MANU/DE/0647/2009

Equivalent Citation: MIPR2009(2)229, 2009(40)PTC 519(Del)

IN THE HIGH COURT OF DELHI

RFA (OS) No. 25/2006, FAO (OS) No. 447/2008 and RFA (OS) No. 25/2006
Decided On: 28.05.2009
Appellants: Microfibres Inc. and Ors. Vs. Respondent: Girdhar and Co. and Ors.
Hon'ble Judges/Coram:
Mukul Mudgal and Vipin Sanghi, JJ.
Counsels:
For Appellant/Petitioner/plaintiff: Raju Ramachandran, Sr. Adv., Ruchi Agnihotri,
Anushree Tripathi, Advs. in RFA (OS) No. 25/2006,Praveen Anand, Swathi Sukumar,
Tusha Malhotra, Advs. in FAO (OS) No. 447/2008, Arun Jaitley, Sr. Adv., Jaspreet
Sareen, Angad Varma and Pragya Jha, Advs. in RFA (OS) No. 25/200
For Respondents/Defendant: Prashanto Chandra Sen, Adv. for the Respondent No. 1,
Rajendra Kumar, Punita Bhargava, Advs. for Respondent No. 2 in RFA (OS) No.
25/2006, Abhishek Manu Singhvi, Sr. Adv., Sushant Singh, Adv. in FAO (OS) No.
447/2008, Sanjay Jain, Sr. Adv. and Sushant Singh, Adv. in RFA (OS) No. 25/2006
Case Note:
Intellectual Property Rights - Designs and Copyright - Artistic work -
Registration - Section 2(d) of the Designs Act, 2005 and Section 2(c) of
the Copyright Act, 1957 - Appellant sought protection of its design under
the copyright Act - Same was disallowed by the Single Judge on the ground
that Appellants work does not qualify as an artistic work so as to entitle it
for protection under Section 2(c) of Copyright Act - Hence, the present
appeal - If designs in question was capable of being registered under the
Designs Act, 2000 and has not been so registered whether the Appellant
was entitled to seek protection under the copyright law as the designs had
not been registered under the Design's Act - Held, if the design is
registered under the Designs Act, the Design would lose its copyright
protection under the Copyright Act - If it is a design registrable under the
Designs Act but has not so been registered, the Design would continue to
enjoy copyright protection under the Act so long as the threshold limit of its
application on an article by an industrial process for more than 50 times is
reached - But once that limit is crossed, it would lose its copyright
protection under the Copyright Act - Hence, Appellant not entitled to
protection under Section 2 (c)of Copyright Act - Appeal dimissed
JUDGMENT
Mukul Mudgal, J.
1 . This appeal bearing RFA (OS) No. 25/2006 arises out of the judgment of the
learned Single Judge dated 13th January, 2006 in Suit No. 1480/2002.
2 . Since certain common issues arise in this appeal and the other two appeals i.e.
FAO (OS) No. 326/2007 filed by Dart Industries Inc. and FAO (OS) No. 447/2008
filed by Mattel Inc., on the question of interpretation of Section 2(c) of the Copyright
Act read with Section 2(d) of the Designs Act and Section 15(2) of the Copyright Act

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 and their interplay with each other, we have permitted the parties in the connected
appeals also to make submissions on the common legal principles arising in these
appeals. However, the aforesaid two appeals bearing FAO(OS) Nos. 326/2007 and
447/2008 will be taken up for hearing on facts and other pleas after the
pronouncement of the judgment in the present appeal bearing RFA(OS) No. 25/2006
in the appeal titled Microfibres v. Girdhar & Co. and Anr.
3. The appellant manufactures and sells upholstery fabrics with designs derived from
the original and unique artistic works either conceptualized or drawn by its
employees or by assignation of the copyright in such artistic works to the appellant
by the original artists.
4 . The respondents are also manufacturers of upholstery fabrics and the learned
Single Judge in the judgment challenged in this Court has held that the upholstery
fabrics of the respondent do incorporate/reflect the designs founded upon the
appellant' s artistic works or a substantial reproduction thereof.
5 . The grievance of the appellant arises from the premise that the learned Single
Judge held that the designs in question were capable of being registered under the
Designs Act, 2000 and consequently the appellant was not entitled to seek protection
under the copyright law as the designs had not been registered under the Design' s
Act.
6. The learned Single Judge held as follows:
a. In order for the work of the appellant to qualify as an artistic work, it must
fall within the Sub-section (c) of the Section 2 of the Copyright Act. A
reading of the said provision shows that the attempt of the appellant can
only be to bring it to the concept of = painting' .
b. The comparison with the painting of M.F. Hussain, would be otiose, as the
work in question in the present case, is not a piece of art by itself in the form
of painting.
c. The originality is being claimed on the basis of the arrangement made.
What cannot be lost sight of is the very object with which such arrangements
or works had been made. The object is to put the artistic work into industrial
use.
d. The two important aspects are the object with which it is made, which is
industrial and its inability to stand by itself as a piece of Article In fact, it has
no independent existence in itself.
e. In India, there are special legislations governing the protection of different
nature of rights. In so far as the industrial designs are concerned, the
protection is provided under the Designs Act, 2000.
f. Fabric designs on textile goods have been classified as proper subject
matter of design protection by inclusion as a specific class in the rules
framed under the Designs Act. Such protection is provided under clause 05
of the New Design Rules, 2001.
g. The exclusion of an = artistic work' as defined in Section 2(c) of the
Copyright Act from the definition of = design' under Section 2(d) of the
Designs Act, 2000 is only meant to exclude the original artistic works like
paintings of M.F. Hussain. It is, thus, the original paintings, sculptors and

