Microfibers Inc. vs. Girdhar & Co. & Anr.

* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ RFA (OS) NO.25/2006

Reserved on : January 21, 2009
Date of Decision : May 28, 2009

Microfibres Inc. .....Appellant
Through : Mr. Raju Ramachandran, Sr. Advocate, with
Ms.Ruchi Agnihotri and Ms.Anushree Tripathi,
Advocates.
Versus

Girdhar & Co. & Anr. .....Respondents
Through : Mr. Prashanto Chandra Sen, Advocate, for the
respondent no.1.
Mr.Rajendra Kumar and Ms. Punita Bhargava,
Advocates, for respondent no.2.

AND

+ FAO(OS) NO. 447/2008

Mattel Inc & Ors. .....Appellants
Through : Mr. Praveen Anand, Ms. Swathi Sukumar and
Ms. Tusha Malhotra, Advocates.
Versus

Jayant Aggarwalla & Ors. .....Respondents
Through : Dr. A.M. Singhvi, Sr. Advocate, with
Mr. Sushant Singh, Advocate.



AND




RFA (OS) No. 25/2006 Page 1 of 72





+ FAO(OS) NO. 326/2007

Dart Industries Inc. & Anr. .....Appellants
Through : Mr. Arun Jaitley, Sr. Advocate, Ms. Jaspreet
Sareen, Mr. Angad Varma and Ms. Pragya Jha,
Advocates.
Versus

Techno Plast & Ors. .....Respondents
Through : Mr. Sanjay Jain, Sr. Advocate, with Mr.
Sushant Singh, Advocate.

CORAM:
HON'BLE MR. JUSTICE MUKUL MUDGAL
HON'BLE MR. JUSTICE VIPIN SANGHI

1. Whether the Reporters of local papers may be allowed to see
the judgment? Yes
2. To be referred to the Reporter or not? Yes
3. Whether the judgment should be reported in the Digest? Yes

JUDGMENT
28.05.2009

: MUKUL MUDGAL,J.
1. This appeal bearing RFA (OS) No.25/2006 arises out of the judgment of
th
the learned Single Judge dated 13 January, 2006 in Suit No. 1480/2002.
2. Since certain common issues arise in this appeal and the other two
appeals i.e. FAO (OS) No. 326/2007 filed by Dart Industries Inc. and FAO
(OS) No. 447/2008 filed by Mattel Inc., on the question of interpretation of


RFA (OS) No. 25/2006 Page 2 of 72


Section 2(c) of the Copyright Act read with Section 2(d) of the Designs Act
and Section 15(2) of the Copyright Act and their interplay with each other, we
have permitted the parties in the connected appeals also to make submissions
on the common legal principles arising in these appeals. However, the
aforesaid two appeals bearing FAO(OS) Nos. 326/2007 and 447/2008 will be
taken up for hearing on facts and other pleas after the pronouncement of the
judgment in the present appeal bearing RFA(OS) No. 25/2006 in the appeal
titled Microfibres v. Girdhar & Co. and Anr.
3. The appellant manufactures and sells upholstery fabrics with designs
derived from the original and unique artistic works either conceptualized or
drawn by its employees or by assignation of the copyright in such artistic
works to the appellant by the original artists.
4. The respondents are also manufacturers of upholstery fabrics and the
learned Single Judge in the judgment challenged in this court has held that the
upholstery fabrics of the respondent do incorporate/reflect the designs founded
upon the appellant‘s artistic works or a substantial reproduction thereof.
5. The grievance of the appellant arises from the premise that the learned
Single Judge held that the designs in question were capable of being registered
under the Designs Act, 2000 and consequently the appellant was not entitled to
seek protection under the copyright law as the designs had not been registered


RFA (OS) No. 25/2006 Page 3 of 72


under the Design‘s Act.
6. The learned Single Judge held as follows: -
a. In order for the work of the appellant to qualify as an artistic work, it
must fall within the sub-section (c) of the Section 2 of the Copyright
Act. A reading of the said provision shows that the attempt of the
appellant can only be to bring it to the concept of ‗painting‘.

b. The comparison with the painting of M.F. Hussain, would be otiose, as
the work in question in the present case, is not a piece of art by itself in
the form of painting.
c. The originality is being claimed on the basis of the arrangement made.
What cannot be lost sight of is the very object with which such
arrangements or works had been made. The object is to put the artistic
work into industrial use.
d. The two important aspects are the object with which it is made, which is
industrial and its inability to stand by itself as a piece of art. In fact, it
has no independent existence in itself.

e. In India, there are special legislations governing the protection of
different nature of rights. In so far as the industrial designs are
concerned, the protection is provided under the Designs Act, 2000.
f. Fabric designs on textile goods have been classified as proper subject


RFA (OS) No. 25/2006 Page 4 of 72


matter of design protection by inclusion as a specific class in the rules
framed under the Designs Act. Such protection is provided under
clause 05 of the New Design Rules, 2001.
g. The exclusion of an ‗artistic work‘ as defined in Section 2(c) of the
Copyright Act from the definition of ‗design‘ under Section 2(d) of the
Designs Act, 2000 is only meant to exclude the original artistic works
like paintings of M.F. Hussain. It is, thus, the original paintings,
sculptors and such works of art which are sought to be specifically
excluded from the definition of Design under the Designs Act, 2000.
h. It is, thus, apparent that in the context of the Indian Law, it is the Design
Act of 1911 or 2000, which would give protection to the appellant and
not the Copyright Act.
i. The application of mind and skill is not being denied nor the fact that the
respondents have copied the same, but that would still not amount to the
works in question being labeled as ‗ artistic work’ within the definition
of Section 2(c) of the Copyright Act and, thus, the protection is not
available under the Copyright Act.
j. At the relevant stage of time, it was the Designs Act of 1911 which was
in operation since the Designs Act, 2000 came into force only in May,
2001. The works of the appellant were capable of registration under the


RFA (OS) No. 25/2006 Page 5 of 72


Designs Act of 1911. The appellant, however, failed to register the same
at that relevant stage of time. That the appellant itself has set out that it
had registered the patterns under the Designs Act in England.
k. Designs copyright was, thus, held to be distinguishable from artistic
copyright. The rights under the Patent and Designs Act were much
narrower than those given by the Copyright Act and in respect of such
products, it was not intended that they should have cumulative
protection both under the Copyright Act, the Patent Act and/or the
Designs Act.
l. What the appellant was actually required to do, was to register the
designs, which the appellant has failed to do. The designs are older and,
thus, would have been registrable under the Designs Act of 1911. The
appellant failed to register the designs. Insofar as the Designs Act of
2000 is concerned, the appellant has also admittedly not registered the
designs under the said Act.
m. It would suffice to say that the patterns and designs of the appellant were
capable of registration both under the old Act and the new Act and the
appellant failed to do so with the result that the protection is not
available to the appellant which would have arisen if they had been so
registered.


RFA (OS) No. 25/2006 Page 6 of 72


n. The appellant has failed to make out a case of having completed the
requisite formalities in law so as to avail the benefit of the exclusive use
of the patterns and designs in question.
7. It has been submitted on behalf of the appellant that the above finding of
the learned Single Judge that the works of the appellant were not original
artistic works within the definition of Section 2(c) of the Copyright Act
proceeds on the misappreciation of law and seeks to draw an artificial
distinction between those works which are pure artistic works and those which
are not. In particular, he has questioned the finding of the learned Single Judge
that the artistic work in question does not have the ability to stand by itself as a
piece of art and in fact has no independent existence in itself. It has been
contended that the exclusion of an ‗artistic work‘ as defined in Section 2(c) of
the Copyright Act from the definition of ‗design‘ under Section 2(d) of the
Designs Act, 2000 is meant to exclude the original artistic work.
8. The following three conclusions of the learned Single Judge have been
questioned in this appeal:-

(i) Re the works in question ―… its inability to stand by itself as a
piece of art. In fact, it has no independent existence in itself.”
(para 62 of the impugned judgment)
(ii) The exclusion of an ‗artistic work‘ as defined in section 2(c) of the


RFA (OS) No. 25/2006 Page 7 of 72


Copyright Act from the definition of ‗design‘ under Section 2(d)
of the Designs Act, 2000 is only meant to exclude the nature of
artistic works like painting of M.F. Hussain (para 65 of the
impugned judgment).
(iii) The application of mind and skill is not being denied nor the fact
that the respondents have copied the same, but that would still not
amount to the works in question being labeled as ‗artistic works‘
within the definition of Section 2(c) of the Copyright Act and,
thus, the protection is not available under the Copyright Act (para
62 of the impugned judgment).

