Wednesday, July 6, 2011

Copyrights and Industrial Design: Where is the Confusion?

In 2009, I had blogged elsewhere on the Microfibres v. Giridhar judgment of the Division bench of the Delhi High Court. The central issue in this case was the effect of Section 15(2) of the Copyright Act, 1957 on unregistered designs. 

I don’t intend to discuss the case again here, but it appears that the effect of the combined interpretation of Section 15 of the Copyright Act, 1957 and the definition of “design” under the Designs Act, 2000 is still misunderstood.

I’ll try to keep this discussion as lucid as possible. Let me first reproduce the relevant provisions for ease of reference. Section 2(d) of the Designs Act defines “design” as follows:

“design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours, applied to any article, whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are solely judged by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in Section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of Section 2 of the Copyright Act, 1957 (14 of 1957)

Section 2(c) of the Copyright Act, 1957 defines an “artistic work” as follows:

“artistic work” means-
(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality.
(ii) a work of architecture and
(iii) any other work of artistic craftsmanship.

Section 15 of the Copyright Act, 1957 reads as follows:

15. Special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 1911- (1) Copyright shall not subsist under this Act in any design which is registered under the Designs Act, 1911.

(2) Copyright in any design, which is capable of being registered under the Designs Act, 1911 (2 of 1911), but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or with his licenses, by any other person.

What is it that I intend to submit in this post? My stance is basically as follows:

1. Under the current regime, an artistic work within the meaning of the Copyright Act is excluded from the definition of design altogether. Therefore, an artistic work can never be a design and vice versa. If a feature has to be treated as a design, it cannot be an artistic work, and therefore cannot enjoy copyright protection.

2. If a feature which falls within the definition of design remains unregistered, under the law today it cannot claim the benefit of Section 15 of the Copyright Act. i.e. there is no  copyright (under the Copyright Act, 1957) subsisting in the design regardless of the number of times it may be industrially applied to an article. Why? Because it flows from point 1 that for the design to enjoy copyright protection, it has to be treated as an artistic work, but if it were an artistic work, it can never be considered for design protection in the first place.

3. Section 15 of the Copyright Act applies only to designs under the Designs Act, 1911, it has no application today. Also, thanks to the amendment to the definition of design in the Designs Act, 2000, Section 15 of the Copyright is a vestigial provision in so far as new designs are concerned.

Let me elaborate on these points a bit more. The protection under the Designs Act, 2000 is different from the copyright protection available under the Copyright Act, 1957. The former is a strict statutory monopoly, whereas the latter is a codified common law right, whose vestation is governed by the statute. That said, copyright is not granted, it comes into being. This is in stark contrast to a design right.

Naturally, the difference in the right and its mode of grant tell us something about the nature of the right, and the subject-matter of the right.

As regards the subject-matter of a design right, namely a design, the visual appeal of the design is judged upon its application to an article, and not in isolation. This explains the registration of a design in a particular class of goods. In contrast, the subject-matter of copyright protection is judged on its own steam.

The interplay between copyright and design right may be explained better as follows:

1. An industrial product can have two aspects to it- the first may be protected by copyright and the second may be protected by a design right. The latter must necessarily be a non-functional ornamental aspect. Although the product has two aspects, each of which is protected by two different rights, none of these aspects can be protected by both the rights simultaneously. Specifically, the aesthetic aspect is protected by the design right alone.

2. For instance, an engineering drawing representing a car is protected by a copyright. However, the non-functional aesthetic features of the car which are added over and above the basic engineering drawing are protected by design right and design right alone provided the design is registered. If the design is unregistered, then no protection of any nature or form is available to the design.

3. Therefore, if a third party apes the car without consent, and if the aesthetic features are not protected by a “registered design right” (which is as redundant as a “granted patent”), then the plaintiff may claim infringement of the copyright in the engineering drawing alone sans the aesthetic features. No copyright infringement can be alleged with respect to the aesthetic features since they are not protected by any right at all.

Also, the requirements of the Designs Act, 2000 can be broadly divided into 2 – “design eligibility” and “design registrability”. (The corresponding analogies from the Patents Act could be "patent eligibility" under Section 3 of the Patents Act and "patentability" on grounds of novelty, non-obviousness and industrial applicability)

Design eligibility is dictated by the definition of design, whereas registrability of the design is governed by Section 4 which spells out the grounds for prohibition of designs such as absence of novelty or originality, and other such grounds. In other words, for a design to be registrable, it must first of all be a “design”, but not all designs are registrable since they must satisfy the criteria of novelty and originality for them to be deemed registrable.

The important conclusion that must be drawn is that any design, registrable or not, can never be an artistic work (thanks to the definition of “design”), and can hence never enjoy copyright protection if it remains unregistered.

Opinions and corrections are welcome! 


  1. Incisive analysis...

    According to me, the jurisprudential rationale between the two systems is also worth looking at. While CR tilts more to the Lockean Labour theory, the Design patent scheme seems to tap into the marxist theory of capitalism, which also governs the restrictions as to time period.

    As I see it, if one were to look at the definitions broadly, irrespective of registrability or not, design regime seems to have been brought about more with the intention of creating consumer recognition.. being now somewhere in b/w CR and TM.. in the sense non-functional as aTM, except consumer association, but being somewhat appealing to the eye, as wd be expected from an artistic work... Does this make sense?

  2. Hi Divs,
    Thanks! Of course, it makes sense. The primary objective of the a design is to help a manufacturer distinguish his goods from that of his competitor's and the fact that it does so in a much more visual non-functional sense brings it that much closer to trademarks. This is in fact what Pro.Dennis Crouch (of Patently-O of course) argues in his paper "A Trademark Justification for Design Patent Rights".