As an IP lawyer, let me write something on a burning issue related to an applicability Section 15 of the Copyright Act, 1957 ( herein after referred as the Act for short) to an original artistic work of engineering drawing.
Before I write on this topic and express my views, it is necessary to discuss about the provisions of section 15 of the Act along with the two other aspects. One is original artistic work and the other is engineering drawing. No definition of 'original' is given in the entire Act. Original artistic work is mentioned in Section 13 (1)(a) of the Act wherein copyright subsists. The definition clause of artistic work referred in Section 2 (c) of the Act has depicted a drawing (including a diagram, map, chart or plan) as an artistic work. Thus it is obvious that drawing falls under the provisions of artistic work. Only original work is protected under the provisions of the Act.
Now the issue involved in this article is the applicability of the Section 15 of the Act qua original artistic work of engineering drawing. Whether an original artistic work of drawing can be restrained under the guise of the provisions of Section 15 if such drawing is used for making article by an industrial process. It is better to quote Section 15 of the Act here for better understanding of the issue.
"Section 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.
(2) Copyright in any design, which is capable of being registered under the Designs Act 2000, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his licence, by any other person."
The interpretation of Section 15(1) is that if any design is registered under the Designs Act, the provisions of Copyright Act are not applicable. Meaning thereby, there is no protection of any design under the Copyright Act which is registered under the Designs Act. Now first the question is what a design is and second question is whether any design is protected under the Copyright Act unless it is registered under the Designs Act. The answer of the first question is that design is defined in Section 2(d) of the Designs Act, 2000 which excludes artistic work. The answer of second question would probably be hidden under the provisions of Section 15(2) of the Copyright Act.
The interpretation of Section 15(2) is as under:
Let me interpret it in literary manner.
(A) Copyright in any Design:
First of all please be clarified that it is copyright in design and not copyright in copyright or under the provisions of Copyright Act. To discuss Copyright is design, it is required to invoke Section 2(c) read with Section 11 of the Designs Act, 2000. Section 2 (c) is the definition clause of 'copyright' which means " the exclusive right to apply a design to any article in any class in which the design is registered." Now Section 11 is related to Copyright on registration:- "(1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of the Designs Act, have copyright in the design during ten years from the date of registration." (2) subsection 2 is related to the extension of period of five years from the expiration of the original period of ten years.
Thus, in view of section 2(c) read with section 11 of the Designs Act, 2000, it is clarified that the first wordings of section 15(2) are with regard to copyright in design and not they are not related to copyright of any work which fall under the provisions of Copyright Act.
(B) which is capable of being registered under the Designs Act 2000:
Here copyright in design is capable of being registered under the Designs Act 2000. It means that design which is capable of being registered under the Designs Act, 2000. The terms 'capable of being registered' plays an important role for its interpretation. To interpret this term, Section 2 (a) i.e. definition of 'article'; section 2(d) i.e. definition of 'design'; section 2 (g) i.e. definition of 'original' and provisions of section 4 of the Designs Act, 2000 are required to be discussed. The terms 'capable of being registered' falls within these provisions. In other words, the design must be within the ambit of the definition of design as per section 2(d). It must be for an article which falls under the definition of section 2(a) and such design must be original as per section 2(g). Moreover, such design must not be within the provisions of section 4 of the Designs Act, 2000. if all these tests are passed out successfully, such design is called " capable of being registered under the Designs Act, 2000.
(C) but which has not been so registered:
Section 15(2) is also applied to the design which is capable enough to be registered but it has not been registered under the Designs Act.
(D) 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:
This is very interesting point which says that copyright in design does not have any effect if the owner of the copyright or by any other person with licence, has reproduced an article, to which such design has been applied, for than fifty times by an industrial process. To elaborate this terms, let me discuss it with the provisions of section 15(1) which says that once a design is registered under Designs Act, there is no protection available to that design under the Copyright Act. Now the terms 'copyright in design' is essential to consider that whether section 15(2) talks about copyright in design which is related to the provisions of the Designs Act or it talks about the provisions of Copyright Act.
Four Points of Section 15(2) which establishes that this section is in respect of Designs Act and Not Copyright Act.