9. The appellant through Senior Counsel Sh. Raju Ramachandran
submitted as follows: -
a. An erroneous and artificial distinction has been drawn by the learned
Single Judge in between artistic works which are a piece of art by
themselves and other works through the interpretation of Section 2(c)
(i), whereas the subjective assessment of the artistic quality of a work
is not required so as to qualify for the protection available under the
Copyright Act, 1957. Reliance has been placed on the judgment in
the case of British Northrop vs. Texteam Blackburn Ltd. (1974)


RFA (OS) No. 25/2006 Page 8 of 72


RPC 57 (ChD) to submit that the works must originate with the
author and not being copies from another work as the only
requirement, so as to qualify for copyright protection.
b. The learned Single Judge found that the works in question were
capable of being registered under the designs law as the Designs Act
classification includes ‗fabrics‘ as articles whose design can be
registered. However, this finding fails to take note of the fact that it
is the nature of the work which determines the intellectual property
rights vested therein and not merely the fact that it falls under the
classification of the Designs Act or the Trade Marks Act. Even the
Trade Marks Act provided for registration of fabrics/textiles in Class
24. What was required to determine the capacity of being registered
under the Designs Act was not whether the object fell into the
classification within the Designs Act, but whether the work in
question satisfied the substantive requirements for registration as a
‗design‘.

c. The phrase ‗capable of being registered‘ must be understood as
referring to designs possessing, at the time of being made, such
essential characteristics which qualify them as ‗designs‘ under the
Designs Act, 2000 i.e. being novel and original as opposed to merely


RFA (OS) No. 25/2006 Page 9 of 72


original as required under the Copyright Act, 1957. The Copyright
Act requirement was merely the originality of the work. For a work
to be within the meaning of ‗capable of being registered‘, it must
satisfy the definition of ‗design‘ as well as the test of the work being
novel or original and of it being sufficiently distinguishable from
known designs or combination of known designs. While the learned
Single Judge noted the respondents submission to the following
effect ―.. designs in use are built around permutations and
combinations of a limited number of motifs/limitations from various
sources and requiring very little by way of distinguishing variations
to claim originality”, yet he went on to hold that the said works are
capable of being registered as designs and the two conclusions are
incompatible. It is also found erroneously by the learned Single
Judge that there is an element of labour and skill applied to a
particular pattern of work in question which clearly required original
artistic works and nevertheless a finding was made that the artistic
works in question are not ‗original artistic works‘.
d. The operation of Section 15(2) of the Copyright Act, 1957 does not
exclude from the ambit of copyright protection, the
subject/underlying artistic works. Consequently, the original


RFA (OS) No. 25/2006 Page 10 of 72


underlying paintings created and acquired/owned by the appellant
which were applied to the textiles with certain modifications do fall
within the meaning of ‗original artistic works‘ defined under Section
2(c) of the Copyright Act, 1957 and thus entitled to copyright
protection. In fact, such works were clearly and expressly excluded
from the definition of ‗design‘ in Section 2(d) of the Designs Act.

e. The paintings are either purchased from a third party or created
inhouse by the appellant, and when an artistic work is purchased from
a third party, a Certificate of Authenticity is obtained from the author
of that painting, declaring that the copyright and the artistic work is
assigned by the owner to the appellant. The original paintings
undergo a series of processes and adaptations for them to be applied
to fabrics, and each of these paintings and the modified drawings are
separately and independently entitled to protection as an ‗artistic
work‘ under the Copyright Act, 1957. The intermediate paintings
leading to the final product satisfy all the requisites of ‗artistic works‘
and have independent existence by themselves as opposed to
technical/engineering drawings solely created for the purposes of
production of a corresponding product, which were no more than
instructions for manufacturing applied to the product in question to


RFA (OS) No. 25/2006 Page 11 of 72


which they may have been applied. The application of adaptations
and modifications to such artistic works on fabrics, may under
Section 15(2) of the Copyright Act, extinguish the copyright
protection therein after 50 productions, but does not affect the
copyright protection afforded to the original work as ‗the artistic
work‘. It also does not affect the existence of separate copyright in
any independent work which may have been used in the context of
the creation of a particular product. The copyright in the
underlying/original artistic work would continue to subsist and can be
enforced by the copyright owner.
f. The respondents‘ fabrics being colorable imitations or substantially
similar copies of the original underlying modified paintings of the
appellant amounted to infringement of the artistic copyright therein.
This is particularly so when inspite of the work of the respondent
being claimed to be independent, no details of such original
independent work were forthcoming. Reliance was placed on the
judgment in the case of Rajesh Masrani vs. Tahiliani Designs Pvt.
Ltd. [2009 (39) PTC 21 (Del.)] which held that Section 2(d) of the
Designs Act, 2000 does not include any artistic work as defined in
Section 2(c) of the Copyright Act. It was also held in the above


RFA (OS) No. 25/2006 Page 12 of 72


judgment that it is evident from the definition of ‗design‘ under the
Designs Act, 2000 that the artistic work as defined in Section 2(c) of
the Copyright Act, 1957 is excluded if any party is able to bring his
case within the framework of Section 2(c) of the Copyright Act, 1957
while claiming the copyright. In such a situation, the suit for
infringement is maintainable.

g. Lastly, the plea of unfair competition which was evident from the
almost identical product of the respondent was lost sight of. The
finding of the learned Single Judge clearly demonstrated that the
respondent having copied the artistic work of the appellant were not
entitled to protection and such an interpretation has led to the blatant
act of copying being permitted on account of mere technicalities. It
has also been submitted that in the criminal proceedings instituted by
the appellant under Section 63 of the Copyright Act, the Additional
Chief Metropolitan Magistrate has rejected the report of the
Investigating Officer stating that no case was made out on the
following findings: -
―The investigating agency did not consider
that the accused by counterfeiting the works
of the complainant were intentionally and
dishonestly deceiving innocent customers
into believing that their products are made by


RFA (OS) No. 25/2006 Page 13 of 72


the complainant and thus dishonestly and
fraudulently induced them to part with
monies for such counterfeit and spurious
products. The IO failed to examine the
aspect that the accused have committed an
offence of cheating and fraud within the
meaning of Section 415 & 420 read with
Section 120B IPC….‖


10. The learned senior counsel summarized his arguments as follows:-
a. The artistic works of the appellant were original ―artistic works‖ within
the meaning of Section 2(c) of the Copyright Act, 1957 and hence the
appellant could claim exclusive rights in the same under Section 14(c) of
the said Act.
b. The true import and content of the definition of Design under the
Designs Act, 2000 specifically excludes ―artistic works‖ as defined by
Section 2(c) of the Copyright Act, 1957 from the definition of ‗Design‘.
c. The artistic works in question being ―artistic works‖ within the meaning
of Section 2(c) of the Copyright Act, 1957, were squarely covered
within the exceptions carved out under Section 2(d) of the Designs Act,
2000, and were hence ―incapable of registration‖ under the Designs Act,
2000, rendering them protectable, solely under the Copyright Act, 1957.
d. Section 15(2) of the Copyright Act, 1957, cannot be said to apply to an
―original artistic works ―, such as those which were the subject matter of


RFA (OS) No. 25/2006 Page 14 of 72


the suit and the appeal, which are incapable of being registered as
Designs.
e. The exclusion in Section 15(2) applies only in respect of works which
have been applied to an article and the said article has been reproduced
more than fifty times.
f. The copyright in the paintings are not extinguished by virtue of Section
15(2) of the Copyright Act, 1957.
g. ―Design‖ as defined by the Designs Act, 1911 as well as the Designs
Act, 2000; means only the features of shape, configuration, pattern or
ornament applied to any article by any industrial process or means; and
to be such must satisfy, inter alia, the test of ―new‖ and ―original‖ and
not merely ―originality‖ as under the Copyright Act, 1957.
h. The analysis to be undertaken to determine whether a work is ―capable
of being registered‖ is not whether the same falls into a classification
within the Designs Act, 2000 or not but rather whether the work in
question satisfies the substantive requirements for registration as a
―design‖.

11 Mr. Arun Jaitley, Sr. Advocate, appeared on behalf of the appellants in
FAO(OS) No. 326/2007 titled as Dart Industries Inc and Anr. vs. Techno Plast


RFA (OS) No. 25/2006 Page 15 of 72


and Ors. and FAO(OS) No. 447/2008 titled as Mattel Inc and Ors. vs. Jayant
Aggarwalla and Ors. He addressed the arguments only on the question of
interpretation of Section 15(2) of the Copyright Act as according to him the
decision in the present case i.e. Microfibres Inc. vs. Girdhar and Co. and Anr.
would also affect the appeals filed by his client.
12. He submitted that his client in the first case is a manufacturer of plastic
utility products. The process involved is the preparation of the drawing which
is called the first stage which then leads to the production of mould/engraving
which is the second stage and from the said mould/engraving, the final product
emerges, which is the third stage.
13. As far as the second case of Mattel is concerned, he submitted that the
stage of mould/engraving is not there and straightaway from the drawing the
product emerges. He further submitted that a design is related to aesthetics and
visual features and utility part of the product relates to, at best, the patent and
not the design law. He submitted that Section 14(c) of the Copyright Act
defines the rights of an owner of a Copyright in an artistic work within the
meaning of Copyright Act. By placing reliance on Section 14(c) (i), he
submitted that such a copyright owner has a right to reproduce the work either
in two-dimensional or three-dimensional products. Section 2(c) which defines
‗artistic works‘ covered specifically both drawings and engravings. The


RFA (OS) No. 25/2006 Page 16 of 72


offending product of the respondent, was made by a process of reverse
engineering which would involve the taking up of the product, creating a
mould from it and finally a drawing. That the moulds and the drawings of the
appellant are copyright protectable under the Copyright Act and could not be,
and are incapable of forming part of the design registration. Inter alia he
submitted that the mould and the drawing do not appeal to the eye as required
under Section 2(d) of the Designs Act. Reliance was placed on Section 15(1)
read with Section 2(c) of the Copyright Act to submit that upon the registration
of a design the loss of copyright is restricted to the stage III i.e. the eventual
product. Section 15(1) does not contemplate stages I and II, that is, the
drawing and the mould not being protected under the Copyright Act. Section
15 of the Copyright Act in its entirety does not affect stages I and II and will
apply to only those cases, which are design registrable and copyright
registrable. That in so far as Section 15 (1) is concerned, the copyright is lost
immediately upon the registration under the Designs Act and the exclusion
under S.15(2) covers the cases which are registrable under the Designs Act and
the product is produced 50 times. Reference was made to Section 2(d) of the
Designs Act and reliance was placed upon a judgment in Ahuja Intellectual
Property Cases Vol.3 NO.5, August 1998 Smithkine Beecham Consumer
Health Care vs. Eden Cosmetics Ltd.