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 such works of art which are sought to be specifically excluded from the
definition of Design under the Designs Act, 2000.
h. It is, thus, apparent that in the context of the Indian Law, it is the Design
Act of 1911 or 2000, which would give protection to the appellant and not
the Copyright Act.
i. The application of mind and skill is not being denied nor the fact that the
respondents have copied the same, but that would still not amount to the
works in question being labeled as = artistic work' within the definition of
Section 2(c) of the Copyright Act and, thus, the protection is not available
under the Copyright Act.
j. At the relevant stage of time, it was the Designs Act of 1911 which was in
operation since the Designs Act, 2000 came into force only in May, 2001.
The works of the appellant were capable of registration under the Designs
Act of 1911. The appellant, however, failed to register the same at that
relevant stage of time. That the appellant itself has set out that it had
registered the patterns under the Designs Act in England.
k. Designs copyright was, thus, held to be distinguishable from artistic
copyright. The rights under the Patent and Designs Act were much narrower
than those given by the Copyright Act and in respect of such products, it was
not intended that they should have cumulative protection both under the
Copyright Act, the Patent Act and/or the Designs Act.
l. What the appellant was actually required to do, was to register the
designs, which the appellant has failed to do. The designs are older and,
thus, would have been registrable under the Designs Act of 1911. The
appellant failed to register the designs. Insofar as the Designs Act of 2000 is
concerned, the appellant has also admittedly not registered the designs
under the said Act.
m. It would suffice to say that the patterns and designs of the appellant were
capable of registration both under the old Act and the new Act and the
appellant failed to do so with the result that the protection is not available to
the appellant which would have arisen if they had been so registered.
n. The appellant has failed to make out a case of having completed the
requisite formalities in law so as to avail the benefit of the exclusive use of
the patterns and designs in question.
7 . It has been submitted on behalf of the appellant that the above finding of the
learned Single Judge that the works of the appellant were not original artistic works
within the definition of Section 2(c) of the Copyright Act proceeds on the
misappreciation of law and seeks to draw an artificial distinction between those
works which are pure artistic works and those which are not. In particular, he has
questioned the finding of the learned Single Judge that the artistic work in question
does not have the ability to stand by itself as a piece of art and in fact has no
independent existence in itself. It has been contended that the exclusion of an =
artistic work' as defined in Section 2(c) of the Copyright Act from the definition of =
design' under Section 2(d) of the Designs Act, 2000 is meant to exclude the original
artistic work.
8. The following three conclusions of the learned Single Judge have been questioned
in this appeal:

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 (i) Re the works in question...its inability to stand by itself as a piece of
Article In fact, it has no independent existence in itself." (para 62 of the
impugned judgment)
(ii) The exclusion of an = artistic work' as defined in Section 2(c) of the
Copyright Act from the definition of = design' under Section 2(d) of the
Designs Act, 2000 is only meant to exclude the nature of artistic works like
painting of M.F. Hussain (para 65 of the impugned judgment).
(iii) The application of mind and skill is not being denied nor the fact that the
respondents have copied the same, but that would still not amount to the
works in question being labeled as = artistic works' within the definition of
Section 2(c) of the Copyright Act and, thus, the protection is not available
under the Copyright Act (para 62 of the impugned judgment).
9 . The appellant through Senior Counsel Sh. Raju Ramachandran submitted as
follows:
a. An erroneous and artificial distinction has been drawn by the learned
Single Judge in between artistic works which are a piece of art by themselves
and other works through the interpretation of Section 2(c) (i), whereas the
subjective assessment of the artistic quality of a work is not required so as to
qualify for the protection available under the Copyright Act, 1957. Reliance
has been placed on the judgment in the case of British Northrop v. Texteam
Blackburn Ltd. (1974) RPC 57 to submit that the works must originate with
the author and not being copies from another work as the only requirement,
so as to qualify for copyright protection.
b. The learned Single Judge found that the works in question were capable of
being registered under the designs law as the Designs Act classification
includes = fabrics' as articles whose design can be registered. However, this
finding fails to take note of the fact that it is the nature of the work which
determines the intellectual property rights vested therein and not merely the
fact that it falls under the classification of the Designs Act or the Trade Marks
Act. Even the Trade Marks Act provided for registration of fabrics/textiles in
Class 24. What was required to determine the capacity of being registered
under the Designs Act was not whether the object fell into the classification
within the Designs Act, but whether the work in question satisfied the
substantive requirements for registration as a = design' .
c. The phrase = capable of being registered' must be understood as referring
to designs possessing, at the time of being made, such essential
characteristics which qualify them as = designs' under the Designs Act, 2000
i.e. being novel and original as opposed to merely original as required under
the Copyright Act, 1957. The Copyright Act requirement was merely the
originality of the work. For a work to be within the meaning of = capable of
being registered' , it must satisfy the definition of = design' as well as the
test of the work being novel or original and of it being sufficiently
distinguishable from known designs or combination of known designs. While
the learned Single Judge noted the respondents submission to the following
effect...designs in use are built around permutations and combinations of a
limited number of motifs/limitations from various sources and requiring very
little by way of distinguishing variations to claim originality", yet he went on
to hold that the said works are capable of being registered as designs and
the two conclusions are incompatible. It is also found erroneously by the

