Ritika Pvt. Ltd. vs. Biba Apparels Pvt. Ltd. (2016)- Design vs Copyright ?

The Indian fashion market is all about rapid innovations, going with the trend, setting up new trends and reaching out to your audiences before the trend or that innovation dies. When a brand or individual comes up with a new idea in his artistic work it is not mandatory for him to get it registered under The Copyright Act, 1957 to file a suit for copyright infringement. However, it helps in establishing prima facie evidence in claiming the ownership of that artistic work. The same has been reaffirmed in the landmark judgement of the Hon’ble High Court of Bombay of Sanjay Soya Private Limited v. Narayani Trading Company decided on March 09, 2021. The matter however in the present case is of the issue of copyright vs design rights.

The factual matrix

The facts of the case are such that Mrs. Ritu Kumar owns the copyright of his drawings or sketches which she uses on her garments or ensembles which are well coordinated and are in consonance with the sleeves, front and back panels. She claims to be the rightful owner of the drawings and sketches that she uses on her garments under the brand name Ritu Kumar. Also in this regard, she has placed invoices of the digital prints of those drawings and sketches. However, the question in the case is not specifically of the rightful owner of the copyright work but of copyright infringement and design work. The plaintiff alleges that the defendant has infringed upon his copyrighted work by using the drawings and sketches or by imitating such work on the defendant’s clothes and garments.

The plaintiff also states that the defendant is also in violation of trade secrets employed by the plaintiff to sustain her business by employing previous employees of the plaintiff. The Defendant on the other hand states that the plaintiff never got her design registered as per sub-section (2) of section 15 under the Designs Act, 2000 even when the design has been commercially exploited through an industrial process for more than fifty times by the owner of the copyright because of which the copyrights of the work of the plaintiff ceases. Subsequently, the plaintiff is seeking restraint from the defendant through an instrument of injunction for not reproducing, publishing or printing such a piece of artistic work by imitating those specific drawings and sketches of the plaintiff.

The Issue involved

Whether the section 15(2) of the Copyright Act, 1957 protects the owners of a copyright work if their work is not registered under the Designs Act, 2000 and if it has been reproduced for a number of times exceeding 50 by industrial process by the owner of the copyright, or by license granted to someone by the owner ?

The primary assertions of the plaintiff The arguments put forth by the plaintiff are such that whatever is a drawing or sketch considered to be an artistic work is covered under copyright continues to be a matter of copyright even though it has been reproduced for a number of times exceeding 50.

Also, it has been contended by the plaintiff that from the very language of the definition of ‘design’ given under section 2(d) of the Designs Act, 2000, the artistic work as in Copyrights Act, 1957 are not designs by themselves. Hence, it is a necessary precondition for the application of section 15(2) of the Copyrights Act, 1957 that it must be registered under the Designs Act, 2000. It has been further argued in the case that the work of drawing and sketch as used for the preparation of garments is an original artistic work of the plaintiff as covered under section 13(1)(a) of the Copyrights Act, 2000 and its registration as a design will contradict the provisions of section 4 of the Designs Act, 2000 which prohibits a design from registration which is not new or original. Hence such an artistic work of the plaintiff cannot be registered as a design under the relevant act resulting in inapplicability of section 15(2) of the Copyrights Act, 1957.

Section 15(2) of the Copyrights Act, 1957- ‘Copyright in any design, which is capable of being registered under the 3 [***] 4 [Designs Act, 2000 (16 of 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.’

Thus, it has been understood and argued on this behalf by the plaintiff side that registration of a copyright work in design is a prerequisite for the applicability of section 15(2) of the Copyrights Act, 1957 and hence they are not bound by it subsequently their original artistic work needs to be protected under the Copyrights Act, 1957 by the infringement of the defendant.

The court’s view

The plaintiff in order to support his arguments took precedents established by this very court in the judgements of- 1) Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia (2015). 2) Rajesh Masrani v. Tahiliani Design Pvt. Ltd. (2009). But the Hon’ble Court in its observation of the precedents found the judgement to be irrelevant as the facts of the cited judgements dehors the facts of the present case. Para 20 of the Ritika Private Limited v. Biba Apparels Private Limited (2016) reads as- Para 20- “Therefore, observations made by the Division Bench in the case of Midas Hygiene Industries Pvt. Ltd. (supra) were in the facts of that case of applying copyright work as it is to a carton or a packaging, and such observations therefore cannot be read with respect to copyright continuing to exist although from the copyrighted work articles are manufactured by an industrial process or means more than 50 times in number.”

Para 21- “The judgment in the case of Rajesh Masrani (supra) is also not applicable for the same reason that the facts of the said case were different and again the ratio of the Constitution Bench case in Padma Sundara Rao (Dead) (supra) is reiterated that the issue of interpretation of Section 15(2) of the Indian Copyright Act never came up in Rajesh Masrani's case (supra) as the admitted position in that case was that the limit of 50 number of articles produced from the copyright work was not crossed.”

The Hon’ble court Delhi High Court was very well aware of the judgement in the case of Microfibres Inc. v. Girdhar & Co. and Anr. (2009) decided by the division bench of this very high court and while deciding on the present matter took note of the following para from the judgement:

Para 22- “Therefore, it is the exclusive right of the holder of a Copyright in an original artistic work to reproduce the work in any material form. For example, a drawing of an imaginary futuristic automobile, which is an original artistic work, may be reproduced in the three dimensional material form using an element, such as a metal sheet. When the copyright holder of an original artistic work reproduces the same in another material form, he may, or may not do so by employing an industrial process or means which may be manual, mechanical or chemical, separate or combined, on an article. If the reproduction of the original artistic work is done by employing an industrial process, as aforesaid, on an article, and the same results in a finished article which appeals to the eye as adjudged solely by the eye, then the features of shape, configuration, pattern, ornament or composition of lines or colours applied to the article by the industrial process constitutes a ‘design’, within the meaning of this expression as defined under the Designs Act.”

The court established the distinction between the original artistic form of work and design. In its observation, the court said that a person who has an exclusive rightful claim over his original artistic work can use it or reproduce it in the way he wants in a 2D or 3D form but when he puts that artistic work through an industrial process and the finished product turns out to have a specific features, shape or configuration and that reproduction through the industrial process exceeds the limit of 50, then the original artistic work can be understood to be a design as in the Designs Act, 2000. The court also observed the misconception of the plaintiff towards Section 15(2) of the Copyrights Act, 1957. The court pointed out the word ‘capable of being registered’, broadening its scope under the judgement including that artistic drawings and sketches can be registered as design under the Designs Act, 2000. Hence, applicability of section 15(2) of the Copyrights Act, 2000 can be invoked.

Conclusion

The Hon’ble Delhi High Court through this landmark judgement in the case of Ritika Private limited v. Biba Apparels Private Limited starks the essential practice as to mandatory registration of an original artistic work of an owner to be registered as a design under the Designs Act, 2000 despite the artistic work being his original work and protected under the Copyrights Act, 2000. The court through this judgement has reaffirmed that if an artistic work is put through industrial process for mass protection, it is considered to be a design and needs to be mandatorily registered under the relevant act for its protection. As soon as the artistic work exceeds the reproduction criteria over 50 such works, it loses its essence as a copyrighted work and its inherent protection under the Copyrights Act, 1957.

Author: Mihir, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.