Madras High Court
Mr.A.Ruthramoorthy vs Mr.P.Moorthy on 10 June, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2025:MHC:1338
OP(CR) No.1 of 2024
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 10.06.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR
RAMAMOORTHY
OP(CR) No.1 of 2024
1. Mr.A.Ruthramoorthy,
Trading as M/s.Bharani Engineering Work,
11, Rasathalvalasu, Muthur Post,
Kangayam Taluk, Tiruppur-638 105,
Tamil Nadu, India.
2. Mr.R.Logenthiran, Trading as
M/s.Bharani Engineering Work,
11, Rasathalvalasu, Muthur Post,
Kangayam Taluk, Tiruppur-638 105,
Tamil Nadu, India. ... Petitioners
-vs-
1. Mr.P.Moorthy,
233, Kannudaiyampalayam,
Ganapathypalayam, Erode-638 153,
Tamil Nadu.
2. The Registrar of Copyrights
Boudhik Sampada Bhawan, Plot No.32,
Sector 14, Dwarka, New Delhi-110 078, India. ... Respondents
Prayer: Original Petition (Copyright) filed for rectification of
Copyright from the Register under Section 50 of the Copyright Act,
1/26
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OP(CR) No.1 of 2024
1957 read with Rule 6 of the Madras High Court Intellectual property
Rights division Rules, 2022 prays to rectify/expunge the copyright,
“ARTISTIC WORK PHOTOGRAPH OF PUMP ASSEMBLY FOR AIR
COMPRESSOR” having Copyright registration No.A-146894/2023
registered in the name of the 1st Respondent, from the Copyrights
Register and pass further or other orders as the Hon'ble Court deems
fit considering the facts and circumstances of the case and thereby
render justice.
For Petitioners : M/s.G.Ramesh, N.Hansika, Alice Bibiana H.,
Subashini I.M, Advika M, Arivindh S.
For Respondents: M/s.G.K.Muthukumar, R.Praveen,
I.Arun Kumar for R1
Ms.R.Durgarani, CGSC for R2
ORDER
The first respondent applied for registration of copyright for an
artistic work titled “ARTISTIC WORK PHOTOGRAPH OF PUMP
ASSEMBLY FOR AIR COMPRESSOR” on 02.05.2023. The said
artistic work was registered under Registration No.A-146894/2023.
By this petition, the petitioners seek rectification/expunging the
registration of the said work from the Register of Copyrights.
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Counsel and their contentions
2. Mr.Ramesh Ganapathy, learned counsel for the petitioners,
submitted that the register of copyrights is liable to be rectified
insofar as it relates to the copyright of the first respondent in view of
Section 15 (1) of the Copyright Act, 1957 ('Copyright Act'). In this
connection, he refers to the certificate of registration dated
09.07.2020 in respect of Design No.325033-01, with effect from
26.12.2019.
3. By comparing the image of the article in respect of which the
design registration was granted with the work in respect of which the
copyright registration was granted, learned counsel submits that the
common article in both cases is the Pump Assembly for Air
Compressor. By referring to the relevant dates, learned counsel
emphasizes that the design registration was obtained with effect from
26.12.2019 whereas the copyright registration was obtained
subsequently with effect from 02.05.2023. According to learned
counsel, Section 15 (1) of the Copyright Act is intended to ensure that
copyright shall not subsist under the Copyright Act in respect of any
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design which is registered under the Designs Act, 2000 ('Designs
Act'). Learned counsel next referred to the examination report of the
Copyright Office dated 08.06.2023, wherein the same objection was
raised by the Copyright Office by pointing out that the work cannot be
registered as per Section 15 as it is already registered under the
Designs Act. He also referred to the first respondent's reply dated
06.07.2023 to the Examination Report and pointed out that the first
respondent misconstrued Section 15(1) in the said reply. He further
submitted that the first respondent also applied for and obtained a
patent in respect of the same article.
