Interface between copyright and design right: a saga for unregistered design right

Interface between copyright and design right: a saga for unregistered design right

The interface between the copyright and design right arises when an ‘artistic work’ is capable of both protection under the copyright act with a longer duration of ‘life plus fifty years’ and a shorter duration of protection of fifteen years under the designs act. To demarcate the distinct between the two, an attempt was made in the form of s.15 of the Copyright Act[1] which aims to withdraw copyright if the design is registered or capable of registration under the Design Act, 2002 or if there have been more than 50 copies of the design as imprinted on an article.[2]

When the ‘artistic work’ has both novelty and industrial value to it, the issue of overlap between the two arises and the threshold of 50 copies becomes determinative of cessation of copyright if the design is registered. On the combined reading of the existing provisions, one can conclude two things: 1. A work eligible for registration under the Designs Act, 2000 shall not receive protection under either the Copyright Act or the Designs Act unless it is duly registered. 2. Any work classified as an “artistic work” under the Copyright Act is precluded from obtaining protection under the Designs Act, 2000.[3]       

Under such a legal regime, the larger question of the fate of ‘unregistered design’ arises especially in the industries that develop large numbers of designs in short intervals of time like fashion, apparel, toys etc., as these innovations have a short shell life and have a tendency to become obsolete, so seeking a registration of every design is not a commercially viable option and when a design is unregistered, it has no protection under the Designs Act, 2000 and also if there are multiple copies of the same design, it can’t be protected under Copyright Act, 1957 as a threshold of 50 copies is unreasonable and can be easily breached with the advancement of technology.[4]

While one aspect of the issue is the ‘unregistered design’, the other deals with the approach taken by various courts in demarcating the two rights and creating a conundrum of whether it is a mutually co-existing or exclusive right. Intellectual Property law regime in India is conflated when the two rights are available but cannot be sought in one go as in the present case.[5] In assessing what kind of protection is available, the various courts have mooted the question of ‘what qualifies as ‘artistic work’ under the existing legal regime as it is possible for someone to falsely seek protection for their work as an “artistic work” under the Copyright Act if they have not registered it under the Designs Act, 2000.

It aims at elaborating on these issues mentioned above and providing an in-depth reform of the Indian legal system. This is done by scrutinizing other international legal systems, particularly that of the European Union and the United Kingdom, to identify and incorporate best practices into the effective fortification of Indian laws.

Issues in the Present Framework

Unregistered design right

Registration of a design is a pre-requisite to seek protection under Design Act, 2000 while copyright is an automatic right and is created the moment an innovation happens. In dynamic and cyclic industries like fashion, registration of every design is a hassled task and a refuge is sought under Copyright Act due to its auto-immune nature.[6]

But such refuge proves futile owing to the multiplicity and commercial nature of the product leading to major losses due to piracy. Therefore, such a scenario necessitates an amendment in the law to provide ‘unregistered design rights’ which is akin to the copyright in the manner it automatically protects of design created. The next section discusses the legislative lacunas in present law.

Designs expire faster than the protection

Fashion products are designed to have short lifespans, considering the fast-changing trends and impulsive choices of consumers. Demand for new designs is often unknown or variable and can shoot up or fizzle down immediately after their release. A six-month waiting period for design registration in this industry is a long time given that styles may change in weeks.[7]

More to the point, a ten-year protection period is inefficient because trends do dictate demand and most designs have limited relevance.[8] Lest we forget, these cycles are speedy so it’s not economically feasible for brands to register every design. As such, current protections run in tandem with an industry that has mixed up good old theory with its fast-paced dynamic.

Novelty

The novelty and novelty of a design must not have been disclosed to the public in India or elsewhere. Under the Act, for registration, Section 4 clearly specifies this requirement. However, if a design has been commercially used or made available to the public before the application for registration is made, then it loses novelty which is one of the conditions; hence, this restriction prevents industries from putting designs to test in the market before taking a decision on its registration.

Unlike the statutes of other jurisdictions, in Indian law, there is no grace period, which would allow creators to estimate demand before registration.[9] Exceptions to the provision are extremely limited; disclosure is protected in such conditions as confidential orders, or exhibitions notified by the Central Government, or private disclosure made in good faith. Best-selling designs that are unprotected for unregistered designs and without a grace period after disclosure lack security, making it susceptible to market copying by the designers of those designs.

Innovation

There is no automatic unregistered design, right? Thus, the overall fashion and footwear industries are exposed to designs being copied. Unlike the EU and UK, for example, there are no temporary rights against imitation, and competitors can take advantage of original designs.[10] This gap also opens up for dishonest competitors to register unprotected designs, pushing the original designers to lengthy cancellation procedures.

Law across the world

Perhaps the most forward-thinking legal instrument under European and English law is the “unregistered design right,” which comes in two forms. The English version, derived from the CDPA 1988 was one of the first intellectual property models developed there and laid the basis for the establishment of its equivalent under Regulation 06/2002 across Europe, and similarly, for other jurisdictions around the world.

