Intellectual property laws provide protection for some works under both copyright and design law. At the face of it, the law on this point seems rather clear. However, interpretation of Section 15 of the Copyright Act in conjunction with the definition of “Design” under the Design Act makes it slightly tricky. A recent case decided by the Delhi High Court has tried to differentiate between a copyright and a design on the basis of the nature of the work and its industrial application. The Judge has explained the basic concepts in great detail and has even provided examples, however, at the end of it there are still many issues to ponder upon.

The law

An artistic work is 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. The author of the copyright has a right to reproduce the work in any material form including depiction in 2D or 3D.

The definition of a design includes only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article in 2D or 3D by any industrial process and specifically excludes artistic work defined by the Copyright Act.

Section 15 of the Copyright Act states that if a copyright which is capable of being registered as a design is not registered, the copyright in them ceases after more than 50 products are made by an industrial process.

The issue

Though the law is worded in a non-cryptic manner, the interpretation of the law is not easy when it comes down to actually scenarios. In the case decided by the Delhi HC, the plaintiffs were making gold sheet articles of deities and religious symbols on the basis of drawings created using a specialized computer software. According to the plaintiffs, the defendants were making identical articles/designs and so they filed a suit for copyright infringement and passing off.

The copyright and design conundrum

In the instant case, the Court had to ascertain whether the work was firstly capable of protection as a design and secondly, whether the copyright in the artistic work ceased because of the industrial application of the work resulting is a design.

The Court analysed the issue and opined that the artistic work as a copyright will enjoy protection as a copyright even if it is reproduced in any form but when it is used as the basis for designing an article by its application in an industrial process, it will be protected as a design. However, the Court also stated the following,

Once again, as an original artistic work it would continue to enjoy the full copyright under the Copyright Act, 1957 and cannot be reproduced in any two or three dimensional form by anyone except the owner of the copyright. What it would cease to enjoy is the copyright protection in its industrial application for production of an article.

Going by this analysis, I am led to believe that the copyright in a work would continue to exist as an artistic work and that the reproduction of it as a design would entitle it to protection as a design as well. However, the Court provided an illustration to explain this point, which was contradictory to the excerpt provided above.

If a painting, say Hussain’s painting of a horse, is simply reproduced in any medium, i.e. on paper, canvass or even a cloth, and in any form, i.e. in two or three dimensions, whether by an industrial process or otherwise, it will continue to enjoy full copyright in such reproduction under the Copyright Act. But if the painting is used as a motif to produce, say, sarees, the industrial application, namely, use as a motif in a saree, would lose copyright protection, if not registered as a design under the Designs Act, 2000, after more than fifty applications.

The analysis

Taking into consideration a number of factors, the Court in this case held that the articles produced by the plaintiff with the use of artistic works (drawings) is a reproduction of the drawings in a material (gold plate) in a 3D form and therefore what is produced is the artistic work itself. However, the Court did emphasise on the fact that though the present case is of the artistic works and not designs, the plaintiff has not made more than 50 reproductions of the work.

Another illustration provided by the Court, further explains that a drawing of a refrigerator or a mixer when made into a design will cease to have copyright protection since what is being created is an ‘artistic work’ but a ‘design’. Though artistic quality is rather subjective, the Court has tried to put things into perspective by way of certain examples.

This case has definitely prompted us to think of several possibilities that might arise when copyright and design overlap. I’m certain that there will be many more judicial decisions on this issue and in my opinion, cases relating to the copyright and design issues are best dealt with on a case to case basis because interpretation of the law with reference to industrial applicability and artistic quality of a work are the determining factors.

This article has been authored by Nikita, an IP Law practitioner.