Legislators and enforcers of IP rights worldwide have struggled with one eternal question of where to draw the line between the overlapping areas of protection afforded by copyright law and design law to two/three-dimensional industrial products with external, eye-appealing features of shape, configuration, pattern or ornament applied to them.
The overlap arises from the fact that these products start off life as industrial drawings entitled to copyright protection as "artistic works" with a longer term of protection (life time of the author plus 50 to 70 years) and capable of three-dimensional reproduction as products entitled to design protection with a limited statutory term of 15 years.
Some jurisdictions have opted for dual protection with just exceptions and some for mutual exclusivity. India belongs to the latter group.
Section 15 of the Indian Copyright Act, 1957 states:
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Copyright shall not subsist under this Act in any design which is registered under the Designs Act, 1911.
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Copyright in any design, which is capable of being registered under the Designs Act, 1911, 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 persons.
In 1998, the High Court of Delhi dismissed Samsonite's claim of copyright infringement against a local defendant on the basis that the corresponding drawing/sketch for its suitcases was capable of embodiment in a design-registrable artefact and thus not entitled to copyright protection.
In line with the aforesaid legal position, the High Court of Delhi reiterated the relevant principles in a decision delivered on February 21 2003 in AGA Medical Corporation v Mr Faisal Kapadi & Another.
AGA Medical Corporation, the plaintiff, is an American corporation with a worldwide business in the field of manufacturing and marketing medical equipment. It sought to restrain Kapadi from manufacturing/selling certain medical equipment alleged to be a lookalike of its own product.
Primarily basing its claim on the corresponding industrial drawing, AGA alleged that the sale by Kapadi of such lookalike product constituted unauthorized 3D reproduction of its industrial drawings and thus was an act of copyright infringement.
In its defence, Kapadi claimed inter alia that products of the kind impugned in the suit were capable of registration under the Indian Designs Act and it relied upon the classification of goods under the Act to show that prosthetic articles (which covered the equipment in suit) was specifically included therein.
Accepting the defence raised by Kapadi, the High Court of Delhi held:
On a consideration of the matter and more particularly the meaning of copyright and the definition of 'design' in the Designs Act, the court is, prima facie, of the view that the plaintiff does not have a subsisting copyright under the Copyright Act, firstly: because it is capable of being registered under the Designs Act, though it has not been so registered, and secondly, as per the plaintiff's own showing, the devices to which the drawings have been applied, has been reproduced more than 50 times by an industrial process by the plaintiff.
This case is an illustration of the mutually exclusive divide between copyright and design rights in India, and reiterates that no dual protection can be claimed in India.
Rajendra Kumar