RFA (OS) No. 25/2006 Page 17 of 72


14. The learned counsel for the respondent no.2, Sh. Rajender Kumar
submitted as under: -
A. The appellant‘s case was that the claim of artistic copyright in the fabric
designs is not affected by the definition of ‗design‘ in the new Designs Act,
2000 which specifically excludes ‗artistic work‘ as defined in Section 2(c) of
the Copyright Act, 1957. This plea of the appellant has been termed as
incorrect in law and fact by the learned counsel for the respondent no.2. It is
submitted that the interpretation negates the rationale underlying the copyright
legislation and the design legislation and is not only anti-competitive but also
would throttle and stagnate the industry. Reliance has been placed on the case
of Interlego A.G. vs. Tyco Industries Inc. (1988) R.P.C. 343; Premier
Hangers CC vs. Polyoak (PTY) Ltd. (1997) (1) SA 416 and S.S. Sarna Inc.
and Anr. vs. Talwar and Khullar Pvt. Ltd. and Ors. I.A. Nos. 6597 and 6944
of 1991 in Suit No. 1481 of 1991 decided on August 08, 1991 .
B. Reliance on the above judgments has been placed to show that the
copyright protection relates to the image per se and design protection is for the
manufactured article as a whole. While the protection of the image per se
confers a very broad protection, the protection of the manufactured article
confers only a limited monopoly.
C. The term ‗artistic work‘ under the Copyright Act, 1957 include two


RFA (OS) No. 25/2006 Page 18 of 72


dimensional works such as drawings, paintings, photographs and engravings
and three dimensional works such as sculptures, models and works of artistic
craftsmanship. Under the Copyright Act, the copyright owners have wide
range of rights including the basic right to reproduce their works in a material
form including reproduction in different dimensions. The term of protection
under the Copyright Act is far longer than that of a registered design (life of the
author plus 60 years posthumous as against 15 years under the Designs Act)
and there is no requirement of registration for protection. The copyright
infringement remedies are far broader than those under the Designs Act. For
this purpose, reliance has been placed on paragraphs 19 to 35 of the learned
Single Judge‘s judgment.
D. The design does not stand on its own as an artistic work but is to be
copied or applied in a commercially produced artifact object by an industrial
process conferring protection on the manufactured article itself without any
conceptual separation between the artistic work and the product on which it is
applied. The statutory monopoly granted by the Designs Office is granted for a
limited period of 10 years which is renewable by a further period of 5 years.
E. The crucial test is the industrial intent with which the object is made. It
is submitted that the interpretation sought to be canvassed by the appellant
would have the effect of rendering the design legislation in India redundant


RFA (OS) No. 25/2006 Page 19 of 72


because each design registered thereunder would be able to trace its origin to a
diagram, chart, drawing etc. and thus, cease to be governed by the Designs Act.
This would therefore enlarge the monopoly in industrial design from the
current maximum term of 15 years to that available for a period of the age of
the author plus 60 years available under the Copyright Act. Such an
interpretation is anti-competitive and stagnates industrial innovativeness, the
rationale underlying the statutory monopolies such as designs and patents.
Reliance has been placed on paragraphs 51 and 64 of the learned Single
Judge‘s judgment.
F. Reliance was placed on Section 15 of the Copyright Act, 1957 to
emphasize the clear demarcation between the Copyright Act and the Designs
Act.
G. Even assuming without admitting that the appellant‘s fabric designs fell
within the definition of ‗artistic works‘ so as to enable them to claim protection
under the Copyright Act, the appellant still cannot rely upon any artistic
copyright underlying designs and invoke the protection of the Copyright Act,
1957 in view of the clear mandate provided under Section 15(2) of the Act.
The appellant‘s fabric designs not being registered and having been applied to
by an industrial process more than 50 times, no artistic copyright protection can
be claimed in view of the mandate of Section 15(2) of the Copyright Act, 1957.


RFA (OS) No. 25/2006 Page 20 of 72


For this purpose, reliance has been placed on paragraphs 67 of the learned
Single Judge‘s judgment.
H. Even assuming without admitting that the exclusion of artistic work in
the Designs Act, 2000 has the meaning ascribed to it by the appellant, such a
meaning still does not support the case of the appellant. Section 15 of the
Copyright Act is a limitation on the scope of the artistic works and
contemplates such works which are aesthetic, eye-appealing and ornamental
i.e. pure and simple works of fine arts. Section 15 withdraws the copyright
from such works if such manifestation or features of shape, configuration,
ornament etc. has been applied to an industrial product and multiplied more
than 50 times. Section 15 of the Copyright Act interprets an important
limitation on the scope of protection available to artistic works under the Act
and exclusion of ‗artistic work‘ from the definition of ‗design‘ under Section
2(d) of the Designs Act, 2000, therefore, has to be read in view of the limitation
imposed on copyright by virtue of Section 15 of the Copyright Act.
I. The rationale and philosophy underlying the design protection under the
Designs Act, 1911 and its successor Designs Act, 2000 has remained the same
and is evident from the following factors :-
a. The textile fabrics are registrable and in fact have been registered under
both the Design Acts (1911 & 2999 Acts).


RFA (OS) No. 25/2006 Page 21 of 72


b. Under the Designs Act, the fabric designs on textile goods have been
classified under proper subject matter of design protection.
c. The statement of objects and reasons, the notes on clauses accompanying
the Designs Bill which lead to the enactment of the Designs Act, 2000.
d. The proceedings from the parliamentary debate on the Bill.
e. Hand-outs by the Designs Office for public information.
f. Formal confirmation by the Registrar of Designs that the fabric design
continues to be registrable under the Designs Act, 2000.
Reliance for the purpose has been placed upon paragraphs 65 and 66 of
the learned Single Judge‘s judgment.
J. The appellant‘s case is not that the work in dispute was created as an
artistic work, pure and simple and the plaint states that the appellant has been
in the business of manufacturing and marketing of upholstery fabrics and in
connection therewith has created original artistic works applied by it to such
upholstery fabrics which is manufactured, marketed, sold and exported all over
the world including India by it. The so-called artistic work thus, was always
intended to be an industrial product for the production of a commercially
produced fabric and marketed commercially. Reliance has thus been placed on
the averments in paragraphs 3, 4, 6 and 13 of the plaint.
K. Even on facts, the appellant‘s case is founded on a few designs which in


RFA (OS) No. 25/2006 Page 22 of 72


fact had originated when the repealed Designs Act was in operation. It is also
not in dispute that the subject matter ‗designs‘ was created with an industrial
intent for application to fabric or cloth and more than 50 reproductions have
been made without registering them under the Designs Act.
L. Even the certificates relied upon by the appellant from the U.S.
Copyright Officer refers to the subject matter as fabric designs and not artistic
works.
M. The appellant was conscious of the fact that the registration was required
for registration under the Designs Act and similar design was in fact registered
under the U.K. Designs Act, 1949. Reliance was placed on paragraph 68 of the
learned Single Judge‘s judgment.
N. For the first time in the appeal, it has been averred by the appellant that
the exception ―capable of being registered‖ necessarily connotes and includes
the element of novelty as a necessary requisite for design protection and thus,
lack in novelty makes them incapable of registration under the Designs Act
thereby granting them the protection under the Copyright Act. Such an
interpretation by the appellant is not justified and has been rejected in the
following two judgments i.e. Interlego A.G. vs. Tyco Industries Inc. (1988)
R.P.C. 343 and Bayliner Marine Corp. vs. Doral Boats (1987) FSR 497 .
15. Mr. Prashanto Chandra Sen, who appeared on behalf of the respondent


RFA (OS) No. 25/2006 Page 23 of 72


no.1 submitted as follows: -
a. That the idea of applicability of work/painting/drawing to an article is
central to the concept of design and for this purpose the learned counsel
relied upon the definition of ‗design‘ under Section 2(5) of the Designs
Act, 1911 and Section 2(d) of the Designs Act, 2000. Reliance was
placed on the judgment of Dover LD case 1910 PRC Pg.498 and in
particular the following passages:-
―….The explanation of this lies possibly in
the fact that the novelty may consist not in
the idea itself but in the way in which the
idea is to be rendered applicable to some
special subject matter. The word ―original‖
contemplates that the person has originated
something, that by the exercise of
intellectual activity he has started an idea
which had not occurred to anyone before,
that a particular pattern or shape or
ornament may be rendered applicable to the
particular article to which he suggests that it
shall be applied. If that state of things be
satisfied, then the Design will be original,
although the actual picture or shape or
whatever it is which is being considered is
old in the sense that it has existed with
reference to another article before. It is
more easy by illustration in the concrete
than by words in the abstract to explain what
I mean. First, a few illustrations as to shape.
The traditional figure or Falstaff is as old as
Shakespeare, but if a person conceived for
the first time the idea of making a wine
beaker in the form of the figure of Falstaff
that would be an original design for a wine
beaker……..
….The words ―new or original‖ involve the
idea of novelty either in the pattern, shape or


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ornament itself or the way in which an old
pattern, shape, or ornament is to be applied
to some special subject matter. There must
be the exercise of intellectual activity so as
to originate, that is to say, suggest for the
first time, something which had not occurred
to anyone before as to applying, by some
manual, mechanical, or chemical means,
some pattern, shape or ornament to some
special subject matter to which it had not
been applied before…‖

b. It was further submitted that the distinction between a ‗design‘ and an
‗artistic work‘ lies in the applicability of the former to an article.
Reliance in this regard was placed on the quotation from Copinger‘s Law
th
of Copyright, 5 edition referred in Con Planck Ltd. case 1923 KB 804
wherein it was held that the fundamental distinction between a design
and a simple artistic work lies in the applicability of the former to some
other article.
c. Consequently, the test which was required to be applied was to consider
the design and to see whether it is used or intended to be used as model
of patterns to be multiplied by an industrial process.
d. In respect of the present case, it was submitted that the patterns and
designs were used industrially and commercially in India and abroad as
per the case set up by the appellant in the plaint.
e. The case set up by the appellant-plaintiff would result in every tracing,