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 learned Single Judge that there is an element of labour and skill applied to a
particular pattern of work in question which clearly required original artistic
works and nevertheless a finding was made that the artistic works in
question are not = original artistic works'.
d. The operation of Section 15(2) of the Copyright Act, 1957 does not
exclude from the ambit of copyright protection, the subject/underlying
artistic works. Consequently, the original underlying paintings created and
acquired/owned by the appellant which were applied to the textiles with
certain modifications do fall within the meaning of = original artistic works'
defined under Section 2(c) of the Copyright Act, 1957 and thus entitled to
copyright protection. In fact, such works were clearly and expressly excluded
from the definition of = design' in Section 2(d) of the Designs Act.
e. The paintings are either purchased from a third party or created in house
by the appellant, and when an artistic work is purchased from a third party, a
Certificate of Authenticity is obtained from the author of that painting,
declaring that the copyright and the artistic work is assigned by the owner to
the appellant. The original paintings undergo a series of processes and
adaptations for them to be applied to fabrics, and each of these paintings
and the modified drawings are separately and independently entitled to
protection as an = artistic work' under the Copyright Act, 1957. The
intermediate paintings leading to the final product satisfy all the requisites of
= artistic works' and have independent existence by themselves as opposed
to technical/engineering drawings solely created for the purposes of
production of a corresponding product, which were no more than instructions
for manufacturing applied to the product in question to which they may have
been applied. The application of adaptations and modifications to such
artistic works on fabrics, may under Section 15(2) of the Copyright Act,
extinguish the copyright protection therein after 50 productions, but does not
affect the copyright protection afforded to the original work as = the artistic
work' . It also does not affect the existence of separate copyright in any
independent work which may have been used in the context of the creation
of a particular product. The copyright in the underlying/original artistic work
would continue to subsist and can be enforced by the copyright owner.
f. The respondents' fabrics being colorable imitations or substantially similar
copies of the original underlying modified paintings of the appellant
amounted to infringement of the artistic copyright therein. This is particularly
so when inspite of the work of the respondent being claimed to be
independent, no details of such original independent work were forthcoming.
Reliance was placed on the judgment in the case of Rajesh Masrani v.
Tahiliani Designs Pvt. Ltd. 2009 (39) PTC 21 which held that Section 2(d) of
the Designs Act, 2000 does not include any artistic work as defined in
Section 2(c) of the Copyright Act. It was also held in the above judgment
that it is evident from the definition of = design' under the Designs Act, 2000
that the artistic work as defined in Section 2(c) of the Copyright Act, 1957 is
excluded if any party is able to bring his case within the framework of
Section 2(c) of the Copyright Act, 1957 while claiming the copyright. In such
a situation, the suit for infringement is maintainable.
g. Lastly, the plea of unfair competition which was evident from the almost
identical product of the respondent was lost sight of. The finding of the
learned Single Judge clearly demonstrated that the respondent having copied
the artistic work of the appellant were not entitled to protection and such an

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 interpretation has led to the blatant act of copying being permitted on
account of mere technicalities. It has also been submitted that in the criminal
proceedings instituted by the appellant under Section 63 of the Copyright
Act, the Additional Chief Metropolitan Magistrate has rejected the report of
the Investigating Officer stating that no case was made out on the following
findings:
The investigating agency did not consider that the accused by
counterfeiting the works of the complainant were intentionally and
dishonestly deceiving innocent customers into believing that their
products are made by the complainant and thus dishonestly and
fraudulently induced them to part with monies for such counterfeit
and spurious products. The IO failed to examine the aspect that the
accused have committed an offence of cheating and fraud within the
meaning of Section 415 & 420 read with Section 120B IPC....
10. The learned senior counsel summarized his arguments as follows:
a. The artistic works of the appellant were original 'artistic works' within the
meaning of Section 2(c) of the Copyright Act, 1957 and hence the appellant
could claim exclusive rights in the same under Section 14(c) of the said Act.
b. The true import and content of the definition of Design under the Designs
Act, 2000 specifically excludes 'artistic works' as defined by Section 2(c) of
the Copyright Act, 1957 from the definition of = Design' .
c. The artistic works in question being 'artistic works' within the meaning of
Section 2(c) of the Copyright Act, 1957, were squarely covered within the
exceptions carved out under Section 2(d) of the Designs Act, 2000, and were
hence 'incapable of registration' under the Designs Act, 2000, rendering them
protectable, solely under the Copyright Act, 1957.
d. Section 15(2) of the Copyright Act, 1957, cannot be said to apply to an
'original artistic works' , such as those which were the subject matter of the
suit and the appeal, which are incapable of being registered as Designs.
e. The exclusion in Section 15(2) applies only in respect of works which have
been applied to an article and the said article has been reproduced more than
fifty times.
f. The copyright in the paintings are not extinguished by virtue of Section
15(2) of the Copyright Act, 1957.
g. 'Design' as defined by the Designs Act, 1911 as well as the Designs Act,
2000; means only the features of shape, configuration, pattern or ornament
applied to any article by any industrial process or means; and to be such
must satisfy, inter alia, the test of 'new' and 'original' and not merely
'originality' as under the Copyright Act, 1957.
h. The analysis to be undertaken to determine whether a work is 'capable of
being registered' is not whether the same falls into a classification within the
Designs Act, 2000 or not but rather whether the work in question satisfies
the substantive requirements for registration as a 'design' .
11 Mr. Arun Jaitley, Sr. Advocate, appeared on behalf of the appellants in FAO(OS)
No. 326/2007 titled as Dart Industries Inc and Anr. v. Techno Plast and Ors. and

