Introduction
The inherent nature of intellectual property often leads to overlapping rights for an owner over the same subject matter. This creates challenges for enforcement agencies in ensuring that these rights coexist smoothly and in setting consistent legal precedents. One such area of uncertainty arises between copyright and design law, particularly with regard to artistic works. However, India’s legal system provides a relatively clear distinction between these two forms of intellectual property.
This article explores the legal frameworks of copyright and design laws, their differences, the intersection between them, and practical strategies for creators to navigate these complexities.
Indian Copyright Law versus Indian Design Law
Indian copyright law is governed primarily by the Copyright Act of 1957, which has undergone several amendments to accommodate technological advancements and global treaties. A copyright grants creators exclusive rights to reproduce, distribute, and publicly display their works for a specific duration, typically the lifetime of the author plus 60 years.
The Indian Design Act of 2000 governs the registration and protection of industrial designs. Section 2(d) of the Designs Act, 2000 defines “design” by emphasizing that it must “appeal to and be judged solely by the eye.” This highlights that visual appeal is a key criterion for determining whether something qualifies as a design eligible for registration and legal protection. Unlike copyright, which protects the original expression of creative works, design law focuses on the visual and aesthetic features of products.
Typical Examples of What may be Protected
Under Copyright: Books, music, paintings, cinematographic films, and software programs. For instance, a novel or a digital photograph.
Under Design Law: Ornamental patterns on fabric, the shape of a perfume bottle, or decorative aspects of a product. For example, a uniquely designed chair.
Covered by Both: A graphic design used as a decorative element in textiles (copyright protection until it is industrially reproduced more than 50 times or registered as a design).
Differences between a Copyright and a Design
| Aspect | Copyright | Designs |
| How protection is granted | Established as soon as a work is fixed in a tangible form. | Rights exist only once the design registration is obtained. |
| Criteria for eligibility | Work must be original, showcasing a degree of creativity. | Design must be novel and visually appealing to the eye. |
| Focus of Protection | Protects original literary, dramatic, musical, and artistic works, as well as cinematographic films and sound recordings. Computer programs are also protected as literary works. However, copyright for any design capable of being registered under the Designs Act ceases after 50 reproductions by an industrial process. | Covers shape, configuration, pattern, ornamentation, or composition of lines or colors applied to an article, judged solely by the eye. Does not include functional aspects, trademarks, property marks, or artistic works as defined under the Copyright Act. |
| Duration | Lasts for the creator’s lifetime plus 60 years. | Valid for 10 years and can be extended for an additional 5 years. |
| Registration Requirement | Registration is automatic and not mandatory but advisable for enforcement. Registration involves a straightforward process and is relatively inexpensive. | Formal registration is mandatory for protection. The article must be capable of being made and sold separately. Requires filing, examination, and prosecution as defined under the Designs Act, 2000. |
| Infringement Criteria | Enforcement requires proving that the infringer had access to the original copyrighted work and created a significantly similar work. | Infringement occurs when a substantially similar design or fraudulent imitation is applied to any article in the same class without consent. |
| Functional Features | Protects the expression of ideas but not functional or utilitarian aspects. | Focuses on the visual and ornamental features of products, excluding functionality or construction principles. |
Understanding the Intersection
- Artistic Works as Designs: Many artistic works, such as paintings and graphic designs, can be protected under both copyright and design law. For instance, a decorative textile pattern can be copyrighted until it is registered as a design or reproduced more than 50 times.
- Copyright in Designs: Section 15 of the Copyright Act allows designs considered artistic works to have copyright protection, provided they meet originality requirements. However:
- If a work qualifies as a design under the Designs Act but is not registered, copyright protection ceases after 50 reproductions.
- Conversely, artistic works cannot simultaneously qualify as designs under Section 2(d) of the Designs Act.
- Design as Artistic Expression: Designs with artistic elements, like a sculptural chair, can fall under both categories until industrial application exceeds 50 reproductions.
Illustrative Example
Company ‘A’ created original and artistic patterns for use on upholstery fabrics. Simultaneously, Company ‘B’, also in the upholstery industry, produced a similar design. A then accuses B of copyright infringement. In defense, B claims that A’s designs should have been protected under the Designs Act, and therefore, no copyright infringement occurred.
B’s claim may be considered reasonable as the artistic patterns were created for commercial purpose and were not purely for artistic purpose. Accordingly, A may not be able to claim exclusivity over a pattern which was made purely for commercial purpose and already surpassed the 50 limit.
The Role of Courts in Interpreting the Interface
In Ritika Private Limited V. Biba Apparels Private Ltd, 1the plaintiff created designs for a renowned fashion designer, did not register the said designs under the Designs Act and the same was reproduced more than 50 times. The plaintiff argued that the designs were original artistic work protected by copyright. The court ruled that the plaintiff’s designs were no longer eligible for copyright protection once they had been applied to over 50 articles.
Whereas, in Rajesh Masrani V. Tahiliani Design Pvt Ltd,2 the reproduced copies had not crossed the required number of 50, and hence, the plaintiff was granted protection against infringement.
In Pranda Jewelry Pvt. Ltd. And Ors V. Aarya and Ors,3 the court clarified that a work qualifies as an artistic work if it falls within the definition provided in Section 2(c) of the Copyright Act, 1957. However, when such an artistic work is applied to industrial use, it becomes eligible for protection under the Designs Act, 2000. If protection under the Designs Act is not sought, the article loses its protection once it is reproduced more than 50 times.
Microfibres Inc. v. Girdhar & Co.4 introduced the concept of “intention” to distinguish between copyright and design protection. The court held that a design created with the intent of copyright protection qualifies as an artistic work. However, designs intended for industrial application fall under the Designs Act.Aga Medical Corporation v. Faisal Kapadi: Copyright expired for designs eligible but not registered under the Designs Act.
Therefore, the courts in India have provided guidelines for assessing originality and the interplay between copyright and design laws, encouraging a balanced approach to intellectual property rights. These interpretations have helped shape the understanding of the interface, fostering a more cohesive legal framework.
Practical Strategies for Creators
Both copyright and design registration offer protection for creative work, preventing others from replicating visual aspects like shapes, patterns, and designs. When deciding which form of protection should be adopted, the following factors can be considered:
While making a learned decision, the creator must be aware of the purpose of the work. If the purpose of the work is to apply to any article which is to be produced by industrial process (i.e. intended for industrial use or commercial application), then design registration should be applied for. Review commercial plans early to decide whether copyright or design protection aligns better with business objectives.
The creator should also check the classification of the article in the Locarno classification for design protection. If the article on which artistic work is applied is already defined in the Locarno classification, it is very easy for an infringer to establish that designs should have been protected under the Designs Act, and therefore, no copyright infringement occurred.
Conclusion
As per the interpretations given by the several Indian Courts, the Section 15(2) of the Copyright Act, exhibits a clear distinction between copyright and design protection. The creator of an artistic work can claim copyright protection till the work remain in artistic domain. Once such work is applied industrially to any product/article more than 50 times, it loses the copyright protection over it.
Therefore, it would be prudent for an artisan to protect his/her intellectual property by analyzing the purpose of the intellectual property. If such property is going to be used in commerce, it should be registered under the Designs Act, otherwise, copyright protection can be sought.