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drawing etc. being protected under the Copyright Act and also being
industrially/commercially exploited, by being applied to articles which
was not the intention of the Designs Act. Reliance was placed on the
judgment of Pugh vs. Riley 1912 RPC 196 which emphasizes the fact
that a design necessarily requires something in the nature of a drawing or
tracing. The following quotation from the above judgment was relied
upon by the learned counsel for the respondent no.1:-
―A design to be registrable under the Act
must be some conception or suggestion as to
shape, configuration, pattern, or ornament.
It must be capable of being applied to an
article in such a way that the article, to
which it has been applied, will show to the
eye the particular shape, configuration,
pattern or ornament, the conception or
suggestion of which constitutes the Design.
In general, any application for registration
must be accompanied by a representation of
the design; that is, something in the nature
of a drawing or tracing, by means of which
the conception or suggestion constituting the
Design may be imparted to others. In fact,
persons looking at the drawing ought to be
able to form a mental picture of the shape,
configuration, pattern, or ornament of the
article to which the Design has been
applied.‖

f. It was consequently submitted that what was capable of being registered
as a design is the tracing, drawing etc. as applied to an article and not the
tracing or drawing itself. The tracing, drawing etc. once applied to an


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article becomes incapable of being registered as a design.
g. The plea of the appellant was that even if the drawing or painting is
applied to an article, it is still not being capable of being registered as a
design because the original drawing/painting is protectable under
copyright and artistic works protected by the copyright are excluded
from the ambit of design. It is submitted that the above interpretation
relied upon by the appellant is flawed as no tracing, drawing or painting
which is applied to an article and commercially exploited can be
registered as a design. In such an event the Designs Act would become
otiose as every design necessarily traces its origin to a drawing or a
painting.
h. Different kinds of protection for an artistic work and commercially
exploited work have been made available by the Legislature and, thus,
the applicability of the drawing/tracing/mould being applied to articles is
crucial to the concept of design as it is only the applicability of a
tracing/drawing to an article which makes the work commercially
exploitable.
i. The copyright protection is available for the lifetime of the author or
sixty years whereas such a long period of protection is not available
under the Designs Act or the Patents Act. The legislative intent is


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obvious as the products being commercially exploited cannot be granted
a longer protection. Reliance was also placed on the judgments in
Interlego case (1988) RPC 343 at page 353, M/s. S.S. Sama, M/s.
Samsonite case 73 (1998) DLT 732; M/s. Deepak Printary, Ahmedabad
vs. The Forward Stationery Mart & Anr. (1976) XVII Gujarat R 338 .
We might notice that in the Interlego case the following position of law
was laid down: -
―The definition of ‗design‘ in section 1(3) of
the Act of 1949 is hardly a model of
Parliamentary draughtsmanship and this is
by no means the first case in which its
meaning and application have been called in
question. In approaching the question of
construction there has to be borne in mind
that the purpose of the Act, as appears both
from its terms and its legislative history, is
to protect novel designs devised to be
‗applied to‘ (or, in other words, to govern
the shape and construction of) particular
articles to be manufactured and marketed
commercially. It is not to protect principles
of operation or inventions which, if
protected at all, ought to be made the
subject-matter of a patent. Nor is it to
prevent the copying of the direct product of
original artistic effort in producing a
drawing. Indeed the whole purpose of a
design is that it shall not stand on its own as
an artistic work but shall be copied by
embodiment in a commercially produced
artifact. Thus, the primary concern is what
the finished article is to look like and not
with what it does and the monopoly
provided for the proprietor is effected by
according not, as in the case of ordinary
copyright, a right to prevent direct


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reproduction of the image registered as the
design but the right, over a much more
limited period, to prevent the manufacture
and sale of articles of a design not
substantially different from the registered
design. The emphasis therefore is upon the
visual image conveyed by the manufactured
article.‖

j. He further submitted that the issue is academic in the present case as
admittedly the designs of the appellant were made and sold much prior
to 2000 and therefore, the definition of the Designs Act, 2000 would not
be applicable in the present case.

k. By placing reliance on Section 15(2) of the Copyright Act, 1957, it was
submitted that the reproductions have been sold commercially in India
and abroad by the appellant and the said reproduction are more than 50
in number and the appellants have modified their case only to overcome
this and a plea has been raised that at first the original artistic works
were sourced and thereafter they were considerably modified and applied
to upholstery fabrics manufactured by the appellant company. Such a
plea did not figure in the plaint.
l. This is evident from the plea taken for the first time i.e. the underlying
artistic works were not applied to any article and as such the
extinguishment of the copyright under Section 15(2) of the Copyright
Act does not apply to the said paintings.


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16. Mr. Sanjay Jain, the learned Senior counsel appearing on behalf of the
respondent no.1 in FAO (OS) No.326/2007 titled as DART Industries Inc. &
Anr. v. Techno Plast & Ors., has made the following submissions in respect of
the interplay of the Designs Act and the Copyright Act: -

a. In so far as the ‗artistic work‘ is concerned, it has a different connotation
under the two Acts and enjoys different levels of copyright protection.
b. Under Section 2(d) of the Designs Act, the exclusion of ‗artistic work‘ is
confined only to those artistic works governed by the Copyright Act.
The above definition itself clearly stipulates that there are two categories
of ‗artistic works‘ – one governed by the Designs Act and the other by
the Copyright Act. The artistic work governed by the Designs Act
consequently receives copyright cover under Chapter III of the Designs
Act and the residuary categories of artistic works receive protection
under the Copyright Act.
c. It is, therefore, necessary to determine the purpose for which the artistic
work was created so as to determine which enactment applies. The
creation of artistic work at the original stage/threshold level and then to
assess if at all, at what stage it was decided to put it for industrial
application, is also a relevant factor. Once the artistic work falls within


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the category of Designs Act, it cannot revert back to the protection of the
Copyright Act as once having been put to industrial use by replicating it
50 times, the protection under the Copyright Act is lost permanently.
Consequently, once such artistic work is put to an industrial application,
the intent of the author at the initial/conceptual stage becomes immaterial
and copyright can only be preserved under the second category governed
by the Copyright Act, even though the expression ‗design‘ is not
specifically used under Section 2(c) of the Copyright Act. The ‗design‘
is certainly an artistic work at the initial stage and depending upon its
application acquires protection of either the Copyright Act or the
Designs Act if the industrial application is resorted to. This is evident
from the exclusion embodied in Section 2(d) of the Designs Act.
d. Since in the case of Microfibre Inc and Dart Industries Inc, it has been
stated in the plaint that the artistic works in question were
created/conceived by the in-house employees/promoters for the sole and
pre-determined purpose of using the same as designs, meant for
industrial application, the creation of the artistic work constitutes an
integral part of a pre-programmed ‗manufacturing process‘. There is an
industrial application and its segregation into two or three stages such as
drawing/painting/moulding is not feasible under the regime of the


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Copyright and/or the Designs Act.
e. Section 2(j) of the Designs Act recognizes the existence of proprietary
rights in a new or original design and as per Section 2(g) of the Designs
Act, ―originality‖ in relation to a design means as originating from the
author of such design. Consequently, the expression ‗appeal to and
judged solely by the eye‘ occurring in Section 2(d) does not necessarily
connote any aesthetic beauty in the classical sense but merely refer to
such artistic works which have the capacity to enhance decorative value
or visual appeal when applied to a finished article and can be distinctly
perceived through human eye as various features described in Section
2(d) of the Designs Act i.e. (a) shape (b) configuration (c) ornament
and/or (d) composition of lines or colours.
f. The goods falling in all the above three categories fall under the
classification of the Designs Act and in fact, in the Tupperware case, the
plaintiffs had got a registration under the Designs Act.
g. The learned counsel further submitted that the second of the two
categories of artistic works are those works, which to begin with, were
not put to industrial application and would be covered under the
definition of Section 2(c) of the Copyright Act. Further, if such an
artistic work is put to industrial use as defined in Section 15(2) by the


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industrial application of 50 replications, it then loses its copyright
protection and no protection is then available to such artistic work under
the Copyright Act. Such extinguishment of copyright protection under
Section 15(2) of the Copyright Act, once applied to final product as a
design, whether through the conversion of a drawing into a two
dimensional product or the conversion of drawing to moulding,
eventually resulting in three-dimensional product, nevertheless, does not
provide any copyright protection to the intermediate stages such as
drawing/painting/moulding.
h. Once an artistic work extinguishes, it loses the protective cover of the
Copyright Act. As per application of Section 15(2) the protection under
the Copyright Act ceases forever. The protection under Section 15(2) of
the Copyright Act is not available at the initial stage of such artistic
work, which at the threshold level are created for industrial application
by obtaining registration under the Designs Act and such works stand
covered by Section 15(1) of the Copyright Act. Such category of artistic
work is completely excluded from the coverage under the Copyright Act
at the threshold and even under the meaning of Section 2(c) of the
Copyright Act, no protection is available to such works at any stage as
the process of obtaining registration under the Designs Act is a clear


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intention of abandoning the protection of the Copyright Act.
Consequently, the two-stage theory for the underlying copyright
coverage cannot apply as evident from perusal of Section 15(2) of the
Copyright Act.
i. Consequently, an artistic work falls in the basket of Designs Act by
being created to be used as a design only; though not originally created
to be used as design but subsequently relegated or pushed to be used as a
design for being applied on a finished article after being produced more
than 50 times.
j. It is significant that the definition of artistic work in Section 2(c) of the
Copyright Act does not use the expression ‗design‘ as a variant or
constituent of artistic work.
k. Once the ‗design‘ as a concept or as a variant is conspicuous by its
absence from the definition of ‗artistic work‘ under the Copyright Act, it
is clear that a design cannot be de-structured or de-constructed by
reverse engineering or otherwise to be an ‗artistic work‘ within the
meaning of Copyright Act.
l. However, an artistic work can be lifted to the level of design under
Section 15(2) of the Copyright Act. This is evident from the definition
of ‗design‘ under the Designs Act which removes all doubts and