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 FAO(OS) No. 447/2008 titled as Mattel Inc and Ors. v. Jayant Aggarwalla and Ors. He
addressed the arguments only on the question of interpretation of Section 15(2) of
the Copyright Act as according to him the decision in the present case i.e. Microfibres
Inc. v. Girdhar and Co. and Anr. would also affect the appeals filed by his client.
12. He submitted that his client in the first case is a manufacturer of plastic utility
products. The process involved is the preparation of the drawing which is called the
first stage which then leads to the production of mould/engraving which is the
second stage and from the said mould/engraving, the final product emerges, which is
the third stage.
13. As far as the second case of Mattel is concerned, he submitted that the stage of
mould/engraving is not there and straightaway from the drawing the product
emerges. He further submitted that a design is related to aesthetics and visual
features and utility part of the product relates to, at best, the patent and not the
design law. He submitted that Section 14(c) of the Copyright Act defines the rights of
an owner of a Copyright in an artistic work within the meaning of Copyright Act. By
placing reliance on Section 14(c) (i), he submitted that such a copyright owner has a
right to reproduce the work either in two-dimensional or three-dimensional products.
Section 2(c) which defines = artistic works' covered specifically both drawings and
engravings. The offending product of the respondent, was made by a process of
reverse engineering which would involve the taking up of the product, creating a
mould from it and finally a drawing. That the moulds and the drawings of the
appellant are copyright protectable under the Copyright Act and could not be, and are
incapable of forming part of the design registration. Inter alia he submitted that the
mould and the drawing do not appeal to the eye as required under Section 2(d) of
the Designs Act. Reliance was placed on Section 15(1) read with Section 2(c) of the
Copyright Act to submit that upon the registration of a design the loss of copyright is
restricted to the stage III i.e. the eventual product. Section 15(1) does not
contemplate stages I and II, that is, the drawing and the mould not being protected
under the Copyright Act. Section 15 of the Copyright Act in its entirety does not affect
stages I and II and will apply to only those cases, which are design registrable and
copyright registrable. That in so far as Section 15 (1) is concerned, the copyright is
lost immediately upon the registration under the Designs Act and the exclusion under
S. 15(2) covers the cases which are registrable under the Designs Act and the
product is produced 50 times. Reference was made to Section 2(d) of the Designs Act
and reliance was placed upon a judgment in Ahuja Intellectual Property Cases Vol. 3
No. 5, August 1998 Smithkine Beecham Consumer Health Care v. Eden Cosmetics
Ltd.
14. The learned Counsel for the respondent No. 2, Sh. Rajender Kumar submitted as
under:
A. The appellant' s case was that the claim of artistic copyright in the fabric
designs is not affected by the definition of = design' in the new Designs Act,
2000 which specifically excludes = artistic work' as defined in Section 2(c) of
the Copyright Act, 1957. This plea of the appellant has been termed as
incorrect in law and fact by the learned Counsel for the respondent No. 2. It
is submitted that the interpretation negates the rationale underlying the
copyright legislation and the design legislation and is not only anti-
competitive but also would throttle and stagnate the industry. Reliance has
been placed on the case of Interlego A.G. v. Tyco Industries Inc. (1988)
R.P.C. 343; Premier Hangers CC v. Polyoak (PTY) Ltd. (1997) (1) SA 416 and
S.S. Sarna Inc. and Anr. v. Talwar and Khullar Pvt. Ltd. and Ors. I.A. Nos.
6597 and 6944 of 1991 in Suit No. 1481 of 1991 decided on August 08,

