Copyright Act, 1957 – s.15(2) – Designs Act, 2000 – s.2(d) – What are the parameters for determining whether a work or an article falls within the limitation set out in s.15(2) of the Copyright Act, thereby classifying it as a ‘design’ u/s.2(d) of the Designs Act:
Held: The original artistic work, which initially enjoys copyright protection, does not lose the same merely because a ‘design’ derived from it has been industrially applied to create a product – While the expression ‘artistic work’ has a broad spectrum, ‘design’ is restricted to specific features such as shape, configuration, pattern, ornamentation, or composition of lines or colours, applied to an article through an industrial process, resulting in a finished product that appeals to the eye – These visually appealing features, when applied industrially, define a ‘design’ under the Designs Act – The inquiry cannot be concluded merely by assuming that what does not qualify as an ‘artistic work’, within the meaning of the Copyright Act, would automatically receive protection under the Designs Act – While protection under the Designs Act is not as enduring as that under the Copyright Act, it is not granted by default and requires specific criteria to be met – In this regard, courts in India and globally consistently apply the test of ‘functional utility’ to determine whether a work qualifies for protection under the Designs Act – This Court has formulated a two-pronged approach in order to crack open the conundrum caused by s.15(2) of the Copyright Act so as to ascertain whether a work is qualified to be protected by the Designs Act – This test shall consider: (i) whether the work in question is purely an ‘artistic work’ entitled to protection under the Copyright Act or whether it is a ‘design’ derived from such original artistic work and subjected to an industrial process based upon the language in s.15(2) of the Copyright Act; (ii) if such a work does not qualify for copyright protection, then the test of ‘functional utility’ will have to be applied so as to determine its dominant purpose, and then ascertain whether it would qualify for design protection under the Design Act – The courts, while applying this test, ought to undertake a case specific inquiry guided by statutory provisions, judicial precedents, and comparative jurisprudence. [Paras 58, 59, 60, 61]
Copyright Act, 1957 – Designs Act, 2000 – Code of Civil Procedure, 1908 – Respondent no.1 filed a trademark suit before the Commercial Court against the appellants – Appellant moved its application u/Or. VII, R.11 of CPC, seeking rejection of the suit on the ground that it was not maintainable u/s.15(2) of the Copyright Act – It was contended that the Proprietary Engineering Drawings, for which respondent no.1 claimed copyright protection, fell within the definition of ‘design’ u/s.2(d) of the Designs Act, 2000 – Commercial Court allowed the said application and rejected respondent no.1’s plaint – High Court remanded the matter to Commercial Court for fresh consideration – The Commercial Court reconsidered the application and allowed the application u/Or.VII, R.11 of the CPC and rejected the plaint – Respondent no.1 again approached the High Court challenging the order of the Commercial Court – The High Court by the impugned judgment set aside the Commercial Court’s orders – Whether the High Court erred in setting aside the order of the Commercial Court and thus rejecting the application u/Or.VII, R.11 of the CPC: Held: The core dispute revolves around whether the ‘Proprietary Engineering Drawings’ qualify as drawings u/s.2(c) of the Copyright Act or whether they fall within the definition of a ‘design’ u/s.2(d) of the Designs Act, necessitating a detailed examination – This Court is in complete agreement with the reasoning of the High Court that the question as to whether the original artistic work would fall within the meaning of ‘design’ under the Designs Act cannot be answered while deciding an application u/Or.VII, R.11 of the CPC – This stage would involve only a prima facie inquiry as to the disclosure of cause of action in the plaint – The question pertaining to ascertaining the true nature of the ‘Proprietary Engineering Drawings’ involves a mixed question of law and fact and could not have been decided by the Commercial Court at a preliminary stage based upon such a casual appraisal of the plaint averments – This Court, therefore concur with the High Court that this case warrants a trial given the triable issues involved – The plaintiff before the Commercial Court, i.e., respondent no.1, was erroneously non-suited due to incorrect assumptions made by the Commercial Court which misread the plaint, misapplied legal principles and overlooked the distinction between ‘artistic work’ and ‘design’ – In light of the discussion on relevant precedents and legal positions, and the clear test outlined, the Commercial Court is directed to consider the issue afresh and conduct trial by adopting an Occam’s Razor approach to ascertain the true nature of the ‘Proprietary Engineering Drawings’. [Paras 66(b), 67, 68, 69]
As published in the Supreme Court Reports, Supreme Court of India. Headnotes prepared by: Ankit Gyan. Text from the Indian Supreme Court Judgments open data set (Dattam Labs), CC BY 4.0.
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