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possibilities of overlapping or an equivocal interpretation of the
expression ‗design‘ in the context of an ‗artistic work‘ and excludes
those artistic works from its ambit which has not been (a) created or (b)
used as a design and then proceeds to confer copyright on such artistic
works under Chapter III of the Designs Act.
17. Dr. Singhvi, the learned Senior counsel appearing on behalf of the
respondents in FAO(OS) No.447/2008 titled as Mattel Inc. v. Jayant Agarwalla
& Ors., submitted as follows: -
I. Section 15 of the Copyright Act was retained for the purpose of statutory
harmony between the Designs Act, 2000 and the Copyright Act, 1957. The
scheme of the Designs Act of 1911 is the same and except the amendment in
Section 2 (d) of the Designs Act, 2000 which excludes artistic work defined
under Section 2(c) of the Copyright Act, 1957, the object was evident and was
to prevent a very long-term or perennial monopoly of a person who was
commercially exploiting something and yet enjoying long periods of copyright
protection. The retention of Section 15 of the Copyright Act, 1957 inspite of
the Designs Act, 2000 is relevant and shows that the legislature intended that
Section 15 integrates the two Acts. The acceptance of the appellant‘s plea
would render the need to register the design under the Designs Act nugatory as
a design proponent would automatically get a larger period of copyright


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protection under the Copyright Act. Such an interpretation would indeed
render the Designs Act otiose.
Section 15(1) of the Copyright Act clearly notes the impact of the
Designs Act, 2000 and promotes the mandate that the copyrightable designs
shall not enjoy Copyright protection. Conversely, the Designs Act, 2000
excludes other copyrights not intended to be covered by the Designs Act.
An example of a painting of ‗Ganesha‘ was given which would enjoy
full copyright protection during the lifetime of the author plus 60 years.
However, if the author applied the said painting of ‗Ganesha‘ to a furnishing, to
be commercially reproduced, such a painting when applied to a furnishing gets
limited copyright protection under the Designs Act, 2000. The act of applying
the painting to a furnishing, however, does not mean that the full copyright
protection of the stand alone work of art/artistic work such as ‗Ganesha‘ is lost.
If anyone seeks to only reproduce the drawing/painting as a standalone work of
art, it would violate copyright of the author.
Section 15(2) of the Copyright Act protects copyright in unregistered
designs only till 50 reproductions are made. This clearly demonstrates the
reciprocal statutory legislative intent which promotes harmony and not
disharmony. On an assumption that Section 15 was not present in Copyright
Act, the legislature could not have intended that the anomalous situation arises


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allowing industrial designs to claim monopoly under the Copyright Act too.
This rule out the applicability of the repugnant legislation which only applies in
respect of interpretation of List III of the Constitution.
II. The mischief sought to be protected by the amendment in the Designs
Act, 2000 is the larger protection period under the Copyright Act for a design
which has been put into commercial production. Consequently, the mischief
sought to be prevented is not the mischief of copying but of the larger
monopoly claimed by the design proponent inspite of commercial production.
The objects and reasons of the Designs Act clearly show that the legislature
intended by virtue of Designs Act to promote design activity, competition and
lessen the monopoly period. This is the finding in Microfibres Inc. vs.
Girdhar & Co 2006 (32) PTC 157 in the following terms: -
― the mischief which is sought to be prevented by
reading Section 15 is not copying by the
respondent, but the mischief which is intended to be
prevented by Section 15 is that a right holder cannot
switch over the monopoly right and indirect claim
right over a designable subject matter. ‖

In the case of Indian Handicrafts Emporium and Others vs. Union of
India and Others (2003) 7 SCC 589 the mischief rule has been thus enunciated
by the Supreme Court as under: -
―104. xxx


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xxx
xxx

42. In Jones vs. Wrotham Part Settled Estates, AC
at p.105 , the law is stated in the following terms:

‗….I am not reluctant to adopt a purposive
construction where to apply the literal
meaning of the legislative language used
would lead to results which would clearly
defeat the purposes of the Act. But in doing
so the task on which a court of justice is
engaged remains one of construction, even
where this involves reading into the Act
words which are not expressly included in it.
Kammins Ballrooms Col. Ltd. vs. Zenith
Investments (Torquay) Ltd. provides an
instance of this, but in that case the three
conditions that must be fulfilled in order to
justify this course were satisfied. First, it
was possible to determine from a
consideration of the provisions of the Act
read as a whole precisely what the mischief
was that it was the purpose of the Act to
remedy ………………..‘


Similar view was taken in the case of S.Gopal Reddy vs. State of A.P.
(1996) 4 SCC 596 wherein it was held as under: -
―…He must set to work on the constructive
task of finding the intention of the
Parliament, and he must do this not only
from the language of the statute, but also
from a consideration of the social
conditions which gave rise to it and of the
mischief which it was passed to remedy,
and then he must supplement the written
word so as to give ‗force and life‘ to the
intention of the legislature…….‖


III. The purpose of the Designs Act is that any aesthetic ―not classical‖ value


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as applied to an article and appealing to eye is protected. The protection is
afforded to aesthetic and ornamental aspects of two dimensional and three
dimensional products as well as the idea of applying such aesthetic and
ornamental aspects to the product. The design registration giving protection of
15 years encourages commerce and if there was no Section 15 of the Copyright
Act, the copyright protection would then be perpetual in effect rendering the
Designs Act otiose.
The three levels of protection suggested by Mr. Jaitley, the learned
Senior Counsel, i.e. the sketch, mould and product seeks to circumvent the
legislative intent by achieving what is prohibited directly; that is enlarging the
monopoly of commercial products.
Every design is traceable to a mould or a drawing and the only test which
needs to be applied is the intent of creating the mould.
IV. It is evident that the intent of making the mould is not to sell the mould
as a stand alone product on the article on which the mould or design would be
applied. Thus, a drawing or mould eventually merges into an article and
becomes part of the product and the copyright in the drawing or mould may
remain as per the Copyright Act, 1957 but would stand reduced for the mould
or drawing as applied to an article to 15 years, due to the commercial
production and the emerging of the drawing and the mould into article. It is


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also submitted that if any monopoly right over the article is lost, then the stages
antecedent to the article has no value.
V. The design proponent once having elected to produce the article
commercially cannot claim the larger period of copyright protection as once a
right holder chooses to have patent/design right over an article then by virtue of
operation of doctrine of election, the indirect right of copy over the drawings is
abandoned/foregone by a right holder. This position was held in the case of
Catnic Components Ltd. vs. Hill & Smith Ltd. (1978) F.S.R. Vol.4 405 .
VI. Non-application of the doctrine of election would result in term of
inconsistency that is the protection of design right for a period of more than 15
years. The claim of the appellant‘s in Dart Industries Inc . and Mattel Inc. are
inconsistent with the copyright protection of 15 years by virtue of the Designs
Act, 2000 and would amount to extending the copyright to the term of the
lifetime of the author plus 60 years.
VII. The article is to be seen as a whole and the appeal of the article, subject
matter of the design protection forms part of the article itself and hence cannot
be protected as separate work of art.
18. In his rejoinder arguments Mr. Praveen Anand has argued that there is a
vital difference between the subject matter of copyright and design protection.
I. He has tabulated the essential features of copyright and design protection


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as follows:

II. He submits that the election theory or intention test, as is propounded by
the respondents is flawed. He submits that the election theory that the creator
of an artistic work loses his copyright upon application of the work to an article
or if the artistic work is created with the intention of being used as a design is
improper and that it would lead to inequitable situations. The reasons for this
submission of his are:


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(a) The application of an artistic work to an article may not be in
contemplation of the person creating the artistic work at the time of creation.
Illustration: For instance, if ―A‖ creates an artistic work in the year 2001 and
releases it in an art gallery. In 2003, the work is applied to an article.
Under the interpretations of the respondents, ―A‖ will not be entitled to
copyright protection under Section 15 (2) of the Copyright Act, 1957.
―A‖ will also not be entitled to design protection under Section 19(1) (b)
of the Designs Act, 2000, as the ―design‖ has been published by the exhibition
of the artistic work in the art gallery in 2001
This will lead to an anomalous situation, where artists would be deprived
of both rights.
(b) The application of the artistic work may be the thought of subsequent
assignee and not the original artist; and
(c) The article to which the work is applied may itself come into existence in
future (e.g. KINDLE by Amazon) and may not be in existence at the time the
artistic work was created.
III. Mr. Anand submits that the extension of rights can arise only on the
happening of two events which are as under:

A. Registration of a design is necessary. This is only possible if there is an


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article, under the Designs Act (Section 15 (1) of the Copyright Act, 1957)

So the intention test is non-workable as it discloses the ambiguity and
uncertainty of:-
i. Whose intention is relevant?
ii. When should the intention have existed; and

iii. Intention to do what

B. Copyright in the design is capable of being registered and is reproduced
over fifty times (Section 15 (2) of the Copyright Act, 1957). For this provision
to apply, an ‗article‘ has to exist, as defined under the Designs Act.
IV. Consequently, for Section 15 of the Copyright Act to get triggered it is
not steps 1, 2 and 3 but steps 4 and 5 which trigger the section.
1. Creation of an artistic work
2. Formation of an intention by someone to apply the work to an article.
3. Creation of an article

4. Getting design for the article
5. Not getting a design registered but multiplying it fifty times
V. He submits that what stands extinguished is the copyright in the design
and applied to an article and not the copyright in the artistic work itself. He