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 1991.
B. Reliance on the above judgments has been placed to show that the
copyright protection relates to the image per se and design protection is for
the manufactured article as a whole. While the protection of the image per se
confers a very broad protection, the protection of the manufactured article
confers only a limited monopoly.
C. The term = artistic work' under the Copyright Act, 1957 include two
dimensional works such as drawings, paintings, photographs and engravings
and three dimensional works such as sculptures, models and works of artistic
craftsmanship. Under the Copyright Act, the copyright owners have wide
range of rights including the basic right to reproduce their works in a
material form including reproduction in different dimensions. The term of
protection under the Copyright Act is far longer than that of a registered
design (life of the author plus 60 years posthumous as against 15 years
under the Designs Act) and there is no requirement of registration for
protection. The copyright infringement remedies are far broader than those
under the Designs Act. For this purpose, reliance has been placed on
paragraphs 19 to 35 of the learned Single Judge' s judgment.
D. The design does not stand on its own as an artistic work but is to be
copied or applied in a commercially produced artifact object by an industrial
process conferring protection on the manufactured article itself without any
conceptual separation between the artistic work and the product on which it
is applied. The statutory monopoly granted by the Designs Office is granted
for a limited period of 10 years which is renewable by a further period of 5
years.
E. The crucial test is the industrial intent with which the object is made. It is
submitted that the interpretation sought to be canvassed by the appellant
would have the effect of rendering the design legislation in India redundant
because each design registered thereunder would be able to trace its origin
to a diagram, chart, drawing etc. and thus, cease to be governed by the
Designs Act. This would therefore enlarge the monopoly in industrial design
from the current maximum term of 15 years to that available for a period of
the age of the author plus 60 years available under the Copyright Act. Such
an interpretation is anti-competitive and stagnates industrial innovativeness,
the rationale underlying the statutory monopolies such as designs and
patents. Reliance has been placed on paragraphs 51 and 64 of the learned
Single Judge' s judgment.
F. Reliance was placed on Section 15 of the Copyright Act, 1957 to
emphasize the clear demarcation between the Copyright Act and the Designs
Act.
G. Even assuming without admitting that the appellant' s fabric designs fell
within the definition of = artistic works' so as to enable them to claim
protection under the Copyright Act, the appellant still cannot rely upon any
artistic copyright underlying designs and invoke the protection of the
Copyright Act, 1957 in view of the clear mandate provided under Section
15(2) of the Act. The appellant' s fabric designs not being registered and
having been applied to by an industrial process more than 50 times, no
artistic copyright protection can be claimed in view of the mandate of Section
15(2) of the Copyright Act, 1957. For this purpose, reliance has been placed

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 on paragraphs 67 of the learned Single Judge' s judgment.
H. Even assuming without admitting that the exclusion of artistic work in the
Designs Act, 2000 has the meaning ascribed to it by the appellant, such a
meaning still does not support the case of the appellant. Section 15 of the
Copyright Act is a limitation on the scope of the artistic works and
contemplates such works which are aesthetic, eye-appealing and ornamental
i.e. pure and simple works of fine arts. Section 15 withdraws the copyright
from such works if such manifestation or features of shape, configuration,
ornament etc. has been applied to an industrial product and multiplied more
than 50 times. Section 15 of the Copyright Act interprets an important
limitation on the scope of protection available to artistic works under the Act
and exclusion of = artistic work' from the definition of = design' under
Section 2(d) of the Designs Act, 2000, therefore, has to be read in view of
the limitation imposed on copyright by virtue of Section 15 of the Copyright
Act.
I. The rationale and philosophy underlying the design protection under the
Designs Act, 1911 and its successor Designs Act, 2000 has remained the
same and is evident from the following factors:
a. The textile fabrics are registrable and in fact have been registered
under both the Design Acts (1911 & 2999 Acts).
b. Under the Designs Act, the fabric designs on textile goods have
been classified under proper subject matter of design protection.
c. The statement of objects and reasons, the notes on clauses
accompanying the Designs Bill which lead to the enactment of the
Designs Act, 2000.
d. The proceedings from the parliamentary debate on the Bill.
e. Hand-outs by the Designs Office for public information.
f. Formal confirmation by the Registrar of Designs that the fabric
design continues to be registrable under the Designs Act, 2000.
Reliance for the purpose has been placed upon paragraphs 65 and 66
of the learned Single Judge' s judgment.
J. The appellant' s case is not that the work in dispute was created as an
artistic work, pure and simple and the plaint states that the appellant has
been in the business of manufacturing and marketing of upholstery fabrics
and in connection therewith has created original artistic works applied by it
to such upholstery fabrics which is manufactured, marketed, sold and
exported all over the world including India by it. The so-called artistic work
thus, was always intended to be an industrial product for the production of a
commercially produced fabric and marketed commercially. Reliance has thus
been placed on the averments in paragraphs 3, 4, 6 and 13 of the plaint.
K. Even on facts, the appellant' s case is founded on a few designs which in
fact had originated when the repealed Designs Act was in operation. It is also
not in dispute that the subject matter = designs' was created with an
industrial intent for application to fabric or cloth and more than 50
reproductions have been made without registering them under the Designs
Act.