4. In support of the contention that copyright shall cease to
subsist in this situation, learned counsel relied on the judgment of the
Division Bench of the Delhi High Court in Kiran Shoes
Manufacturers v. Registrar of Copyrights and another 2012 (129)
DRJ 105 (DB) ('Kiran Shoes Manufacturers'), particularly paragraph
11 thereof. After pointing out that the Division Bench had followed an
earlier judgment in the case of Microfibres Inc. v. Girdhar & Co. and
another, 2009 SCC OnLine Del 1647 ('Microfibres'), learned counsel
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referred to the said earlier judgment. By drawing specific reference to
paragraphs 29 to 32 and 46 thereof, learned counsel submitted that
the interplay between the Copyright Act and the Designs Act was
analyzed therein and that the Court concluded that once the design is
created and registered under the Designs Act, whether or not the
design is exploited on a commercial scale, the design loses its
protection as an artistic work under the Copyright Act.
5. By applying the said principle to the case at hand, learned
counsel contends that the first respondent applied for and obtained
registration of the design for the Pump Assembly for Air Compressor
with effect from 26.12.2019. Consequently, by virtue of Section 15(1)
of the Copyright Act, he contends that the copyright in the work shall
cease to subsist. He next placed on record, the recent judgment of the
Hon'ble supreme Court in Cryogas Equipment Private Limited v.
Inox India Limited and Others, 2025 SCC OnLine SC 780 ('Cryogas
Equipment'), particularly paragraphs 55 to 61 thereof, to contend that
copyright protection would be extended to an artistic work which is
created prior to the creation of a derivative design therefrom. On the
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facts of that case, he submitted that the Hon'ble Supreme Court
recognised the copyright in the industrial drawings from which a
design was subsequently created. By contrast, he contends that the
design was created first in this case and that copyright registration for
the same article/work was obtained subsequently.
6. On the interpretation of Section 15 of the Copyright Act,
learned counsel also relied upon the judgment of the Division Bench
of this Court in Urooj Ahmed, Lords Enterprises (India) v. Preethi
Kitchen Applicances Pvt. Ltd. (DB), 2013 (6) CTC 247 (Urooj Ahmed)
, especially paragraphs 5(c)(ii) and 5(c)(iii). He pointed out that the
Division Bench held that Section 15 of the Copyright Act is a special
provision mandating that no copyright shall subsist in any design
which is registered under the Designs Act.
7. Mr.G.K.Muthukumar, learned counsel, responded to these
contentions. By referring to page 28 of typed set dated 19.11.2024,
learned counsel submitted that a Chinese manufacturer called D&R
Metal Industries had copied the petitioners' photograph and posted
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the same on its website. He submits that this was the reason behind
the decision to apply for registration of the copyright on 02.05.2023.
By referring to the reply of the first respondent to the examination
report of the Copyright Office, learned counsel submits that the first
respondent pointed out that the design cannot be considered as the
photograph/artistic work and that the original photograph cannot be
considered as the finished article, which can be judged solely by the
eye. By accepting the said explanation, learned counsel submits that
the Copyright Office proceeded to grant registration.
8. Since the artistic work in respect of which copyright
registration was obtained is not a design as per the Designs Act,
learned counsel submits that the present petition is liable to be
dismissed. He also placed reliance on the judgment of the Division
Bench of the Delhi High Court in Kiran Shoes Manufacturers, which
was relied on by learned counsel for the petitioners. He refuted the
contention that a patent was granted in respect of the same product
by submitting that the patent was granted for an invention titled
“BOREWELL FOOT VALVE FOR AIR COMPRESSOR”, which is in
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respect of a pump with a single water outlet in contrast to the pump
with dual water outlet forming the subject of design registration.
Discussion, analysis and conclusion
9. At the heart of this dispute is the interpretation of Section 15
of the Copyright Act. Section 15 is as under:
“15. Special Provision regarding copyright in
designs registered or capable of being
registered under the [***] [Designs Act,
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.” (emphasis added)
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10. On perusal of sub-section (1) of Section 15, it is clear that
copyright shall not subsist under the Copyright Act in any design
which is registered under the Designs Act. The phrases “under this
Act” and “in any design”, which have been emphasized in bold font
above are of special significance in construing the meaning of this
provision. The object appears to be to restrict the copyright in
registered designs to the term provided in the Designs Act and to
prevent assertion of copyright under both statutes.
