PROJECT ON

DICHOTOMY BETWEEN

DESIGN ACT& COPYRIGHTACT

MADE BY:

RUCHI GUPTA

13LLB062
1. Indian copyright and design laws have a curious and blurry overlap, the effect of which is
most obvious in the applied art industry. A work created as a design for a commercial
product can lead to all types of legal queries including questions on the intent with which
the work was created or whether one’s design’s reproduction is limited to 50 copies or
has exceeded that threshold to avoid any overlap in protection under these two acts.

2. Owing to a similarity in the work protectable under these laws, creators and manufactures
have many times been left to answer the basic question regarding the type of protection
which should be there when an artistic work is produced.

3. Intellectual property laws provide protection for some works under both copyright and
design law. However, interpretation of Section 15 of the Copyright Act in conjunction
with the definition of “Design” under the Design Act makes it slightly tricky .The
intersection between copyright and designs is an intricate area of law.

4. The Design and Copyright law are interrelated by Section 15(2) of the Copyright Act,
1957 and Section 2(d) of The Designs Act, 2000. The definition of a design in Section
2(d) of Design Act includes only the features of shape, configuration, pattern, ornament
or composition of lines or colors applied to any article in 2D or 3D by any industrial
process and specifically excludes artistic work defined by the Copyright Act.

5. An artistic work is being defined under Section 2 (c) of Copyright Act 1957, which
includes 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. The
author of the copyright has a right to reproduce the work in any material form including
depiction in 2D or 3D.

6. The definition of a design specifically excludes an artistic work, which is capable of

acquiring copyright protection. Protection under copyright law lasts much longer than
 design law and if a piece of art purely translates an artist’s vision to canvas, then it is an
artistic work and merits longer (copyright) protection.

7. The total duration of copyright in design shall not exceed 15 years. After 15 years, the
design will fall in public domain, and will become public property. This rule is being
stated under Section 11 of Design Act 2000

8. Copyright is defined to mean the exclusive right to apply a design to any article in any
class in which the design is registered. This means that if a design is registered in respect
of several articles in one class, the proprietor of such design shall have the exclusive right
to apply the design to all of them.

9. The term copyright as defined under the Design Act 2000 is to be contrasted with
copyright which is conferred on the author of an original, literary, dramatic, musical, or
artistic work under the copyright act 1957. The copyright in the aforesaid works protects
the works from being copied or reproduced whereas the registration of design confers on
the registered proprietor mere an exclusive right to copy or reproduce the design but a
monopoly to produce articles of the class in which the design is registered with that
design applied.

10. Copyright and design registration can protect the artistic works and assist with ensuring
that others don’t copy the design’s visual features such as shapes, patterns and
configuration. There are a number of differences between copyright and design
protection, and it’s important to understand these to determine the appropriate type of
protection for your work.

Scope of protection

 The right conferred by registration of an industrial design is an absolute right in the sense
that there is infringement whether or not there has been deliberate copying.
  To enforce rights under copyright law, the copyright owner must prove that the allegedly
infringing work is a direct or indirect reproduction of the work protected by copyright.

The Nature of the Protection:-

 Copyright, as the name suggests, focuses on protecting a creator from others ‘copying’
their work. To claim copyright infringement and enforce copyright, the creator and owner
of the work needs to show that the alleged infringer did, in fact, copy the original work. If
on the other hand, the alleged infringer had come up with the same work independently,
copyright would not be enforceable.
 Design protection in this instance is more beneficial than copyright. It protects the owner
against another person creating a similar or identical design, even in overall impression,
regardless of whether it was inspired by the registered design or created independently. In
this way, design registration offers a creator stronger protection of his or her artistic
works.

