The High Court of Madras, in a recent decision in the matter of Standard Corporation India Inc., v. Tractors and Farm Equipment Ltd [see end note 1]., had an occasion to consider the popular issue of interface between copyright and design protection in case of an artistic work.
Tractors & Farm Equipment Ltd. (hereinafter referred to as “TAFE”) filed a suit for copyright infringement against Standard Corporation India Inc., (hereinafter referred to as “Standard”) alleging that the latter was infringing its copyright in the artistic work in the drawings for its tractors, by substantially reproducing the same. TAFE, therefore, sought relief of permanent injunction restraining Standard from doing so, as well as from passing off its tractors as those of TAFE.
The Single Judge granted a temporary injunction in favour of TAFE, whereafter Standard filed an application before the Single Judge, praying for rejection of plaint filed by TAFE under Order VII Rule 11 of the Code of Civil Procedure, 1908. Standard contended that the suit was statutorily barred under Section 15(2) of the Copyright Act, 1957 [“1957 Act” for short], which states that copyright, in respect of any design, capable of being registered under the Designs Act, 1911 [“Act, 1911” for short] and not so registered shall cease as soon as any article to which it applies has been reproduced more than fifty times, by an industrial process. The Single Judge dismissed Standard’s application for rejection of suit; whereafter the latter preferred an appeal before the Division Bench of High Court of Madras.
Drawings registrable as a ‘design’
The foregoing contention of Standard brought to the fore the design-copyright conundrum, particularly qua artistic works, which has been protracted with varied and contrasting opinions. The design-copyright conundrum qua artistic works has been largely and contextually discussed and ruled upon in the decision of the Division Bench of the High Court of Delhi in the matter of Microfibers Inc. v. Girdhar & Co.[see end note 2], which was also intensively relied upon by Standard in the instant case.
In the instant case, Standard relied upon the observation made in Microfibers case to argue that the drawings in question were industrial designs and hence, TAFE ought to have registered the same as a design under the Designs Act, 2000 [“2000 Act” for short]; having failed to do so, it cannot seek any exclusive rights over the said drawings. Standard further contended that since TAFE had failed to secure design protection, and has admittedly applied the drawings for over hundred times by way of industrial process, it had lost copyright protection in the said design as well, as laid down under Section 15(2) of the Act , 1957.
TAFE, on the other hand, contended that the decision in Microfibers case would not apply since the drawings were ‘artistic works’ under the 1957 Act and being functional in nature, did not qualify as a ‘design’ capable of registration as per Section 2(d) of the 2000 Act.
Design-Copyright interface as per Microfibers case
With an intention to harmonize the design-copyright interface, the court in Microfibers case, laid down that Section 15 of the Act, 1957 merely extinguishes the copyright in the design applied to an article and not the copyright in the artistic work itself and the author of the original artistic work would continue to enjoy the protection under the Act, 1957 in this respect. If the design in the artistic work is registered under the Designs Act, it (i.e., the design) would lose its copyright protection. However, no copyright would be lost in the original work.
The court, in the Microfibers case, further held that in case the artistic work is registrable as a design and has not been so registered, then the said design would continue to enjoy the copyright protection under the Act, 1957 so long as the threshold limit of its application on an article by an industrial process for more than fifty times is reached. Once it crosses that limit, the design would lose copyright protection.
Rejection of Plaint - Order VII Rule 11, CPC
Standard also contended that since the drawings were not registered under the Designs Act, 1911, TAFE did not enjoy any exclusive rights in this regard and since the artistic work in the said drawings had been industrially applied more than fifty times, the copyright in this respect had also ceased, as per Section 15(2) of the Act, 1957. Hence, TAFE was barred from bringing the suit for copyright infringement. Standard further relied on the decision of the High Court of Delhi in the matter of Time Warner Entertainment Company L.P. & Ors v. RPG Netcom [see end note 3] wherein the court had observed that infringement of copyright is a statutory right conferred upon the author by the Act, 1957 and cannot be brought about de-hors the statute.
TAFE, on the other hand, contended that it was open to them to bring about an action of passing off against Standard, by way of a civil suit, seeking remedy against ‘deceit’ under the common law of Torts; however, accepting that the passing off cannot be claimed as a remedy under the Copyright Act, 1957.
Decision
The Division Bench upheld the order of the Single Judge and held that Standard had not shown sufficient cause or reason for interference with the said order. The Division Bench also upheld Single Judge’s finding that the civil suit filed by TAFE has raised triable issues and therefore, need to be decided upon at the stage of trial with the relevant evidence taken into consideration.
While dismissing the appeal filed by Standard, the Division Bench held that the latter had failed to establish that the relief prayed for by TAFE was barred by law and ruled as follows:
“A right existing in a person or an entity to seek certain reliefs before a Court of law, when disputes had arisen, cannot be curbed, at the outset, without having proper reasons to do so.”
[The authors are Associates, IPR Practice, Lakshmikumaran & Sridharan, New Delhi]
End Notes:
- Dated 4-4-2014
- 2009 (40) PTC 519 (Del.) (DB)
- 2007 (34) PTC 668 (Del) (DB)