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 L. Even the certificates relied upon by the appellant from the U.S. Copyright
Officer refers to the subject matter as fabric designs and not artistic works.
M. The appellant was conscious of the fact that the registration was required
for registration under the Designs Act and similar design was in fact
registered under the U.K. Designs Act, 1949. Reliance was placed on
paragraph 68 of the learned Single Judge' s judgment.
N. For the first time in the appeal, it has been averred by the appellant that
the exception 'capable of being registered' necessarily connotes and includes
the element of novelty as a necessary requisite for design protection and
thus, lack in novelty makes them incapable of registration under the Designs
Act thereby granting them the protection under the Copyright Act. Such an
interpretation by the appellant is not justified and has been rejected in the
following two judgments i.e. Interlego A.G. v. Tyco Industries Inc. (1988)
R.P.C. 343 and Bayliner Marine Corp. v. Doral Boats (1987) FSR 497.
15. Mr. Prashanto Chandra Sen, who appeared on behalf of the respondent No. 1
submitted as follows:
a. That the idea of applicability of work/painting/drawing to an article is
central to the concept of design and for this purpose the learned Counsel
relied upon the definition of = design' under Section 2(5) of the Designs Act,
1911 and Section 2(d) of the Designs Act, 2000. Reliance was placed on the
judgment of Dover LD case 1910 PRC 498 and in particular the following
passages:
The explanation of this lies possibly in the fact that the novelty may
consist not in the idea itself but in the way in which the idea is to be
rendered applicable to some special subject matter. The word
'original' contemplates that the person has originated something,
that by the exercise of intellectual activity he has started an idea
which had not occurred to anyone before, that a particular pattern or
shape or ornament may be rendered applicable to the particular
article to which he suggests that it shall be applied. If that state of
things be satisfied, then the Design will be original, although the
actual picture or shape or whatever it is which is being considered is
old in the sense that it has existed with reference to another article
before. It is more easy by illustration in the concrete than by words
in the abstract to explain what I mean. First, a few illustrations as to
shape. The traditional figure or Falstaff is as old as Shakespeare, but
if a person conceived for the first time the idea of making a wine
beaker in the form of the figure of Falstaff that would be an original
design for a wine beaker....
The words 'new or original' involve the idea of novelty either in the
pattern, shape or ornament itself or the way in which an old pattern,
shape, or ornament is to be applied to some special subject matter.
There must be the exercise of intellectual activity so as to originate,
that is to say, suggest for the first time, something which had not
occurred to anyone before as to applying, by some manual,
mechanical, or chemical means, some pattern, shape or ornament to
some special subject matter to which it had not been applied
before....
b. It was further submitted that the distinction between a = design' and an =

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 artistic work' lies in the applicability of the former to an article. Reliance in
this regard was placed on the quotation from Copinger' s Law of Copyright,
5th edition referred in Con Planck Ltd. case 1923 KB 804 wherein it was held
that the fundamental distinction between a design and a simple artistic work
lies in the applicability of the former to some other article.
c. Consequently, the test which was required to be applied was to consider
the design and to see whether it is used or intended to be used as model of
patterns to be multiplied by an industrial process.
d. In respect of the present case, it was submitted that the patterns and
designs were used industrially and commercially in India and abroad as per
the case set up by the appellant in the plaint.
e. The case set up by the appellant-plaintiff would result in every tracing,
drawing etc. being protected under the Copyright Act and also being
industrially/commercially exploited, by being applied to articles which was
not the intention of the Designs Act. Reliance was placed on the judgment of
Pugh v. Riley 1912 RPC 196 which emphasizes the fact that a design
necessarily requires something in the nature of a drawing or tracing. The
following quotation from the above judgment was relied upon by the learned
Counsel for the respondent No. 1:
A design to be registrable under the Act must be some conception or
suggestion as to shape, configuration, pattern, or ornament. It must
be capable of being applied to an article in such a way that the
article, to which it has been applied, will show to the eye the
particular shape, configuration, pattern or ornament, the conception
or suggestion of which constitutes the Design. In general, any
application for registration must be accompanied by a representation
of the design; that is, something in the nature of a drawing or
tracing, by means of which the conception or suggestion Constituting
the Design may be imparted to others. In fact, persons looking at the
drawing ought to be able to form a mental picture of the shape,
configuration, pattern, or ornament of the article to which the Design
has been applied.
f. It was consequently submitted that what was capable of being registered
as a design is the tracing, drawing etc. as applied to an article and not the
tracing or drawing itself. The tracing, drawing etc. once applied to an article
becomes incapable of being registered as a design.
g. The plea of the appellant was that even if the drawing or painting is
applied to an article, it is still not being capable of being registered as a
design because the original drawing/painting is protectable under copyright
and artistic works protected by the copyright are excluded from the ambit of
design. It is submitted that the above interpretation relied upon by the
appellant is flawed as no tracing, drawing or painting which is applied to an
article and commercially exploited can be registered as a design. In such an
event the Designs Act would become otiose as every design necessarily
traces its origin to a drawing or a painting.
h. Different kinds of protection for an artistic work and commercially
exploited work have been made available by the Legislature and, thus, the
applicability of the drawing/tracing/mould being applied to articles is crucial
to the concept of design as it is only the applicability of a tracing/drawing to