Getting Protection over the Work:-

Design protection and copyright can attach to similar types of work or designs, but the process
through which it comes into force is different.
 Copyright is an automatic right which attaches to original pieces of work where the
creator can be clearly identified. It doesn’t require any registration or certification
process, nor does it involve payment of any fees.
 On the other hand, design rights are granted through a formal registration process. An
application for design registration will be examined along with the design itself, and
approved by the Registrar. Unlike copyright which is free, design registration requires the
creator to pay a fee.
 While the Designs Act confers protection for a limited period, the Copyright Act grants a
higher level of protection to works such as paintings and sculptures. To prevent any
overlap, the Designs Act explicitly excludes artistic works.

Section 15(1) of the Copyright Act categorically prohibits copyright protection if a design is
registered under the Design Act.
It is clear that, if a material is an artistic work under the copyright law than that cannot have any
protection under the Designs Act, and if a work is capable of being registered under the Designs
Act than that work will cease to have copyright protection as soon as an article with such work is
produced more than 50 times.

An artwork is protected under the Copyright Act 1957. But, the moment the artwork is applied to
any article to give the article an aesthetic appeal, and once the article is sold in more than 50
numbers of units, under Section 15(2) of the Act, the artwork loses its copyright and comes
under the realms of the design law.
 Here is where the problem comes. Many designers, inadvertently, display their creations
in fashion weeks, in their boutiques, showrooms etc. This constitutes displaying to
general public and their creations are not eligible for design protections. When some
other person’s copies the design, the designer, based on wrong legal advice or her own
understanding, files an action for copyright infringement against the person.

The Courts, time and again, have held that once the creation is in public domain, the creator loses
protection in design and post sake of 50 units, cannot claim any copyright as well.

 The main rule behind the copyright and design protection is when considering protection
of aesthetic features; businesses typically took towards copyright protection. However it
is important to note that the registration of designs and copyrights’ cannot exist
concurrently due to Section 15(1) of the Copyright Act, 1957.
 Also if an article that can be registered under both design as well as copyright protection
is reproduced more than 50 times by an industrial process then as per Section 15(2) of the
copyright act, copyright protection to the article automatically ceases. In such a case, if
the design is not registered in India, then it no longer has any protection against imitation
by competitors.
The framing of Section 15(2) of the Copyright Act basically meant to prohibit a person from
enjoying copyright protection along with design protection once the material has been registered
under the Designs Act.

The Delhi High Court in Aga Medical Corporation vs. Mr. Faisal Kapadi & Anr1 ]has ruled
that:-
 If a material is capable of being registered under the designs Act but has not been
registered than that material cannot have copyright protection.
 So, it is clear that a design can get copyright protection but that protection ceases to exist
once such design is applied to an article and the same article is produced more than 50
times through an industrial process.

Availability of protection under the copyright act for a design protectable under the designs has
been discussed in the matter of MICROFIBRES INC VS. GIRDHAR AND CO.2:-
 The plaintiff in this case was engaged worldwide in the business relating to
manufacturing, marketing, selling, and exporting of upholstery fabrics and alleged
violation by the defendant of its copyright in the artistic work applied to upholstery
fabrics and in particular, the defendant reproducing identical copies or colorable imitation
of the artistic works on its own fabric.
 In response to the plaintiff allegation of the copyright violation , the defendant argued
that the plaintiff is not entitled to protection under the Copyright Act as the artistic work
under contention was protectable under the design act and has been produced for more
than 50 times.
 Thus the Delhi HC came to the conclusion that although, the copyright would exist in
the original work of art and the author/holder would continue enjoying the longer
protection granted under the copyright act in respect of the original artistic work per se,
however when the artistic work is applied to an article and is industrially produced, the
design would have to be registered under the Design act.

1
2003(26)PTC 349 Del
2
2006(32) PTC 157
If the design has not been registered under the design Act, the design would continue to enjoy
copyright protection under the copyright act till the time it has not been applied on the article for
more than 50 times through the industrial process.

