COPYRIGHT OR INDUSTRIAL DESIGNS: WHICH IS A BETTER PROTECTION
Copyright basically refers to rights of organisations and individuals to works they have created or own. It arises at the moment a work is created and fixed in a certain material form, irrespective of its content, quality, form, mode and language and irrespective of whether or not such work has been published or registered. Industrial design on the other hand refers to rights owned by any individual or organisation in the outward appearance of product embodied in three dimensional configuration, lines, colours or combination of elements. It is eligible for protection provided it is novel, involves an inventive step and is industrially applicable. Copyright protects – Literary, artistic and scientific works. The following items shall be outside the purview of category of copyright protection:
- News of the day as mere items of information;
- Legal instruments, administrative and other documents in the judicial domain, and official translations of such documents;
- Processes, systems, operational methods, concepts, principles and data.
Outward appearance of a product is protected as an industrial design. However, the following items shall be ineligible for protection as industrial designs:
- Outward appearance of a product which is necessarily due to the technical features of the product.
- Outward appearance of civil or industrial construction works.
- Shape of a product which is invisible during the use of the product.
Registration of copyright is not required, but optional.
Under the law, An “artistic work” is defined as 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 under section 2 (c) (i).
“Design” is defined under section 2 (d) of the Designs Act as 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 judged solely 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 or property mark as defined in section 479 of the Penal Code, 1860 or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.
An issue involving the interplay of various sections of both the acts was put before the Division Bench of Delhi High Court in case of Microfibres Inc v. Girdhar and Co. 2009 SCC OnLine Del 1647. The Bench, after comparing relevant sections of both the statutes, observed that when a copyright holder reproduces an original artistic work in another material form, he may or may not utilise an industrial process or any means which may be manual, mechanical or chemical, separate or combined, on that form. On the other hand, if an industrial process is employed while reproducing an original artistic work, such that the result is a finished article which appeals to the eye as adjudged solely by the eye, then features of shape, configuration, pattern, ornament or composition of lines or colours applied to the article by the industrial process constitutes a design under Designs Act. It was hence observed that the distinguishing factor between an artistic work under Copyright Act and design under Design Act is the application of industrial process.
Design Act limits the scope of “design” by using the term ‘only’ before the phrase ‘the features of shape, configuration, pattern, ornament or composition of lines or colours’. This implies that an original artistic work may inspire a design, and such artistic work is not limited to features of shape, configuration, pattern, ornament, or composition of lines and colours which is applied to an article using an industrial process. Also the definition of design expressly excludes any artistic work under section 2 (c) copyright act.
Another conclusion drawn from the comparative analysis of both the definitions is that an artistic work, unlike a design, may or may not have visual appeal.
Put simply, an artist uses his imagination to make a drawing of a wrist watch possessing some exquisite features. It is an artistic work. This drawing inspires an engineer so that he employs certain industrial process to reproduce a wrist watch possessing the features. That tangible watch will be said to be a design. At Knowledgentia Consultants, which is the best corporate international law firm in India, we provide design and copyright registration services in India for all categories.
PROTECTION AS AN ARTISTIC WORK
The rights to which a holder of an original artistic work is entitled are enumerated in Section 14(c) of the Copyright Act as follows:
“copyright” means empowers the owner to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:—
(c) in the case of an artistic work,—
(i) to reproduce the work in any material form including—
(A) the storing of it in any medium by electronic or other means; or
(B) depiction in three-dimensions of a two-dimensional work; or
(C) depiction in two-dimensions of a three-dimensional work;]
(ii) to communicate the work to the public;
In simpler words, it is an exclusive right of the holder of a Copyright in an original artistic work to reproduce the work in any material form. A drawing of imaginary futuristic machine can be reproduced in the 3-D form using a metal sheet.
PROTECTION AS INDUSTRIAL DESIGN
Industrial design intellectual property rights are protected in India by the Designs Act of 2000. Under this, registration offers the proprietor ‘copyright’ in the design, i.e. exclusive right to apply a design to the article belonging to the class in which it is registered. All models that are registered find their place in the Register of Designs, Kolkata. This includes the design number, class number, date of filing (in this country), the name and address of the proprietor and so on. The registration is for a duration of ten years and can be extended for up to five years. Under the Designs Act, anyone violating the copyright of the design is liable to pay a sum of Rs. 25,000 for every offense to the registered proprietor subject to a maximum of Rs. 50,000 recoverable as contract debt forany one design.
COPYRIGHT IN DESIGNS – A SPECIAL PROVISION
Section 15(2) of the Copyright Act discusses special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 2000, whereby it is stated that copyright in any design, which is capable of being registered under the Designs Act, 2000 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 licence, by any other person. It is a situation where a design capable of being registered under Designs Act is not so registered. It was inferred in Microfibres Inc v. Girdhar and Co that the parliament was dealing with aspect of copyright in a registered or registrable design with respect to the Copyright act and not the Designs act. The law thus restricts the industrial exploitation of the original artistic work by reproducing it in other forms or reproduction of copies in exercise of rights under section 14 of Copyright act.
In the recent case of Pandrol v. Patil, 2023 SCC OnLine Del 1494, Justice Amit Bansal, based on the observations made in the previously mentioned case, summarised the comparative analysis of protection under both the statutes.
A comparative scrutiny of both the designs act and the copyright act informs that pure original artistic work has been granted a higher protection in comparison to the design activity owing to its commercial nature. Therefore, the original paintings or artistic works which are used to industrially produce the designed article would continue to fall within the meaning of artistic work as defined under section 2(c) of the copyright act and hence would be entitled to the full period of copyright protection. On the other hand, Designs capable of being registered under the Designs act are deprived of copyright protection as soon as it is commercialized (reproduced for more than 50 times by an industrial process). A design registered under the Designs act loses its copyright protection under copyright act. AN unregistered registrable design however continues to enjoy copyright protection for as long as the threshold limit for its application on an article does not reach fifty.
It can thus be deduced from the discussion above that an original “artistic work” is different from a “design”. Even if the original drawing or artistic work is used to industrially produce an article, the original drawing will still be entitled to full term protection under the Copyright Act. It will be safe to say that copyright protection is a better and higher protection. What makes Knowledgentia Consultants best IPR law firms in Delhi and a top law firm in Delhi for design and copyright registration services in India is the client- focussed approach that we adopt in handling matters. We believe in building trust and relationships and are completely professional as well as transparent in our approach. We always strive to keep open, honest and direct communication with our clients and believe in leading a positive transformation in society through innovating holistic solutions towards problem solving. Our clients prefer us for our mindfulness, integrity, flexible and value- driven approach as well as easy access to information and regular updates. Whether it be matters relating to filing of copyright or design, Knowledgentia, as one of the top law firms in Delhi is your one-stop solution for all kinds of legal, compliance and supplemental matters . For any query you can mail us at email@example.com or visit our website -https://knowledgentia.com/.