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refers to Schedule 3 of the Designs Rules 2001 which deals with classification
of goods for purpose of registration as a design to point out that the schedule
uses expressions like equipment, apparatus, articles etc. but does not use the
expression ―Drawings‖. He submits that the extent of extinction is copyright in
the design for that article for which steps 4 and 5 above, namely registration or
mass- multiplication have taken place. The copyright in the artistic work, as
also the copyright in designs for non-registered and non-mass multiplied
articles is preserved.
VI. He submits that he would make his submissions with regard to the
meaning of an ―article‖ and on the scope of Section 2 (d) on the Specific
Reference to the facts of the Mattel Inc.‘s case and submissions in that respect
has not been made as at present.
19. The relevant statutory provisions are as follows: -

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20. After taking into account the above pleas, we are of the view that Section
2(c) of the Copyright Act defines ―artistic work‖ to mean a painting, sculpture,
a drawing (including a diagram, map, chart or plan), and engraving or
photograph, whether or not any such work possesses artistic quality. It also
includes a work of architecture and any other artistic craftsmanship. This
definition has a very wide connotation as it is not circumscribed by any
limitation of the work possessing any artistic quality. Even an abstract work,
such as a few lines or curves arbitrarily drawn would qualify as an artistic


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work. It may be two dimensional or three dimensional. The artistic work may
or may not have visual appeal.
21. The rights to which a holder of an original artistic work is entitled are
enumerated in Section 14(c) of the Copyright act. These are, the right:
(i) To reproduce the work in any material form including depiction in
three dimensions of a two dimensional work or in two dimensions of
a three dimensional work;
(ii) To communicate the work to the public;
(iii) To issue copies of the work to the public not being copies already in
circulation.
(iv) To include the work in any cinematograph film;
(v) To make any adaptation of the work;
(vi) To do in relation to an adaptation of the work any of the acts
specified in relation to the work in sub-clauses (i) to (iv)
22. Therefore, it is the exclusive right of the holder of a Copyright in an
original artistic work to reproduce the work in any material form. For example,
a drawing of an imaginary futuristic automobile, which is an original artistic
work, may be reproduced in the three-dimensional material form using an
element, such as a metal sheet. When the copyright holder of an original
artistic work reproduces the same in another material form, he may, or may not


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do so by employing an industrial process or means which may be manual,
mechanical or chemical, separate or combined, on an article. If the
reproduction of the original artistic work is done by employing an industrial
process, as aforesaid, on an article, and the same results in a finished article
which appeals to the eye as adjudged solely by the eye, then the features of
shape, configuration, pattern, ornament or composition of lines or colours
applied to the article by the industrial process constitutes a ―design‖, within the
meaning of this expression as defined under the Designs Act.
23. There is, therefore, a clear distinction between an original artistic work,
and the design derived from it for industrial application on an article. This
position is clarified by the use of the expression ―only‖ before the words ― the
features of shape, configuration, pattern, ornament or composition of lines or
colours ‖ in the definition of ―design‖ in the Designs Act. Therefore, the
original artistic work, which may have inspired the creation of a design, is not
merely the feature of shape, configuration, pattern, ornament or composition of
lines or colours which are created to apply to an article by an industrial process.
The original artistic work is something different from the design. Secondly, the
definition of ―design‖ expressly excludes, inter alia, any artistic work defined
in section 2(c) of the Copyright act, 1957.
24. It needs to be emphasized that it is not necessary that in every case a


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design has to be preceded by an artistic work upon which it is founded. A
craftsman may create a design without first creating a basic artistic work. This
may best be illustrated by a weaver who may straightaway create a design
while weaving a shawl, which product could be created even without the basic
artistic work.
25. Whether or not a design is preceded by an original artistic work, a design
would, in its own right qualify to be termed as an artistic work within the
meaning of Section 2(c) of the Copyright Act. This is so because the
expression ‗artistic work‘ as defined in Section 2(c) of the Copyright Act bears
a wide definition to mean a painting, a sculpture, a drawing (including a
diagram, map, chart or plan), an engraving or a photograph, whether or not any
such work possesses artistic quality. However, the design may or may not
enjoy a copyright protection under the Copyright Act, depending on whether it
is an ‗original artistic work‘ or not.
26. The expression ― copyright in any design ‖ used in Section 15(2) means
the copyright as understood under the Copyright Act, and not under the
Designs Act. This is evident from the expression ― copyright shall not subsist
under this Act ……‖ used in sub-section (1) of Section 15. However, copyright
in an artistic work subsists provided it is an original artistic work. Therefore,
there can be no claim for Copyright under the Copyright Act in an artistic work


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which does not have the quality of possessing originality. The holder of a copy
of an original artistic work cannot claim copyright protection. Therefore, to be
entitled to protection under the Copyright Act, the design should have
originality. That is not to say that if the design is not entitled to copyright
protection under the Copyright Act, on account of it not possessing originality
vis-à-vis the original artistic work, the design does not require, or cannot be
granted registration under the Designs Act for it to be entitled to protection
under the Designs Act.
27. Under the Designs Act, a copyright has a different connotation from a
copyright under the Copyright Act. Under the Designs Act, copyright means
the exclusive right to apply the design to any article in any class in which the
design is registered.
28. The issue with regard to the extent of, and the conditions for the
copyright protection to such an artistic work, as an artistic work under the
Copyright Act, which is a design registered or capable of registration under the
Designs Act, is what is dealt with, by section 15 of the Copyright Act. Once
the distinction between the original artistic work and the design derived from it,
and the distinction between Copyright in an original artistic work under the
Copyright Act, and a copyright in a design under the Designs Act is
appreciated, the meaning and purport of section 15 of the Copyright Act


RFA (OS) No. 25/2006 Page 52 of 72


becomes clear.
29. Section 15 of the Copyright Act is in two parts. The first part i.e. sub-
section (1) states that copyright shall not subsist under the Copyright Act in any
design which is registered under the Designs Act. Consequently once the
design is created and got registered under the Designs Act, whether or not the
design is eventually applied to an article by an industrial process, the design
loses its protection as an artistic work under the Copyright Act. Therefore,
subject to whatever rights that are available under the Designs Act, the
registered design holder cannot claim protection or complain of copyright
infringement in respect of the registered Design under the Copyright Act.
30. Subsection (2) of section 15 deals with the situation where the design,
which is capable of being registered under the Designs Act, is not so registered.
It provides that copyright in such a design shall cease as soon as any article to
which the design has been applied has been reproduced more than 50 times by
an industrial process by the owner of the copyright or with his licence, by any
other person. It is clear to us that the Parliament in Section 15 of the
Copyright Act was dealing with the aspect of copyright in a
registered/registrable design, as understood in the Copyright Act and not the
Designs Act. Else, there was no need to deal with this aspect in the Copyright
Act. The same would have been dealt with under the Designs Act. Therefore,


RFA (OS) No. 25/2006 Page 53 of 72


the law tolerates only a limited industrial, or shall we say commercial,
exploitation of the original artistic work by the application/reproduction of the
said work in any other form or reproduction of copies thereof in exercise of the
rights under Section 14(c)(1) and 14(c)(iii) of the Copyright Act. Beyond the
specified limit, if the design derived from the original artistic work is exploited
(i.e. if the design is applied more than 50 times by an industrial process on an
article) the copyright in the design ceases unless it is registered under the
Designs Act.
31. We are also of the view that it is not correct on behalf of the appellant to
urge that the intention of the creation of the work determines the Intellectual
Property Rights contained therein, and not whether such work fell within the
classification of ―Designs‖ under the Designs Act or the Copyright Act. The
Designs Act nowhere stipulates the intention of the creator of the work as a
determinative criteria and the exhaustive definition given not only in the
Designs Act but indeed the Copyright Act clearly rules out such interpretation
as suggested by Shri Raju Ramachandran. In fact, the appropriate occasion to
evaluate the registrability of a design would arise when the artistic work is
translated into an object having features of shapes, configuration, pattern,
ornament or composition of lines or colors whether two dimensional or three
dimensional by employing an industrial process. Significantly, the appellant


RFA (OS) No. 25/2006 Page 54 of 72


themselves have registered their product under the Designs Act in U.K.
Furthermore, as submitted by the appellant, even if there is very little variation
between the original artistic work and the design which is industrially applied
to an article to produce a product, nevertheless, such a design can claim
registration under the Designs Act, provided such registration was sought. The
interpretation suggested by the appellant would clearly afford not only the
design protection in case of registered works but also in addition, the copyright
protection to the works which were industrially produced, which interpretation
does not reflect the legislative intent.
32. A perusal of the Copyright Act and the Designs Act and indeed the
Preamble and the Statement of Objects and Reasons of the Designs Act makes
it clear that the legislative intent was to grant a higher protection to pure
original artistic works such as paintings, sculptures etc and lesser period of
protection to design activity commercial in nature. The period of copyright
would be the author‘s life span plus 60 years. However, the legislature has
allocated a lesser time span for the protection available to a registered design as
only being 15 years. Thus, commerce and art have been treated differently by
the Legislature and any activity which is commercial in nature has been granted
lesser period of protection. On the other hand, pure artistic works per se have
been granted a longer protection.