( One) the design which is capable of being registered under the Designs Act ;
(Two ) however, being capable, the same is not registered;
(Third ) if the design of an article is applied for registration.
(Four) if such article is reproduced more than fifty times by industrial process.
In my opinion, section 15(2) talks about prohibition of registration under Designs Act and not Copyright Act. The reasons are as under.
1)That it is copyright in design and not copyright which falls under copyright Act.
2)That there is talk about an article which directly falls under Designs Act.
3) That if there is no registered design of an article, the design is applied to that article for registration but not registered yet and
4)That if such article has been reproduced more than fifty time by industrial process by an owner or licencee. then there would be no copyright in design.
5) Section 15(2) is read separately.
6)That it is special provision regarding copyright in designs.
7) That the reason behind incorporating it under the Copyright Act is to avoid confusion in respect of registration and protection of an article which is made by industrial process under the Copyright Act.
8) That the intention of Legislature is very clear that an article which is capable enough to be made and sold separately, can be registered under the Designs Act, and it can not be registered under the Copyright Act.
9) That Section 13 of the Copyright Act provides that work in which copyright subsists which does not speak about design or article.
10) That Section 14 of the Copyright Act provides the meaning of the copyright which is silent about design or article.
11) That the definition of 'work' provided in Section 2(y) of the Copyright Act which does not include article.
12) That the definition of 'Design' provided in Section 2(d) of the Designs Act, 2000 includes shape,configuration, pattern, ornament or composition of lines or colours applied to any article in two or three dimensional by any industrial process by means of chemical, mechanical or manual or separate or combined and the said article is finished article and appeal to and is judged solely by the eye and it excludes any artistic work as defined in Section 2(c) of the Copyright Act, 1957.
Thus, considering the above mentioned legal scenario, in my opinion, Section 15(2) of the Copyright Act has nothing to do with the provisions of Copyright Act but is only related to Designs Act, 2000.
Now coming back to the issue of this article that Section 15 of the Copyright Act can be applied to an original artistic work of engineering drawing, my answer is 'NO'. The reasons for my views are as under.
1) That the drawing of an article is not part and parcel of the Design of the article as per the definition of the Design provided in Section 2 (d) of the Designs Act, 2000.
2) That the drawing is within the definition of Section 2(c) of the Copyright Act which is already excluded from the definition of design under Section 2(d) of the Designs Act, 2000.
3) That the drawing can not be considered as 'article' as per the definition of an article given in Section 2(a) of the Designs Act, 2000.
4) That original drawing may be made by hand or with the use of software in computer.
5) That original drawing can not be made by industrial process as any article is made with the use of chemical or mechanical or any process.
6) That the original drawing falls within the ambit of the definition of artistic work and an artistic work can be considered as 'work' as per the definition of Section 2(y) of the Copyright Act.
7) That Section 15 of the Copyright Act speaks about copyright in design as discussed herein above.
8) if original drawing is not protected under the copyright Act, the entire purpose of making drawing is infructuous and that is why Legislature has considered 'drawing' an artistic work under the Copyright Act and not under the Design Act as the life of the design is only 15 years (10 + 5 ). That is why article made from any drawing is protected under the Designs Act and not under the Copyright Act.
9) That original drawing, being artistic work, is protected till the life time of the author and plus 60 years after the death of author.
10) That the definition of 'Original' provided in Section 2 (g) of the Designs Act, 2000 is in respect of a design and design can not be considered as drawing. Moreover the definition of 'Design' excludes artistic work which includes 'drawing' as discussed herein above.
11) That the original 'drawing' can not be considered as the finished article which is appeal to and judged by solely by the eye.
12) That the word 'copyright' used in Section 15(2) of the Copyright Act ought to be read in context of Section 2(c) of the Designs Act, 2000. Section 2(c) is the definition of 'copyright' which means the exclusive right to apply a design to any article in any class in which the design is registered.
