Court Lays Down Tests To Distinguish Work Under Copyright From Design Laws

The Supreme Court on Tuesday laid down a framework to distinguish between works protected under the Copyright Act and designs eligible for protection under the Designs Act.

The framework was laid down by a bench comprising Justices Surya Kant and N Kotiswar Singh while deciding a case related to intellectual property rights in industrial designs.

The top court dismissed appeals filed by Cryogas Equipment Private Limited and LNG Express India Private Limited against Inox India Limited and affirmed the Gujarat High Court's order reinstating Inox's copyright infringement suit and directed the subordinate court to proceed with the matter on merit.

One of the key issues was on the parameters to determine whether a work or an article fell within the limitation set out in Section 15(2) of the Copyright Act, thereby classifying it as a "design" under Section 2(d) of the Designs Act.

The issue involved the question when does an artistic work cease to enjoy copyright protection due to its application on an industrial scale, and hence transforms into a "design" as defined under the Designs Act.

Laying down a definitive framework for distinguishing between works protected under the Copyright Act, 1957, and designs eligible for protection under the Designs Act, 2000, the 56-page judgement penned by Justice Surya Kant addressed the often-contested overlap between "artistic works" and "designs," particularly within the context of Section 15(2) of the Copyright Act, which governs the cessation of copyright when a design is commercially exploited without registration.

To resolve the ambiguity, the verdict developed a structured two-step analysis and said the courts must first determine whether the subject is an original "artistic work" protected under Section 14(c) of the Copyright Act or whether it is a "design" derived from such a work and applied via industrial processes, thereby invoking Section 15(2).

It also referred to the functional utility test and said if the work was applied industrially and had the utility beyond its artistic value then courts must assess whether its primary purpose was aesthetic or functional.

Works with dominant commercial utility would fall under the purview of the Designs Act and lose copyright protection if not registered, it said.

Firstly, the test should consider whether the work in question was purely an "artistic work" entitled to protection under the Copyright Act or a "design" derived from such original artistic work and subjected to an industrial process based upon the language in Section 15(2) of the Copyright Act.

"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," it added.

The courts, while applying this test, ought to undertake a case-specific inquiry guided by statutory provisions, judicial precedents, and comparative jurisprudence, it said.

"It must be kept in mind that the overarching objective is to ensure that rights granted under either regime serve their intended purpose without unduly encroaching upon the domain of the other. With this approach, we have attempted to clarify the treatment of works at the intersection of 'copyright' and 'design' law(s), thereby ensuring coherence and consistency in the application of IP rights in India," it added.

Justice Surya Kant said the court undertook the task of clarifying the perceived complexities arising from Section 15(2) of the Copyright Act.

"In this context, we appreciate the efforts of high courts across the country in adopting best practices that align with our socio-legal framework. Our analysis and examination have hopefully resolved this legal issue to prevent any further ambiguity in the future," the judgement said.

Section 15(2) stipulates that copyright protection ceases once a design, capable of being registered under the Designs Act but not registered, is reproduced more than fifty times through an industrial process.

This provision is aimed at balancing the limited-term protection of utilitarian designs with the longer protection afforded to purely artistic creations, the bench said.

The verdict said the legislative intent was to provide greater protection to works of pure artistic expression such as paintings and sculptures and limited protection to commercially driven designs.

In doing so, it reaffirmed that the Copyright Act and the Designs Act serve distinct but complementary objectives. 

(Except for the headline, this story has not been edited by NDTV staff and is published from a syndicated feed.)