If one creates art with the aim of mass commercialization, it is no longer an artistic work but a
design entitled to a shorter 15-year monopoly maximum. If the work falls in the design category
then protection must be sought by registering the design under the Designs Act. But if there is no
statutory design protection, the copyright statute (the Copyright Act, 1957) under Section 15(2)
protects copyright in such a design until 50 reproductions of the design are made by an industrial
process. Upon the making of the 51st reproduction, copyright ceases.

In May 2014, In Jagdamba Impex v Tristar Products3, also before the Delhi court,
 Tristar claimed copyright over 2D industrial drawings used commercially for
manufacturing 3D equipment to make combs. Jagdamba began manufacturing combs
using identical machines that were later revealed as based on Tristar’s industrial
drawings.
 In the first instance, Tristar succeeded in restraining Jagdamba from its copyright
infringing acts, but on appeal the court observed that industrial drawings used to produce
combs had no independent existence and therefore did not qualify as artistic works under
the copyright statute.
 Tristar’s entitlement to copyright protection under section 15(2) was lost once its
drawings were used to produce more than 50 combs by an industrial process, and since
the drawings were not registered as designs, no cause of action remained against
Jagdamba.
 The appellate court reversed the trial court’s decision with regard to industrial drawings
of the plaintiff’s machine and major components, holding that the drawing was not
entitled to copyright protection as more than 50 products had been manufactured by
applying the drawings to the machine.

3
2014 Delhi HC
In Mattel v Jayant Agarwalla 4(2008) the court held that:-
 The Scrabble board was an article capable of design protection, but since more than 50
copies had been made and the design was not registered, copyright protection for the
design could not be claimed by the plaintiff.
 Mattel loses both design protection (since it failed to register it as a design) and copyright
protection (since it produced the board more than 50 times).
But the court ruled that Mattel did not have a copyright to their famous board game
Scrabble.

The Period of Protection:-

 Industrial design protection generally lasts for a period that varies between 10 and 25
years depending on the country where protection is sought. It must also be borne in mind
that the process of registration of industrial designs may take some time, and may not
always be adequate for products that are linked to passing trends (e.g. fashion products).

 Copyright protection typically lasts longer than design protection. The general rule is that
copyright protections last for 70 years beyond the author’s lifetime as given in Section 22
of Copyright Act 1957.
.
In Lucasfilm Ltd v Ainsworth5, Lucasfilm tried to argue that copyright protected the
Stormtrooper helmets used in the Star Wars film to prevent Ainsworth from recreating the
helmets and selling them but;
 Courts found that the helmets did not attract copyright, but could have been protected by
design, which would have expired.

4
2008(38)PTC (416)Del

5 [2011] UKSC 39
Costs
 Given that no formal registration of works protected by copyright is required by most
national copyright laws, there are generally no direct costs relating to copyright
protection. However, there may be costs related to:-
o the deposit of the work at the copyright depositary, in countries where it
exists, and
o Demonstrating proof of ownership in case of disputes.

 The protection granted by registered industrial designs is stronger in that it covers even
unintentional infringement and provides a registration certificate which may be an
important proof in case of infringement, it involves more effort (financial and
administrative) because it requires registration, and is shorter in duration.

Types of products:-
 In most countries, not all designs can be protected by copyright but primarily those that
may be considered as works of art. While the distinction may not always be clear, some
designs, such as the shape of manufactured products, are unlikely to be protectable under
copyright law, while others, such as textile designs, are often covered by both forms of
protection.