13) That Section 14(c) (i) of the Copyright Act is not applicable as it is related to reproduction of an artistic work in three dimensions of a two dimensional work or in two dimensions of a three dimensional work, however, in Section 2(d) of the Designs Act talks about an article whether in two or three dimensional or in both forms and artistic work is excluded from Section 2(d) and therefore, Section 14(c)(i) can not be with regards to Section 15(2) of the Copyright Act. However, in the judgement dated 27/7/2017 of Hon'ble Delhi High Court in case of Holland Company LP and Anr Vs. S.P. Industries (CS (Comm) 1419 of 2016 wherein the plaintiffs have claimed to be the owners of industrial drawings of Automatic Twist Lock (ATL) system for securing cargo containers. The plaintiff no. 1 invented that product and is a patent holder and copyright owner. The defendant, being aware of the copyright of the plaintiff in drawings, has copied the drawings of the plaintiff from one publication/technical pamphlet which is easily available as the defendant is in the same field. In paragraph no. 22 of this judgement, Hon'ble Delhi High Court is of the view that, "A conjoint reading of Section 2 (d) of Designs Act, 2000, Section 14(c) and 15(2) of the Copyright Act, 1957, makes it amply clear that where a design of an article is prepared for the industrial production of an article, it is a design and registrable under Designs Act and under Section 14(c), the author of such design can claim copyright, however, since such a design is registrable under the Designs Act, and if such design has been used for production of articles by an industrial process for more than 50 times by the owner of the copyright, or, by any other person with his permission, then such person ceases to have copyright in such design." Hon'ble Court has considered industrial drawings as designs because and therefore, an injunction application is rejected.
In the landmark judgement of Hon'ble Delhi High Court (DB) in the case of Mircrofibers Inc vs. Girdhar and Co. & Anr. in the year 2009, Hon'ble DB has discussed the issue related to section 15 of the Copyright Act in detail from paragraph no. 20 on wards. In that case the design of appellate was registered in U.K. as per paragraph no. 31 of the judgement and he sought protection under the Copyright Act in India. Hon'ble DB did not allow the appellant to claim the protection under the guise of the provisions of Copyright Act in respect of the artistic work which was industrially produced. Having read this judgment, with due respect, several questions are raised in my mind .
(1) Whether industrial drawing can be called pure artistic work per se ?
(2) Why has Legislature incorporated 'drawing' as an artistic work under Section 2(c) of the Copyright Act , 1957 ?
(3) Why has 'drawing' not been incorporated under the definition of Design in Section 2(d) of the Designs Act, 2000 ?
(4) Whether the term 'copyright' incorporated in Section 15(2) of the Copyright Act is in context with the provisions of Copyright Act or Designs Act ?
(5) Whether drawing of an article can be part of registration of Design of that article under Section 6 of the Designs Act, 2000 ?
(6) Whether Section 2 (c) of the Copyright Act has diversified original artistic work such as painting against drawing in respect of protection under the Copyright Act ?
(7) Whether 'drawing' can be considered as original artistic work OR applied artistic work ?
(8)Whether the intention of Legislature for 'drawing' as an artistic work used for industry is different than other artistic work mentioned in Section 2(c) of the Copyright Act ?
(9) If original painting is protected under Copyright Act, then original drawing of that painting used for industrial purpose can not be protected under Copyright Act instead of being protected under Design Act ?
10) Whether Hon'ble DB delivered this judgement on the basis of theory of Plato, a great Greek Philosopher ?
Let me discuss the various case laws in respect of the issue involved in this article.
In a case between Ritika Private Ltd. vs. Biba Apparels Pvt Ldt. (CS (OS) No. 182/2011) Hon'ble Delhi High Court single bench on 23rd March,2016 expressed its view by quoting the paragraph nos. 20 to 33 and 33 to 46 of Microfiber's case (DB) as it is binding upon single bench and dismissed the suit rejecting the plea of infringement of copyright in sketches, drawings, designs etc.of plaintiff.