  • UK law

The English version grants automatic protection exclusively to original three-dimensional designs, whether functional or not, with exceptions for replacement parts that must fit or match.[11] This protection lasts for 15 years from the end of the calendar year in which the design was first documented, or, if a product featuring the design was initially marketed, for 10 years from the end of that calendar year.

  • EU law

The European variant of the ‘unregistered design right’ offers protection for both two-dimensional (2D) and three-dimensional (3D) designs, which is broader than the English version. However, this protection lasts only three years from when the design is first made public in the European Union.[12] This relatively short-term registration enables designers to apply for more extended periods of protection, yet it still provides some temporary protection in the market. It is very important that 2D and 3D designs are protected for various creative industries, which enables designers to be assured of varied artistic and practical creations.

The holder, under both the English and the EU versions of the unregistered design right, can bring an action against infringement only if the alleged infringement derives from direct copying of the protected design. This means, at its core, that in order to prove the required level of evidence of copying that is effective for the purpose of exercising rights, it must end.

Jurisprudential Approach  

There have been a series of cases in determining the kind of interpretation that needs to be taken for S.15(2) of the Copyright Act which limits the copyright protection provided for industrial designs. A brief of the judgements is given below:

Microfibres v. Giridhar & Another

It is the landmark judgement on the issue of S.15(2) The court held that this provision was created to prevent dual protection under copyright and design laws. It thereby introduces that S. 15(2) of the Copyright Act explicitly excludes from the copyright any design that has been reproduced more than 50 times and is eligible for registration under the Designs Act.[13]

This restriction is intended to ensure that designs are registered and monopolies in designs under copyright do not persist for longer periods than necessary, for they otherwise would persist for the lifetime of the author plus another 60 years. The Court of Appeal upheld the position that works intended for mass production and industrial use fall within the protection of the Designs Act rather than the Copyright Act, unless merely artistic and devoid of any industrial application.

Ritika Pvt. Ltd v Biba Apparels Pvt. Ltd.

The plaintiff alleged that the designs of “Ritu Kumar” are original artistic works within the purview of copyright law. The defendant, Biba Apparels, pleaded that since these designs have been applied on more than 50 articles, S.15(2) copyright has been exhausted and the designs should be registered under the Designs Act.[14]

The High Court held that there was loss of copyright when Microfibres crossed the 50-item limit and as such, the designs were required to be registered under design law to enjoy protection. Holding the view in favour of Biba Apparels, the court decreed that Ritika Private Limited could not claim copyright and must apply for design registration in order to have a rightful legal posture.

Jagdamba Impex v. Tristar Products

A cosmetic products manufacturer, together with Combs, filed the suit against the defendant, who allegedly copied the design of a “teeth cutting machine,” contending that such designs are artistic works protected under copyright. The defendant argued, however, that because such designs are registrable under the Designs Act, the plaintiff adopted them more than 50 times for its production.[15]

It ruled in favour of the defendant by submitting that, under Section 15(2), the protection over the plaintiff’s copyright had lapsed since the design was applied industrially more than 50 times. The Court pointed out that for protection to be retained the plaintiff should have registered the designs under the Designs Act.

Pranda Jewellery v Aarya 24KT

It is in this view that the Bombay High Court has considered the case concerning the Designs Act and Copyright Act. The court noticed that designs having some ornamentality attached to them and which are provided on articles for industrial use fall within the purview of the Designs Act which offers only limited protection for ten years which can be extended for a further five years thereafter. On the other hand, if the work is qualified as an original artistic work under the Copyright Act, it would enjoy the right of greater and lasting protection.[16]

The court emphasized that when an artistic work is reproduced for mass production, it should be confined within the Designs Act and should be barred from copyrighting. Nevertheless, it acknowledged that even purely aesthetic works, which were not intended for replication or industrial use, would be copyrightable. The appellant argued that the designs involved here are novel creations for aesthetics rather than functional replication purposes, a reason they felt would enable them to obtain copyright protection. Agreeing with the court, if the work is primarily made to be aesthetic, then it still can be copyrighted.

A consistent trend here is that copyright protection ceases to exist where the subject matter has entered the realm of industrial use, and from thereon it falls within the scope of the Designs Act. It is repeatedly brought out by Courts that any other interpretation would render the registration of a subject matter under the Designs Act otiose while underlining that the protections offered under the Designs Act must be kept watertight from those under the Copyright Act.[17]

However, an interpretation that thwarts the perpetual rights of copyright owners over their original works could create a problem for the Indian intellectual property landscape, where foreign investors are not considered to be a lucrative market for commercializing copyrighted subjects. Therefore, the judiciary needs a comprehensive law that can tackle these issues, with the intention of relieving the courts of the challenge of wandering through ambiguous and conflicting statutory provisions.[18]