Artistic work excluded from protection under Designs Act

In Rajesh Masrani vs. Tahiliani Design Pvt. Ltd6: It held that:-

 Section 15(2) of the Copyright Act is applicable to the copyright in any design capable of
being registered but has not been registered and the copyright in the said design cease to
exist as soon as any article to which the design has been applied has been reproduced
more than 50 times by an industrial process.
 Section 2(d) of the Designs Act, 2000 does not include any “artistic work” as defined in
Clause (c) of Section 2 of the Copyright Act.” Registration of the work is not compulsory

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AIR2009Delhi44
 nor is a condition precedent for maintaining a suit for damages for infringement of
Copyright.
 An artistic work so long as it can qualify as an artistic work reproduced in a form shall
continue to enjoy the copyright available to it under the copyright act 1957. But when it
is used as the basis for designing an article by its application by an industrial process or
means, meaning thereby an article other than the artistic work itself in a two or three
dimensional form, it would enjoy a lesser period of protection of copyright under section
11 of the design act 2000, if registered as a design under this act, and if not registered
would cease to enjoy any copyright after more than 50 such application under section 15
(2) of the copyright act.
 The court suggests a distinction between a work of art and a work of commerce i.e. the
moment a work of art is applied industrially to an article, it ceases to enjoy copyright
protection and is only entitled to a (lesser term) design protection.

In the Recent Case of PRANDA JEWEELEY PRIVATE LIMITED. V. AARYA7: -

 There was an interpretation for deciding on the plaintiff claim of violation of its
copyright. The plaintiff was engaged in the business of the designing, marketing, selling,
gold sheet articles of deities and religious symbols. The defendants challenged the
plaintiff copyright over the impugned artistic work and relied on section 15 of the
Copyright Act.

In the instant case, the Court had to ascertain whether the work was firstly capable of
protection as a design and secondly, whether the copyright in the artistic work ceased
because of the industrial application of the work resulting is a design.

 The copyright in a work would continue to exist as an artistic work and that the
reproduction of it as a design would entitle it to protection as a design as well.
 The artistic works were capable of being registered as designs under the design act, and
on not being so registered, the copyright in them ceased after being applied to a product
for more than 50 times by an industrial process

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24 kt &ors Bom HC
However, the Court provided an illustration:-
 If a painting, say Hussain’s painting of a horse, is simply reproduced in any medium, i.e.
on paper, canvass or even a cloth, and in any form, i.e. in two or three dimensions,
whether by an industrial process or otherwise, it will continue to enjoy full copyright in
such reproduction under the Copyright Act. But if the painting is used as a motif to
produce, say, sarees, the industrial application, namely, use as a motif in a saree, would
lose copyright protection, if not registered as a design under the Designs Act, 2000, after
more than fifty applications.

At the end the court concluded that:-

 The Court analyzed the issue and opined that the artistic work as a copyright will enjoy
protection as a copyright even if it is reproduced in any form but when it is used as the
basis for designing an article by its application in an industrial process, it will be
protected as a design.
 Once again, as an original artistic work it would continue to enjoy the full copyright
under the Copyright Act, 1957 and cannot be reproduced in any two or three dimensional
form by anyone except the owner of the copyright

CONCLUSION
When an artistic work is applied by an industrial process on an article of which the proprietor is
likely to manufacture more than 50 pieces, it is important that design registration be obtained
under the design act as the proprietor is likely to lose copyright protection for the article under
the copyright act. Since a design has to be novel for it to be registered, the design application
should be made before the artistic work is made public in anyway.
REFERENCES:-

1. https://dkmahant.wordpress.com/2011/07/06/copyright-vs-designs-rights-overlap/
2. http://www.worldipreview.com/contributed-article/the-interplay-between-copyright-and-
designs-in-india
3. http://ebtc.eu/index.php/sector/ipr/184-ipr/ipr-landmark-cases/184-landmark-cases-
design-act
4. http://www.worldtrademarkreview.com/Intelligence/IP-Lifecycle-
India/2015/Articles/Protecting-designs-in-India
5. https://www.linkedin.com/pulse/interrelation-between-designs-copyright-law-india-
sandeep-bhalothiaprotection
6. http://www.selvamandselvam.in/blog/delhi-hc-decodes-the-copyright-and-design-
conundrum/
7. https://legalvision.com.au/what-are-the-differences-between-copyright-and-design-
protection/