of the plaintiff
as a print on a dress created by the defendant. Issue in the present case
therefore will not be a violation of a copyright of the plaintiff under the
Indian Copyright Act.
27. So far as the issue of violation of trade secrets is concerned, it is
noted that firstly paras 16 and 17 of the plaint are far too general to make out
such a case and for passing an order as to so called trade secrets which are
being not specifically talked of and pleaded by the plaintiff. If an injunction
order is sought with respect to trade secrets then such specific trade secrets
have to be mentioned and as to how those trade secrets are in the ownership
of the plaintiff, and only thereafter the court can consider the grant of any
injunction order on the basis of specified trade secrets and it cannot be that a
general order can be passed that there is presumed to be a trade secret of the
plaintiff and the defendant to be injuncted with respect to that unspecified
trade secret which is not described in the plaint, and with respect to which
thus no specific injunction order qua specific trade secret can be passed.
As a matter of abundant caution during the course of arguments
I put it to the counsel for the plaintiff as to what are the trade secrets which
the plaintiff has and to which counsel for the plaintiff argued that they are
the same sketches, drawings and designs in which copyright is claimed by
the plaintiff and which are taken away by the erstwhile employees of the
plaintiff and used by the defendant. Therefore really the issue once again is
nothing but of application of Section 15(2) of the Indian Copyright Act and
not with respect to any trade secret dehors the provisions of the Indian
Copyright Act and the Designs Act.
28. In view of the above, it is found that the present suit is barred by
Section 15(2) of the Indian Copyright Act read with the ratio of the Division
Bench of this Court in the case of Microfibres (supra), and therefore, the suit
is dismissed, leaving the parties to bear their own costs.
MARCH 23, 2016 VALMIKI J. MEHTA, J
neelam/godara