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33. The Statement of Objects and Reasons of the Designs Act, 2000 reads as
follows: -
―Since the enactment of the Designs Act, 1911 considerable
progress has been made in the field of science and
technology. The legal system of the protection of industrial
designs requires to be made more efficient in order to ensure
effective protection to registered designs. It is also required
to promote design activity in order to promote the design
element in an article of production. The proposed Designs
Bill is essentially aimed to balance these interests. It is also
intended to ensure that the law does not unnecessarily extent
protection beyond what is necessary to create the required
incentive for design activity while removing impediments to
the free use of available designs.‖

The legislative intent is, thus, clear that the protection accorded to a work
which is commercial in nature is lesser than and not to be equated with the
protection granted to a work of pure art.
34. Section 6 of the Designs Act, 2000 reads as follows:
“6. Registration to be in respect of particular article.—(1) A
design may be registered in respect of any or all of the
articles comprised in a prescribed class of articles.
(2) Any question arising as to the class within which
any article falls shall be determined by the Controller
whose decision in the matter shall be final.
(3) Where a design has been registered in respect of any
article comprised in a class of article, the application of the
proprietor of the design to register it in respect of some one
or more other articles comprised in that class of articles
shall not be refused, nor shall the registration thereof
invalidated—
( a ) on the ground of the design not being a new or
original design, by reason only that it was so previously
registered; or
( b ) on the ground of the design having been previously
published in India or in any other country, by reason only


RFA (OS) No. 25/2006 Page 56 of 72


that it has been applied to article in respect of which it was
previously registered:
Provided that such subsequent registration shall not
extend the period of copyright in the design beyond that
arising from previous registration.
(4) Where any person makes an application for the
registration of a design in respect of any article and
either—
( a ) that design has been previously registered by
another person in respect of some other article; or
( b ) the design to which the application relates consists
of a design previously registered by another person in
respect of the same or some other article with modifications
or variations not sufficient to alter the character or
substantially to affect the identity thereof,
then, if at any time while the application is pending the
applicant becomes the registered proprietor of the design
previously registered, the foregoing provisions of this
section shall apply as if at the time of making the
application, the applicant, had been the registered
proprietor of that design.”

A perusal of the above Section 6 clearly indicates that once the design
has been registered for a particular article comprised in a class of articles, the
subsequent registration of other articles comprised in that class of articles shall
not be refused but the subsequent registration shall not extend the period of
copyright in the design beyond that arising from the previous registration. It is
significant that the subsequent registration has statutorily been mandated not to
extend the period of copyright registration beyond the period beginning from
the original registration. This clearly shows the legislative intent of limiting
the copyright protection in the design to the initial period of 10 years,
extendable by further period of 5 years.


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35. However, there can be no quarrel with the plea of Shri Ramachandran
that the operation of Section 15(2) of the Copyright Act does not exclude from
the ambit of Copyright protection either the original ―artistic work‖ upon which
the design is based or the design which by itself is an artistic work. It cannot
be disputed that the original paintings/artistic works which may be used to
industrially produce the designed article would continue to fall within the
meaning of the artistic work defined under Section 2(c) of the Copyright Act,
1957 and would be entitled to the full period of copyright protection. This is
also evident from the definition of the design under Section 2(d) of the Designs
Act. This, in our view, in fact is a factor which would go against the appellants
in construing the nature of protection to be given to the original artistic work
such as a painting, as contrasted with the applied artistic work that is the
design, which in the present case does not mean the intermediary medium such
as a mould, engraving devised/produced only to enable industrial application of
the painting to produce the furnishing products of the appellant. Thus, while
the original painting would indeed be entitled to the copyright protection, the
commercial/industrial manifestation of such paintings such as the design
derived from and founded upon the original painting for the purpose of
industrial production of furnishings would only be covered by the limitations
placed in Section 15 of the Copyright Act and would get protection if


RFA (OS) No. 25/2006 Page 58 of 72


registered as a design under the Designs Act but would enjoy lesser period of
protection in case of a registered design.
36. This clearly shows that the legislature intended that even if the artistic
work such as a painting has been used as the basis for designing an industrially
produced object for commerce, such as the furnishing in the present case,
nevertheless the original painting would indeed enjoy full copyright protection,
while the result of the industrial application of such painting, namely, the
design used in the industrial production of the ultimate product shall enjoy
lesser period of protection as stipulated under the Designs Act provided it is
registered as a design under the Designs Act. Thus, we are of the view that an
original artistic work initially acquires protection under the Copyright Act as
an ‘artistic work’ or else the protection under the Designs Act qua the product
created from the artistic work when industrially applied.
37. Dr. Abhishek Manu Singhvi, the learned Senior Counsel appearing for
the respondent in FAO (OS) No.447/2008 had submitted, and in our view
rightly so that the object of the two legislations was to prevent long term usage
by the person who was commercially exploiting something and yet wanting to
claim an exclusive monopoly through longer period of copyright protection
afforded to an artistic work. Section 15 of the Copyright Act demonstrates the
legislative intention of integrating the Copyright and Designs Acts and any


RFA (OS) No. 25/2006 Page 59 of 72


other interpretation would, as rightly submitted by Dr. Singhvi, render the
registration under the Designs Act as meaningless as a design proponent will
always get a longer period of copyright protection under the Copyright Act. In
our view, the above plea would make a registration under the Designs Act
meaningless, which the legislature could have never intended. In fact, the plea
of Dr. Singhvi that a design which has been granted the protection under the
Designs Act cannot be granted protection under the Copyright Act is correct
and this is evident from Section 15(1) of the Act.
38. Thus, while it is not open to the respondent to reproduce such paintings
per se, which formed the basis of the design that was applied to the fabric,
nevertheless, such protection qua the design imprinted on the product through
industrial application is available only under the Designs Act, provided there is
a registration. This is precisely why the legislature not only limited the
protection by mandating that the copyright shall cease under the Copyright Act
in a registered design, but in addition, also deprived copyright protection to
designs capable of being registered under the Designs Act, but not so
registered, as soon as the concerned design had been applied more than 50
times by industrial process by the owner of the copyright or his licensee. This
clearly indicates that the legislature intended to provide industrial and
commercial application of an artistic work for commerce lesser protection.


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39. Shri Arun Jaitley, the learned Senior Counsel appearing for the appellant
in FAO (OS) No.326/2007 titled as M/s Dart Industries Inc. & Anr. v. M/s
Techno Plast & Ors. had only made submissions in the present appeal in
respect of Section 15 of the Copyright Act to the extent it could affect the
appeal filed by his clients. He had advanced a very attractive argument as to
the three stages of processes leading to the eventual designed product. He
submitted that the first stage is of the preparation of drawing or artistic work
which leads to the production of mould/engraving which is the second stage
and such mould/engraving leads to the final commercially marketable product,
which is the third stage. He has also submitted that the products of the
respondent were made by the process of reverse engineering starting from the
final product leading to the second stage of creating a moulding, and from it a
final drawing. His plea was based upon the premises that the mould and the
drawing of the appellant are copyright protectable under the Copyright Act and
cannot be or are incapable of forming part of the design registration regime. It
is submitted that the product of the respondent involves the copying of the
mould/drawing of the appellant.
40. While the argument is very attractive but nevertheless it is not legally
sustainable because such a plea would enlarge the monopoly in industrial
design from the current maximum time of 15 years to the longer period


RFA (OS) No. 25/2006 Page 61 of 72


available under the Copyright Act. While the original drawings of the
appellant could be entitled to copyright protection under the Copyright Act as
artistic works, the designs derived therefrom as moulds which are used for
industrial application of the design on the articles would not qualify for
protection as artistic works under the Copyright Act except in accordance with
Section 15(2) of the Copyright Act. It is not the case of the appellant
Microfibres or even that of Mr. Jaitley‘s clients that the design applied on the
fabric (in the case of Microfibres) or the plastic (in the case of Mattel Inc.) has
not been applied for more than 50 times. There designs have been used more
than 50 times. The learned Single Judge in paragraph 51 of the impugned
judgment held as follows:
―The plea of the plaintiff is also sought to be
negated on the issue of definition of a
‗design‘ under Section 2(d) of the Designs
Act, 2000 whereby an ‗artistic work‘ as
defined in clause (c) of Section 2 of the
Copyright Act has been specifically
excluded. The submission was, thus,
advanced that this would have the effect of
rendering the law of designs redundant for
the simple reason that each design registered
thereunder would be able to trace its origin
to a diagram, chart, drawing, etc. and, thus,
cease to be governed by the Designs Act.
The legislative intent could not have been
this because the law of designs is based on
the same principle as applicable to other
monopolies and to fuel industrial
innovativeness by granting limited time-
limit to the monopolies and allow others to


RFA (OS) No. 25/2006 Page 62 of 72


make use of them after they have passed into
the public domain. Thus, the plea of the
plaintiff, if accepted, would be anti-
competitive and would throttle and stagnate
the industry. (Emphasis supplied)‖

In our view the learned Single Judge has felicitously summed up the
legislative intent that limited monopoly should be granted to fuel industrial
inventiveness in the field of commerce. We fully approve and reiterate the
aforesaid view.
41. As rightly submitted by Shri Rajender Kumar, the learned counsel for the
respondent no.2 in the present appeal, the interpretations canvassed by the
appellant would, render the design legislation otiose, because every registered
design would then be able to trace its origin to a chart, drawing, diagram etc.
and consequently also claim copyright protection under the Copyright Act in
addition to the protection as a registered design under the Designs Act.
42. Shri Prashanto Chandra Sen, the learned counsel appearing on behalf of
the respondent no.1, contended that the difference between a design and an
artistic work lies in the applicability of the former to an article as evident from
the decision in Con Planck Ltd. case 1923 KB 804 , wherein it was held that
the fundamental distinction between a design and a simple artistic work lies in
the applicability of the former to some other article . In our view, the
interpretation suggested by Shri Jaitley would result in every industrial tracing,