In the case of Photoquip India Limited vs. Delhi photo store & Anr reported in 2014(60)PTC 563 (Bom), Hon'ble Bombay High Court in paragraph no. 25 of the judgement replying upon the judgement of Bombay High Court in a case of Indiana Gratings Pvt. Ltd. & And vs. Anand Udyog Fabricators & Ors. reported in 2009 (39) PTC 609 (BOM), expressed the views that " As in Indiana Gratings, the present plaintiff's drawings are skilled diagrams that do not reflect any finished product, let alone a finished product of any 'visual' or aesthetic appeal. They only serve a functional purpose. They are not, therefore, designs. The plaintiff claims no copyright in the elinchrom FRX 200/ elinchrom FRX 400 flash lights themselves. It claims copyright in drawings, not in articles. The drawings are artistic works, capable of copyright protection. The articles- the flashlights themselves are not. ...." Considering the scope of the definition of 'design' in respect of drawings, in paragraph no. 27 , Hon'ble Bombay High Court was of the opinion that " The very definition of 'design' tells us this : A design is and is only, the "features of shape, configuration, pattern, ornament ........Are the drawings or moulds "applied" to the finished products ? Are they " features of shape, configuration, pattern, ornament or composition of lines or colours ? The "features of shape, configuration, pattern, ornament or composition are aspects of the objects themselves. There is no copyright in the approximately rectangular shape of flash lights, or the manner in which they are configured. There is a Copyright in the initial mechanical or geometric drawings. A design slso does not include any mode or principle of construction and if the drawings describe this mode or this principle , they are by definition, not designs and not capable of registration as designs. The fact it is impossible for the Defendants to reproduce the articles without reverse engineering them and preparing illicit drawings does not put the Plaintiff's drawings outside the protection of the Copyright Act. " Injunction is granted in favour of the plaintiff in this case.
In the Case of John Richard Brady and Others vs. Chemical Process Equipments P. Ltd. and Another reported in PTC (Suppl) (1) 263 (Del) in the year 1987, as per paragraph no. 37 of the judgement, "no opinion was finally expressed by Hon'ble High Court in respect of infringement of copyright claimed by the plaintiffs in drawings of Brady by the production of the Machine in question by the defendants, however, defendants were restrained in view of the prima facie case made out for infringement of their copyright, and of strict confidentiality under the specifications, drawing and other technical information about the FPU were supplied to the defendants. "
Now let me discuss the judgement of House of Lords with regard to the issue involved in this article.
In the case of L.B. (Plastics) Limited v. Swish Products Limited reported in [1979] R.P.C. 551, the plaintiffs, being designers and manufacturers, were the owners of a plastic knock-down drawer system known as the Sheerglide in the field of plastic furniture. The defendants produced a design under the name Swish design. The plaintiffs filed a suit for infringement of artistic work of the drawings. The trial judge held that there was an infringement made by the defendants rejecting the contention of the defendants that the plaintiffs' drawings were not original, nor were they artistic as per the provisions of the Copyright Act 1956. The defendants filed an Appeal which was in favour of the defendants, hence, plaintiffs filed an appeal to the House of Lords. Appeal was allowed by the House of Lords.
In this case the defendants took the defence of Section 9(8) of the U.K. Copyright Act 1956. This section says that "The making of an object of any description which is in three dimensions shall not be taken to infringe the copyright in an artistic work in two dimensions, if the object would not appear, to persons who are not experts in relation to objects of that description, to be a reproduction of the artistic work." The heading of Section 9 is :General exceptions from protection of artistic works. Further, on page no. 619 of the judgement, Hon'ble House of Lords was of the view, " there is a striking similarity between the respondents' drawer and those of the appellants. Moreover, it is clear and was held by the judge that the respondents had the opportunity to copy the appellants' drawer. They had specimen of the appellants' components in their possession......these facts establish a prima facie case of copying which the respondents had to answer. ..." on the base of evidences, the trial court has made clear findings and the court of Appeal ignored the evidence of the witnesses. Further, on page no. 631 of the judgement, the House of Lords was of the opinion that " the drawing was a team effort by the whole of the appellants' drafting and design body and all information embodied in the drawing can, if a substantial part of the drawing be reproduced in a three- dimensional form, be considered for the purpose of deciding whether the three- dimensional form is an infringement..."