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 an article which makes the work commercially exploitable.
i. The copyright protection is available for the lifetime of the author or sixty
years whereas such a long period of protection is not available under the
Designs Act or the Patents Act. The legislative intent is obvious as the
products being commercially exploited cannot be granted a longer protection.
Reliance was also placed on the judgments in Interlego case (1988) RPC 343,
S.S. Sama, Samsonite case MANU/DE/0045/1998 : 73(1998)DLT732 ;
Deepak Printary, Ahmedabad v. The Forward Stationery Mart and Anr.
MANU/GJ/0152/1975 : (1976)17GLR338 . We might notice that in the
Interlego case the following position of law was laid down:
The definition of = design' in Section 1(3) of the Act of 1949 is
hardly a model of Parliamentary draughtsmanship and this is by no
means the first case in which its meaning and application have been
called in question. In approaching the question of construction there
has to be borne in mind that the purpose of the Act, as appears both
from its terms and its legislative history, is to protect novel designs
devised to be = applied to' (or, in other words, to govern the shape
and construction of) particular articles to be manufactured and
marketed commercially. It is not to protect principles of operation or
inventions which, if protected at all, ought to be made the subject-
matter of a patent. Nor is it to prevent the copying of the direct
product of original artistic effort in producing a drawing. Indeed the
whole purpose of a design is that it shall not stand on its own as an
artistic work but shall be copied by embodiment in a commercially
produced artifact. Thus, the primary concern is what the finished
article is to look like and not with what it does and the monopoly
provided for the proprietor is effected by according not, as in the
case of ordinary copyright, a right to prevent direct reproduction of
the image registered as the design but the right, over a much more
limited period, to prevent the manufacture and sale of articles of a
design not substantially different from the registered design. The
emphasis therefore is upon the visual image conveyed by the
manufactured article.
j. He further submitted that the issue is academic in the present case as
admittedly the designs of the appellant were made and sold much prior to
2000 and therefore, the definition of the Designs Act, 2000 would not be
applicable in the present case.
k. By placing reliance on Section 15(2) of the Copyright Act, 1957, it was
submitted that the reproductions have been sold commercially in India and
abroad by the appellant and the said reproduction are more than 50 in
number and the appellants have modified their case only to overcome this
and a plea has been raised that at first the original artistic works were
sourced and thereafter they were considerably modified and applied to
upholstery fabrics manufactured by the appellant company. Such a plea did
not figure in the plaint.
l. This is evident from the plea taken for the first time i.e. the underlying
artistic works were not applied to any article and as such the extinguishment
of the copyright under Section 15(2) of the Copyright Act does not apply to
the said paintings.

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 1 6 . Mr. Sanjay Jain, the learned Senior counsel appearing on behalf of the
respondent No. 1 in FAO (OS) No. 326/2007 titled as DART Industries Inc. and Anr.
v. Techno Plast and Ors., has made the following submissions in respect of the
interplay of the Designs Act and the Copyright Act:
a. In so far as the = artistic work' is concerned, it has a different connotation
under the two Acts and enjoys different levels of copyright protection.
b. Under Section 2(d) of the Designs Act, the exclusion of = artistic work' is
confined only to those artistic works governed by the Copyright Act. The
above definition itself clearly stipulates that there are two categories of =
artistic works' - one governed by the Designs Act and the other by the
Copyright Act. The artistic work governed by the Designs Act consequently
receives copyright cover under Chapter III of the Designs Act and the
residuary categories of artistic works receive protection under the Copyright
Act.
c. It is, therefore, necessary to determine the purpose for which the artistic
work was created so as to determine which enactment applies. The creation
of artistic work at the original stage/threshold level and then to assess if at
all, at what stage it was decided to put it for industrial application, is also a
relevant factor. Once the artistic work falls within the category of Designs
Act, it cannot revert back to the protection of the Copyright Act as once
having been put to industrial use by replicating it 50 times, the protection
under the Copyright Act is lost permanently. Consequently, once such artistic
work is put to an industrial application, the intent of the author at the
initial/conceptual stage becomes immaterial and copyright can only be
preserved under the second category governed by the Copyright Act, even
though the expression = design' is not specifically used under Section 2(c)
of the Copyright Act. The = design' is certainly an artistic work at the initial
stage and depending upon its application acquires protection of either the
Copyright Act or the Designs Act if the industrial application is resorted to.
This is evident from the exclusion embodied in Section 2(d) of the Designs
Act.
d. Since in the case of Microfibre Inc and Dart Industries Inc, it has been
stated in the plaint that the artistic works in question were created/conceived
by the in-house employees/promoters for the sole and pre-determined
purpose of using the same as designs, meant for industrial application, the
creation of the artistic work constitutes an integral part of a pre-programmed
= manufacturing process' . There is an industrial application and its
segregation into two or three stages such as drawing/painting/moulding is
not feasible under the regime of the Copyright and/or the Designs Act.
e. Section 2(j) of the Designs Act recognizes the existence of proprietary
rights in a new or original design and as per Section 2(g) of the Designs Act,
'originality' in relation to a design means as originating from the author of
such design. Consequently, the expression = appeal to and judged solely by
the eye' occurring in Section 2(d) does not necessarily connote any aesthetic
beauty in the classical sense but merely refer to such artistic works which
have the capacity to enhance decorative value or visual appeal when applied
to a finished article and can be distinctly perceived through human eye as
various features described in Section 2(d) of the Designs Act i.e. (a) shape
(b) configuration (c) ornament and/or (d) composition of lines or colours.