11. Sub-section (2) of Section 15 applies to a design which is
capable of being registered under the Designs Act, but is not so
registered. As regards such designs, sub-section (2) provides that the
copyright shall cease to exist as soon as the 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 a licensee. Once
again, the phrase “in any design” finds place therein. Interestingly,
the phrase “under this Act” is not found in sub-section (2) probably
because copyright does not subsist in an unregistered design under
the Designs Act, thereby ruling out the option of asserting copyright
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under both statutes. The problem of the author of a work, which is
also a design, commercially exploiting the design but not applying for
registration under the Designs Act and, consequently, circumventing
sub-section (1) of Section 15 still had to be resolved. If sub-section (2)
were not in the statute, in that context, it would have been possible
for the author to commercially exploit the design while asserting
copyright and the remedies available under the Copyright Act for the
much longer duration specified in the Copyright Act. With a view to
prevent that form of abuse, sub-section (2) provides for a commercial
exploitation threshold of 50. Effectively, both sub-sections (1) and (2)
only apply to copyright in designs, which are either registered or
capable of being registered under the Designs Act. Therefore, the
definition of design warrants close consideration.
12. Section 2(d) of the Designs Act 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 dimensional or three
dimensional or in both forms, by any
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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);”
From the above definition, the following is discernible:
(i) design registration may be obtained only in respect of the
features of shape, configuration, pattern, ornament or composition of
lines or colours applied to any article;
(ii) such application is required to be by any industrial process
or means, whether manual, mechanical, chemical, separate or
combined; and
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(iii) the above mentioned features in the finished article should
appeal to and be judged solely by the eye.
13. Even if one or more of the features specified above were to
be applied to an article and all the above requirements were to be
satisfied, the definition proceeds to exclude from its ambit the
following:
(i) any mode or principle of construction or anything which is
in substance a mere mechanical device;
(ii) a trade mark as defined in clause (v) of subsection (1) of
Section 2 of the Trade Marks Act, 1999;
(iii) a property mark as defined in Section 479 of IPC; and
(iv) an artistic work as defined in clause (c) of Section 2 of the
Copyright Act.
14. Since an artistic work is expressly excluded from the
definition of design under the Designs Act, it is pertinent to examine
the definition of artistic work under the Copyright Act to verify if it
similarly excludes a design, as defined in the Designs Act. Section
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2(c) of the Copyright Act defines an artistic work as under:
"(c) artistic work" means,—
(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) a work of architecture; and
(iii)any other work of artistic
craftsmanship;”
It is noticeable that the expression applies to the following: (i)
painting, (ii) sculpture, (iii) drawing, (iv) engraving and (v)
photograph. In each case, it applies whether or not any such work
possesses artistic quality. It also applies to works of architecture and
any work of artistic craftsmanship. Significantly, unlike Section 2(d)
of the Designs Act, which excludes an artistic work from the scope of
design, the above definition of artistic work does not expressly
exclude a design.
15. Section 2(d) of the Copyright Act stipulates that the author
of a photograph is the person who took the photograph and Section
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17 recognises the author as the first owner of the copyright. As per
Section 13, copyright shall subsist throughout India inter alia in
artistic works and, as per Section 14, copyright means the exclusive
right to do or authorise the doing of inter alia the following in
relation to an artistic work: reproduction, communication to the
public, issuing copies to the public and adaptation. Section 22
provides that copyright shall subsist in inter alia an artistic work
published during the lifetime of the author until sixty years from the
beginning of the calendar year following the author's year of death.
While Section 45 enables inter alia the owner to apply for entering
the particulars of a work in the Register of Copyrights, unlike other
intellectual property statutes, under Section 55, even an owner whose
name is not entered in the Register may sue for infringement. Against
this statutory backdrop, I turn to the material facts of this case.