RFA (OS) No. 25/2006 Page 63 of 72


drawing or mould which may not be an original artistic work within the
meaning of Section 2(c) read with Section 13 of the Copyright Act, and which
lead to the designed product, being afforded protection under the Copyright Act
as an original artistic work and also being at the same time industrially and
commercially exploitable by being applied to marketable articles by claiming
protection under the Designs Act, 2000.
In the case of Interlego (1988) RPC 343 , the following position of law

was laid down:
―The definition of ‗design‘ in section 1(3) of the
Act of 1949 is hardly a model of Parliamentary
draughtsmanship and this is by no means the first
case in which its meaning and application have been
called in question. In approaching the question of
construction there has to be borne in mind that the
purpose of the Act, as appears both from its terms
and its legislative history, is to protect novel designs
devised to be ‗applied to‘ (or, in other words, to
govern the shape and construction of) particular
articles to be manufactured and marketed
commercially. It is not to protect principles of
operation or inventions which, if protected at all,
ought to be made the subject-matter of a patent.
Nor is it to prevent the copying of the direct product
of original artistic effort in producing a drawing.
Indeed the whole purpose of a design is that it shall
not stand on its own as an artistic work but shall be
copied by embodiment in a commercially produced
artifact. Thus, the primary concern is what the
finished article is to look like and not with what it
does and the monopoly provided for the proprietor
is effected by according not, as in the case of
ordinary copyright, a right to prevent direct
reproduction of the image registered as the design
but the right, over a much more limited period, to


RFA (OS) No. 25/2006 Page 64 of 72


prevent the manufacture and sale of articles of a
design not substantially different from the registered
design. The emphasis therefore is upon the visual
image conveyed by the manufactured article.
(emphasis supplied)‖

Thus, in the case of Pugh v. Riley 1912 RPC 196 the general principle
was laid down that any application for registration must be accompanied by a
representation of the design which ought to be in the nature of a drawing or a
tracing, by means of which the suggestion constituting the design may be
imparted to others. A person looking at the drawing must be able to form a
mental picture of the shape, configuration, pattern or ornament of the article to
which the design has been applied. Further, in the case of Interlego (supra) it
was laid down that the purpose of design is not to protect the principles of
operations or inventions which, if protected at all, must be made the subject
matter of the patent. This process of operation or invention such as a
moulding/engraving could at best be granted patent protection and thus, Mr.
Jaitley‘s plea that such intermediary process be granted copyright protection
cannot be accepted. Thus, what is granted is a right, over a lesser period, to
prevent the manufacture and sale of articles of a design not substantially
different from those industrially produced by the application of the registered
design. The emphasis therefore, is upon the visual image conveyed by the
manufactured article and thus the above judgment of Interlego (supra) also


RFA (OS) No. 25/2006 Page 65 of 72


supports the case of the respondent, that the intermediary process of creation of
a design from an original artistic work cannot be afforded protection under the
Copyright Act if it crosses the lakshman rekha of having been applied more
than 50 times industrially to produce an article.
43. Undoubtedly, it is true as contended by Shri Jaitley that the artistic work
defined under Section 2(c) of the Copyright Act need not possess artistic
quality. His plea about the copyright protection available to
moulding/engraving/drawing is postulated on the above premise. Nevertheless,
we cannot lose sight of the fact that the design, based upon a moulding or an
engraving derived from the original artistic work, which is used for industrial
application on an article and which evolves during any process intermediate to
the reproduction of the finally designed article, would not qualify as an artistic
work. The case of Dover LD (supra) clearly requires the exercise of
intellectual activity so as to originate some novel application and thus, this
principle cannot be applied to a mould, or an engraving i.e. the intermediates
which are mere derivatives of the original artistic work. In the case of Pugh
vs. Riley (supra) also it was held that a design is preceded by a drawing or
tracing which incorporates the design to be imparted to produce the designed
article and upon being applied to an article become incapable of being
registered as a design.


RFA (OS) No. 25/2006 Page 66 of 72


Thus, the interpretation as suggested by the appellant would have the
effect of rendering the design legislation in India redundant as every design
could have its origin to an intermediate product such as a engraving, mould,
diagram etc. It is also anti-competitive and stagnates innovativeness beside in
effect negating the legislative intent of giving lesser protection of 15 years to a
‗design‘ under the Designs Act as compared to the larger protection of 60 years
to an ‗artistic work‘ under the Copyright Act.
44. We cannot accede to the plea of Shri Sanjay Jain that the intention of
creating an artistic work would determine as to which enactment applies. The
artist‘s intent at the time of creation of the artistic work is indecipherable at the
best of times. Artists are governed more often than not by their emotions and
moods and whatever be the intention at the time of the creation of the artistic
work cannot, in our view, determine the nature of protection available to the
artistic work. Indeed such a plea of Shri Ramachandran has already been
rejected by us, as the stupendous and commercial success of a particular
artistic work may spur on the artist to permit commercial utilization and
exploitation of such a work of art. To this extent, we agree with Mr. Praveen
Anand that an intention of creation is difficult to ascertain and cannot form the
basis of determining the rights. Thus, even if the original painting was
intended to be created only as a work of art, a latter intention may transform it


RFA (OS) No. 25/2006 Page 67 of 72


by its industrial application into a commercially viable object. To this extent,
we agree with the plea of Shri Sanjay Jain that once the artistic work, by
industrial application transforms into a commercially marketable artifact its
design falls within the domain of the Designs Act and the protection to the
design founded upon the artistic work is limited by section 15 of the Copyright
Act and the provisions of the Designs Act.
45. Learned counsel Shri Praveen Anand, appearing on behalf of the
appellant in FAO (OS) No.447/2008 has contended that there is a vital
difference between the subject matter of copyright and design protection. In
our view, while this plea is sustainable, nevertheless, it cannot be ignored that
different kinds of protection for an artistic work, and the design founded upon
the artistic work which is industrially and commercially exploited, has been
intended by the Legislature. He has further submitted that what stands
extinguished under Section 15 of the Copyright Act is the copyright in the
design itself as applied to an article and not the copyright in the artistic work
itself. There is no quarrel with this proposition. However, that does not
advance the case of the appellant. We do hold that in the original work of art,
copyright would exist and the author/holder would continue enjoying the
longer protection granted under the Copyright Act in respect of the original
artistic work. Thus, for instance a famous painting will continue to enjoy the


RFA (OS) No. 25/2006 Page 68 of 72


protection available to an artistic work under the Copyright Act. A design
created from such a painting for the purpose of industrial application on an
article so as to produce an article which has features of shape, or configuration
or pattern or ornament or composition of lines or colours and which appeals to
the eye would also be entitled design protection in terms of the provisions of
the Designs Act. Therefore, if the design is registered under the Designs Act,
the Design would lose its copyright protection under the Copyright Act but not
the original painting. If it is a design registrable under the Designs Act but has
not so been registered, the Design would continue to enjoy copyright
protection under the Act so long as the threshold limit of its application on an
article by an industrial process for more than 50 times is reached. But once
that limit is crossed, it would lose its copyright protection under the Copyright
Act. This interpretation, in our view, would harmonize the Copyright and the
Designs Act in accordance with the legislative intent.
46. We thus summarize our findings as follows: -
a. The definition of ‗artistic work‘ has a very wide connotation as it is not
circumscribed by any limitation of the work possessing any artistic quality.
Even an abstract work, such as a few lines or curves arbitrarily drawn would
qualify as an artistic work. It may be two dimensional or three dimensional.
The artistic work may or may not have visual appeal.


RFA (OS) No. 25/2006 Page 69 of 72


b. The rights to which a holder of an original artistic work is entitled are
enumerated in Section 14(c) of the Copyright act.
c. It is the exclusive right of the holder of a Copyright in an original artistic
work to reproduce the work in any material form. For example, a drawing of
an imaginary futuristic automobile, which is an original artistic work, may be
reproduced in the three-dimensional material form using an element, such as a
metal sheet.
d. The design protection in case of registered works under the Designs Act
cannot be extended to include the copyright protection to the works which were
industrially produced.
e. A perusal of the Copyright Act and the Designs Act and indeed the
Preamble and the Statement of Objects and Reasons of the Designs Act makes
it clear that the legislative intent was to grant a higher protection to pure
original artistic works such as paintings, sculptures etc and lesser protection to
design activity which is commercial in nature. The legislative intent is, thus,
clear that the protection accorded to a work which is commercial in nature is
lesser than and not to be equated with the protection granted to a work of pure
art.
f. The original paintings/artistic works which may be used to industrially
produce the designed article would continue to fall within the meaning of the


RFA (OS) No. 25/2006 Page 70 of 72


artistic work defined under Section 2(c) of the Copyright Act, 1957 and would
be entitled to the full period of copyright protection as evident from the
definition of the design under Section 2(d) of the Designs Act. However, the
intention of producing the artistic work is not relevant.
g. This is precisely why the legislature not only limited the protection by
mandating that the copyright shall cease under the Copyright Act in a
registered design but in addition, also deprived copyright protection to designs
capable of being registered under the Designs Act, but not so registered, as
soon as the concerned design had been applied more than 50 times by industrial
process by the owner of the copyright or his licensee.
h. In the original work of art, copyright would exist and the author/holder
would continue enjoying the longer protection granted under the Copyright Act
in respect of the original artistic work per se .
i. If the design is registered under the Designs Act, the Design would lose
its copyright protection under the Copyright Act. If it is a design registrable
under the Designs Act but has not so been registered, the Design would
continue to enjoy copyright protection under the Act so long as the threshold
limit of its application on an article by an industrial process for more than 50
times is reached. But once that limit is crossed, it would lose its copyright
protection under the Copyright Act. This interpretation would harmonize the


RFA (OS) No. 25/2006 Page 71 of 72


Copyright and the Designs Act in accordance with the legislative intent.
47. Thus, we find no merit in this appeal and the same is dismissed but with
no order as to costs.
48. List FAO (OS) No. 447/2008 and FAO (OS) No. 326/2008 for hearing
th
on 7 August, 2009.


(MUKUL MUDGAL)
JUDGE



(VIPIN SANGHI)
JUDGE
May 28, 2009
sk



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