Conclusion: need for an overhaul in Indian regime

The joining of copyright and design rights brings confusion in the settlement of intellectual property issues. Therefore, this calls for reform to bring clarity where confusion exists. The existing law does not make it easy to determine the convergence of these two aspects, especially for the reproduction of a design 50 times. Currently, it denies copyright, thereby diminishing some rights of creators. Currently, the extant laws, rules, and judicial interpretations that stand before the country are not adequate to solve these problems, and clearer legislation is required to clearly prevent errors while giving a sense of strong protection.[19]

While copyright and design rights coexist and complement each other, protection under the Designs Act of 2000 requires registration in order to be effective hindrance to creativity in such industries as fashion. Registration in the case of design poses great difficulties for designers, while those who do not register are completely vulnerable to piracy, without legal safeguards.[20] This again provides a rationale for reforms through legislation ensuring automatic protection of unregistered designs without recourse to copyright law.

Definitions of “design” should be enlarged to all the means of expression of design, in that creators are allowed to achieve rights under a unified and effective legal framework. The damage limitations are sourced in the system that currently exists. Typically, damages to designers are woefully below the actual investment put towards creation in terms of time, effort, and resources.[21] To fill these gaps, the statute should be changed to extend greater protection to the designers, which would include higher damages and automatic protection for unregistered designs. Such an environment will create new ways of fostering creativity and innovation along with more effective intellectual property safeguards the unregistered design right confers on its holder the right to prevent acts of infringement only if the contested use results from copying the protected design.


[1] Section 15, The Copyright Act, 1957

[2] Jennifer E. Laygo, ‘The Nexus between Creativity and Innovation: A Comparative Approach to Copyright and Industrial Design Protection’ (2018) 62 Ateneo LJ 1280 accessed on 8 November 2024.

[3] ‘Design v. Copyright- Need for a Clear and Rational Distinction- II’ (SpicyIP, 26 August 2020) <https://spicyip.com/2009/06/design-v-copyright-need-for-clear-and_15.html> accessed 12 November 2024.

[4] Lukose LP and Abrol C, ‘Need for Unregistered Design Rights in India: A Contemplative Cogitation’ (2023) 29 Journal of Intellectual Property Rights <https://www.researchgate.net/publication/378103306> accessed 8 November 2024.

[5] ‘Design v. Copyright- Need for a Clear and Rational Distinction- III’ (SpicyIP, 26 August 2020) <https://spicyip.com/2009/07/design-v-copyright-need-for-clear-and-2.html> accessed 12 November 2024. 

[6] Shreyee Tarafdar, ‘Interface between Design and Copyright in India’ (2023) 5 Indian JL & Legal Rsch 1 accessed on 8 November 2024.

[7] From Art to Industry: Decoding the Clash between Copyright and Design in Indian Law, 2024 SCC OnLine Blog OpEd 97 accessed on 8 November 2024.

[8] Lukose LP and Abrol C, ‘Need for Unregistered Design Rights in India: A Contemplative Cogitation’ (2023) 29 Journal of Intellectual Property Rights <https://www.researchgate.net/publication/378103306> accessed 8 November 2024.

[9] Ibid.

[10] Ibid.

[11] Rajendra Kumar & Amit Sindhwani, ‘The Overlap between Copyright and Designs in India, EU and the UK – A Case for Overhaul of the Indian Legal Framework’ (2022) 15 Int’l In-House Counsel J 8053 accessed on 8 November 2024.

[12] Ibid.

[13] Microfibers v. Giridhar, 2009 SCC OnLine Del 1647.

[14] Ritika Private Limited v. Biba Apparels Private Ltd., CS(OS) No. 182/2011.

[15] M/S Jagdamaba Impex v. Tristar Products (P) Ltd. 2015 SCC OnLine Del 2872.

[16] Pranda Jewellery (P) Ltd. v Aarya 24 KT, 2015 SCC OnLine Bom 958.

[17] ‘Design v. Copyright- Need for a Clear and Rational Distinction- III’ (SpicyIP, 26 August 2020) <https://spicyip.com/2009/07/design-v-copyright-need-for-clear-and-2.html> accessed 12 November 2024.

[18] Ibid.

[19] Iyer G, ‘Need for Amendment in the Designs Act, 2000 for Protection against Piracy of Unregistered Fashion Designs in the Industry (2020) 3 INTERNATIONAL JOURNAL OF LEGAL SCIENCE AND INNOVATION 227 accessed on 8 November 2024.

[20] Masiyakurima P, ‘Copyright in Works of Artistic Craftsmanship: An Analysis’ (2016) 36 Oxford Journal of Legal Studies 505 <https://www.jstor.org/stable/26363506> accessed 8 November 2024.

[21] Harvard Law Review HLR, ‘Protecting the Artistic Aspects of Articles of Utility: Copyright or Design Patent? ’ (1953) 66 Harvard Law Review 877 accessed on 8 November 2024.


Author: Shreya Sahu, 4thYear, B.A.LL.B.(Hons.) student at National Law University, Delhi.

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