16. The extract from the Register of Copyrights dated
20.07.2023 discloses that copyright registration was granted in
respect of a work titled 'ARTISTIC WORK PHOTOGRAPH OF PUMP
ASSEMBLY FOR AIR COMPRESSOR' to the first respondent. A copy
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of the work is annexed to the extract. It is evident from the extract
and the copy of the work that the artistic work forming the subject of
copyright protection is the photograph and not the Pump Assembly
for Air Compressor. As is evident from the definition of artistic work,
a photograph qualifies as an artistic work.
17. The next question that arises for consideration is whether
Section 15 is applicable in respect of this artistic work. As noticed
earlier, sub-section (1) of Section 15 applies to designs which were
registered under the Designs Act, and sub-section (2) to designs
which are capable of being registered thereunder, but were not so
registered. In view thereof, the question to be examined is whether
the photograph/artistic work is a design, as defined in the Designs
Act. In order to qualify as a design, one or more of the features
enumerated in Section 2(d) should have been applied to an article by
an industrial process or means. This certainly cannot be said about
the photograph/artistic work. The manner in which these provisions
were construed earlier warrants analysis next.
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18. In Kiran Shoes Manufacturers, which was relied on by both
the contesting parties, it was held as under:
“For the purpose of this case, it is the
above mentioned interpretation of the
expression “design” that has to be kept in
mind. The work “side trim” in question which
was under the Copyright Act and which
registration has been cancelled by the Board
is visibly seen as under:
The way it is stretched on the side of the
shoe can be seen from the picture of the shoe:
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It would be of significance to state at
this stage that the appellant has got the
design registered under Reg. No. 178564 in
the year 1999 which shows that the aforesaid
side trim is fit for registration under the
Designs Act, 2000. The Copyright was
obtained in the year 2002 for this side trim.
After examining the aforesaid side trim
minutely and having regard to the aforesaid
fact, we are of the view that this side trim is a
design under the Designs Act and, therefore,
Section 15(2) would clearly be attracted. A
Division Bench of this Court in the case of
Microfibres Inc. v. Girdhar and Co. and Anr.
2009 (40) PTC 519 held that if the design is
registered under the Designs Act, the
Design would lose its copyright
protection under the Copyright Act. If
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it is a design registerable 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
ts 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)
In the above judgment, the Court was concerned with a side trim,
which is a part of shoes. After examining the side trim minutely, the
Court concluded that the side trim is a design under the Designs Act.
In those circumstances, the Court cited Microfibres and concluded
that Section 15(2) is attracted and that, consequently, the copyright in
that design would cease to subsist after the threshold limit specified
in sub-section (2) is reached. In Urooj Ahmed, the Division Bench of
this Court considered whether the replacement of Designs Act, 1911 in
Section 15 with Designs Act, 2000 by Act 27 of 2012 would apply to
that case and proceeded to hold that the amendment would apply by
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virtue of Section 8 of the General Clauses Act,1896. Hence, the said
judgment does not advance the cause of the petitioners.
19. The interplay between the Copyright Act and the Designs
Act also fell for consideration before the Hon'ble Supreme Court in
Cryogas Equipment. In paragraphs 55, 60 and 61 of the judgment,
the Hon'ble Supreme Court held as under:
55. The expression ‘artistic work’ under
Section 2(c) of the Copyright Act has a very
wide connotation and may also include
abstract work(s) comprising a few lines or
curves arbitrarily drawn, which could be
either two or three-dimensional. It may be
clarified that such a work may or may not
have any visual appeal. Further, the holder
of such an artistic work is entitled to draw
protection under Section 14(c) of the
Copyright Act, including the exclusive right
to reproduce such work in any material
form. Such a reproduction may also involve
depicting a three-dimension work of a two-
dimensional work or vice versa.