In other landmark judgement of Hon'ble House of Lords in King Features Syndicate Inc. vs. O. & M. Kleeman Ltd reported in [1941] A.C. 417; the issue involved in this judgement was regarding the infringement of copyright in original drawings. The plaintiffs were the owners the copyright in original drawings of a well known cartoon character "Popeye the Sailor". The defendants imitated and marketed dolls and brooches without having any licence from the plaintiff and thereby reproduction them. It was held that a copy of an object having three dimensions from another three dimensional object by reproducing a drawing is an amount to an infringement of copyright of artistic work of the drawing. In this case the defence of Section 22 (1) of the U.K. earlier Copyright Acts 1911 was not considered. Section 22(1) of the U.K. Copyright Act is related to Section 15(2) of the Indian Copyright Act, 1957. It was held that " the question of the applicability of Section 22 to exclude copyright protection from a design capable of registration under the Act of 1907 must be decided once for all ascertaining whether the author originally intended the design to be used as a model or pattern to be multiplied by an industrial process. If he did not, then the copyright protection once attaching could not be destroyed by subsequent use of the design, even with the consent of the copyright owner, as a model for industrial reproduction."
In the case of Armstrong Patents Company Limited and others (Appellants) vs. British Leyland Motor Corporation Limited and others (Respondents) reported in [1986] RPC 279, the issue in respect of protection of engineering drawing as an artistic work under Copyright Act was discussed wherein it was held by House of Lords of U.K. that engineering drawing was not entitled to be protected an an artistic work under copyright Act and thereby differed the view expressed in the judgement of L.B. (Plastics ) Ltd mentioned herein above. In this case the respondents BL motor claimed copyrights in the exhaust pipe which was a part of Car. By allowing the Appeal, Hon'ble House of Lords was of the view that "........... Section 10 of the Copyright Act 1956 if the design was registered under the Registered Designs Act 1949 or used industrially, it would not be an infringement of the copyright in the drawing to do anything which was within the scope of the design copyright........To provide a remedy Parliament, by the Design Copyright Act, 1968, repealed much of Section 10 and in effect provided that copyright and design copyright could coexist but that in such circumstances copyright protection should be reduced to that same period of 15 years as design copyright protection. But purely functional objects were not affected by the Act of 1968, they remained excluded from the protection of design copyright. It was further observed that " whenever Parliament grants a right in the nature of a monopoly and copyright is such a right in the nature of a monopoly, and copyright is such a right, it inevitably interferes in some respects with the freedoms of the public that would exist apart from the monopoly.........Sirdar Rubber Company Ltd vs. Wellington Weston & Co (1907) 24 R.P.C. 539, 543 where Lord Halsbury said: "The principle is quite clear although its application is sometimes difficult; you may prolong the life of a licensed article but you must not make a new one under the cover of repair"
In the Case of John Richard Brady and Others vs. Chemical Process Equipments P. Ltd. and Another reported in PTC (Suppl) (1) 263 (Del) in the year 1987, as per paragraph no. 37 of the judgement, "no opinion was finally expressed by Hon'ble High Court in respect of infringement of copyright claimed by the plaintiffs in drawings of Brady by the production of the Machine in question by the defendants, however, defendants were restrained in view of the prima facie case made out for infringement of their copyright, and of strict confidentiality under the specifications, drawing and other technical information about the FPU were supplied to the defendants. "
Now let me discuss the judgement of House of Lords with regard to the issue involved in this article.
In the case of L.B. (Plastics) Limited v. Swish Products Limited reported in [1979] R.P.C. 551, the plaintiffs, being designers and manufacturers, were the owners of a plastic knock-down drawer system known as the Sheerglide in the field of plastic furniture. The defendants produced a design under the name Swish design. The plaintiffs filed a suit for infringement of artistic work of the drawings. The trial judge held that there was an infringement made by the defendants rejecting the contention of the defendants that the plaintiffs' drawings were not original, nor were they artistic as per the provisions of the Copyright Act 1956. The defendants filed an Appeal which was in favour of the defendants, hence, plaintiffs filed an appeal to the House of Lords. Appeal was allowed by the House of Lords.