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60. It would therefore be appropriate
to espouse the approach already undertaken
by the courts of India, as it not only emulates
the best practices employed by US courts and
the principles enshrined in International
Conventions but it also gives due
consideration to contemporaneous laws and
legislations. We have thus formulated a two-
pronged approach in order to crack open the
conundrum caused by Section 15(2) of the
Copyright At so as to ascertain whether a
work is qualified to be protected by the
Designs Act. This test shall consider: (i)
whether the work in question is purely an
'artistic work' entitled to protection under the
Copyright Act or whether it is a 'design'
derived from such original artistic work and
subjected to an industrial process based upon
the language in Section 15(2) of the
Copyright Act; (ii) if such a work does not
qualify for copyright protection, then the test
of 'functional utility' will have to be applied
so as to determine its dominant purpose, and
then ascertain whether it would qualify for
design protection under the Designs Act.
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61. The courts, while applying this test,
ought to undertake a case-specific inquiry
guided by statutory provisions, judicial
precedents, and comparative jurisprudence.
It must be kept in mind that the overarching
objective is to ensure that rights granted
under either regime serve their intended
purpose without unduly encroaching upon
the domain of the other. With this approach,
we have attempted to clarify the treatment of
works at the intersection of 'copyright' and
'design' law(s), thereby ensuring coherence
and consistency in the application of IP
rights in India.”
20. The test formulated by the Hon'ble Supreme Court is
whether the work in question is purely an artistic work entitled to
protection under the Copyright Act or whether it is a design derived
from such original artistic work and subjected to an industrial
process. If the work does not qualify for copyright protection, the
Court held that the test of functional utility should be applied to
determine the dominant purpose and then ascertain whether it could
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qualify for design protection under the Designs Act. If the said
principles were applied to this case, as noticed earlier, the
photograph/artistic work does not qualify as a design in terms of
Section 2(d) of the Designs Act.
21. The object and purpose of Section 15 of the Copyright Act
may be illustrated in the following manner. The definition of artistic
work includes a sculpture. Sculptures are typically three dimensional
articles. It is conceivable that the features of shape or configuration or
even pattern may be applied thereto by industrial means. Unlike the
Designs Act, which expressly excludes an artistic work from the scope
of design, the definition of artistic work in the Copyright Act does not
contain a corresponding carve out with regard to designs. Therefore,
in the above example, these sculptures could meet the requirements
of both artistic work and design. For the same reasons, a work of
architecture, which also falls within the scope of artistic work and is
defined to include a building or structure having an artistic character
or design, could also satisfy the requirements of both artistic work
and design.
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22. In the situation outlined in the preceding paragraph, if the
author/proprietor asserts ownership of a copyright in the artistic
work, without registering it as a design although it meets the
requirements therefor, protection would be extended for the lifetime
of the author plus 60 years. On the other hand, if design registration
were to be obtained, the term of such design registration would be for
an initial term of 10 years, which cannot be extended beyond 15 years.
One more aspect should be noticed: under Section 11 of the Designs
Act, the registered proprietor of a design has a copyright in the design
and only such registered proprietor may sue for piracy of a registered
design. In contrast, as stated earlier, even without making an entry in
the Register of Copyrights, the owner of the copyright may sue for
infringement and the copyright would ordinarily continue to subsist
for the term mentioned above. In order to prevent this mischief,
Section 15 prescribes that the copyright in a design, which is either
registered or capable of being registered but not registered, would
cease to subsist in the manner prescribed in sub-sections (1) and (2)
thereof.
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23. Apart from raising this objection on the basis of Section
15(1) of the Copyright Act, the petitioners have not assailed the
copyright registration on any other ground. In view of the conclusion
that the Pump Assembly for Air Compressor and not the photograph
was registered as a design and the further conclusion that the
photograph/artistic work does not meet the requirements of a design,
the petition fails. OP(CR) No.1 of 2024 is, consequently, dismissed
without any order as to costs.
10.06.2025
Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes / No
kal
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To
The Registrar of Copyrights
Boudhik Sampada Bhawan, Plot No.32,
Sector 14, Dwarka,
New Delhi-110 078,
India.
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SENTHILKUMAR RAMAMOORTHY J.
kal
10.06.2025
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