In this case the defendants took the defence of Section 9(8) of the U.K. Copyright Act 1956. This section says that "The making of an object of any description which is in three dimensions shall not be taken to infringe the copyright in an artistic work in two dimensions, if the object would not appear, to persons who are not experts in relation to objects of that description, to be a reproduction of the artistic work." The heading of Section 9 is :General exceptions from protection of artistic works. Further, on page no. 619 of the judgement, Hon'ble House of Lords was of the view, " there is a striking similarity between the respondents' drawer and those of the appellants. Moreover, it is clear and was held by the judge that the respondents had the opportunity to copy the appellants' drawer. They had specimen of the appellants' components in their possession......these facts establish a prima facie case of copying which the respondents had to answer. ..." on the base of evidences, the trial court has made clear findings and the court of Appeal ignored the evidence of the witnesses. Further, on page no. 631 of the judgement, the House of Lords was of the opinion that " the drawing was a team effort by the whole of the appellants' drafting and design body and all information embodied in the drawing can, if a substantial part of the drawing be reproduced in a three- dimensional form, be considered for the purpose of deciding whether the three- dimensional form is an infringement..."
In other landmark judgement of Hon'ble House of Lords in King Features Syndicate Inc. vs. O. & M. Kleeman Ltd reported in [1941] A.C. 417; the issue involved in this judgement was regarding the infringement of copyright in original drawings. The plaintiffs were the owners the copyright in original drawings of a well known cartoon character "Popeye the Sailor". The defendants imitated and marketed dolls and brooches without having any licence from the plaintiff and thereby reproduction them. It was held that a copy of an object having three dimensions from another three dimensional object by reproducing a drawing is an amount to an infringement of copyright of artistic work of the drawing. In this case the defence of Section 22 (1) of the U.K. earlier Copyright Acts 1911 was not considered. Section 22(1) of the U.K. Copyright Act is related to Section 15(2) of the Indian Copyright Act, 1957. It was held that " the question of the applicability of Section 22 to exclude copyright protection from a design capable of registration under the Act of 1907 must be decided once for all ascertaining whether the author originally intended the design to be used as a model or pattern to be multiplied by an industrial process. If he did not, then the copyright protection once attaching could not be destroyed by subsequent use of the design, even with the consent of the copyright owner, as a model for industrial reproduction."
In the case of Armstrong Patents Company Limited and others (Appellants) vs. British Leyland Motor Corporation Limited and others (Respondents) reported in [1986] RPC 279, the issue in respect of protection of engineering drawing as an artistic work under Copyright Act was discussed wherein it was held by House of Lords of U.K. that engineering drawing was not entitled to be protected an an artistic work under copyright Act and thereby differed the view expressed in the judgement of L.B. (Plastics ) Ltd mentioned herein above. In this case the respondents BL motor claimed copyrights in the exhaust pipe which was a part of Car. By allowing the Appeal, Hon'ble House of Lords was of the view that "........... Section 10 of the Copyright Act 1956 if the design was registered under the Registered Designs Act 1949 or used industrially, it would not be an infringement of the copyright in the drawing to do anything which was within the scope of the design copyright........To provide a remedy Parliament, by the Design Copyright Act, 1968, repealed much of Section 10 and in effect provided that copyright and design copyright could coexist but that in such circumstances copyright protection should be reduced to that same period of 15 years as design copyright protection. But purely functional objects were not affected by the Act of 1968, they remained excluded from the protection of design copyright. It was further observed that " whenever Parliament grants a right in the nature of a monopoly and copyright is such a right in the nature of a monopoly, and copyright is such a right, it inevitably interferes in some respects with the freedoms of the public that would exist apart from the monopoly.........Sirdar Rubber Company Ltd vs. Wellington Weston & Co (1907) 24 R.P.C. 539, 543 where Lord Halsbury said: "The principle is quite clear although its application is sometimes difficult; you may prolong the life of a licensed article but you must not make a new one under the cover of repair"
Considering various decisions on the issue involved in this article, it reveals that there are mixed opinions of various authorities, however, it is true that having been granted patent or registration under Design Act, nobody can create life time monopoly under the guise of Copyright Act as the period of patent is 20 years and 15 years is for Design then under the guise of copyright lifetime plus 60 years monopoly for the same drawings is against the public policy as the protection of law should not be against the interest of public.
The issue involved in this article is the same issue in a case which is pending before Hon'ble Supreme Court. The said issue would be resolved after the judgement of Hon'ble Supreme Court.
Chirag Bhatt
IP Lawyer
09824025041
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