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 f. The goods falling in all the above three categories fall under the
classification of the Designs Act and in fact, in the Tupperware case, the
plaintiffs had got a registration under the Designs Act.
g. The learned Counsel further submitted that the second of the two
categories of artistic works are those works, which to begin with, were not
put to industrial application and would be covered under the definition of
Section 2(c) of the Copyright Act. Further, if such an artistic work is put to
industrial use as defined in Section 15(2) by the industrial application of 50
replications, it then loses its copyright protection and no protection is then
available to such artistic work under the Copyright Act. Such extinguishment
of copyright protection under Section 15(2) of the Copyright Act, once
applied to final product as a design, whether through the conversion of a
drawing into a two dimensional product or the conversion of drawing to
moulding, eventually resulting in three-dimensional product, nevertheless,
does not provide any copyright protection to the intermediate stages such as
drawing/painting/moulding.
h. Once an artistic work extinguishes, it loses the protective cover of the
Copyright Act. As per application of Section 15(2) the protection under the
Copyright Act ceases forever. The protection under Section 15(2) of the
Copyright Act is not available at the initial stage of such artistic work, which
at the threshold level are created for industrial application by obtaining
registration under the Designs Act and such works stand covered by Section
15(1) of the Copyright Act. Such category of artistic work is completely
excluded from the coverage under the Copyright Act at the threshold and
even under the meaning of Section 2(c) of the Copyright Act, no protection is
available to such works at any stage as the process of obtaining registration
under the Designs Act is a clear intention of abandoning the protection of the
Copyright Act. Consequently, the two-stage theory for the underlying
copyright coverage cannot apply as evident from perusal of Section 15(2) of
the Copyright Act.
i. Consequently, an artistic work falls in the basket of Designs Act by being
created to be used as a design only; though not originally created to be used
as design but subsequently relegated or pushed to be used as a design for
being applied on a finished article after being produced more than 50 times.
j. It is significant that the definition of artistic work in Section 2(c) of the
Copyright Act does not use the expression = design' as a variant or
constituent of artistic work.
k. Once the = design' as a concept or as a variant is conspicuous by its
absence from the definition of = artistic work' under the Copyright Act, it is
clear that a design cannot be de-structured or de-constructed by reverse
engineering or otherwise to be an = artistic work' within the meaning of
Copyright Act.
l. However, an artistic work can be lifted to the level of design under Section
15(2) of the Copyright Act. This is evident from the definition of = design'
under the Designs Act which removes all doubts and possibilities of
overlapping or an equivocal interpretation of the expression = design' in the
context of an = artistic work' and excludes those artistic works from its ambit
which has not been (a) created or (b) used as a design and then proceeds to
confer copyright on such artistic works under Chapter III of the Designs Act.

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 17. Dr. Singhvi, the learned Senior counsel appearing on behalf of the respondents
in FAO (OS) No. 447/2008 titled as Mattel Inc. v. Jayant Agarwalla and Ors.,
submitted as follows:
I. Section 15 of the Copyright Act was retained for the purpose of statutory
harmony between the Designs Act, 2000 and the Copyright Act, 1957. The
scheme of the Designs Act of 1911 is the same and except the amendment in
Section 2 (d) of the Designs Act, 2000 which excludes artistic work defined
under Section 2(c) of the Copyright Act, 1957, the object was evident and
was to prevent a very long-term or perennial monopoly of a person who was
commercially exploiting something and yet enjoying long periods of
copyright protection. The retention of Section 15 of the Copyright Act, 1957
inspite of the Designs Act, 2000 is relevant and shows that the legislature
intended that Section 15 integrates the two Acts. The acceptance of the
appellant' s plea would render the need to register the design under the
Designs Act nugatory as a design proponent would automatically get a larger
period of copyright protection under the Copyright Act. Such an
interpretation would indeed render the Designs Act otiose.
Section 15(1) of the Copyright Act clearly notes the impact of the Designs
Act, 2000 and promotes the mandate that the copyrightable designs shall not
enjoy Copyright protection. Conversely, the Designs Act, 2000 excludes other
copyrights not intended to be covered by the Designs Act. An example of a
painting of = Ganesha' was given which would enjoy full copyright
protection during the lifetime of the author plus 60 years. However, if the
author applied the said painting of = Ganesha' to a furnishing, to be
commercially reproduced, such a painting when applied to a furnishing gets
limited copyright protection under the Designs Act, 2000. The act of applying
the painting to a furnishing, however, does not mean that the full copyright
protection of the stand alone work of art/artistic work such as = Ganesha' is
lost. If anyone seeks to only reproduce the drawing/painting as a standalone
work of art, it would violate copyright of the author.
Section 15(2) of the Copyright Act protects copyright in unregistered designs
only till 50 reproductions are made. This clearly demonstrates the reciprocal
statutory legislative intent which promotes harmony and not disharmony. On
an assumption that Section 15 was not present in Copyright Act, the
legislature could not have intended that the anomalous situation arises
allowing industrial designs to claim monopoly under the Copyright Act too.
This rule out the applicability of the repugnant legislation which only applies
in respect of interpretation of List III of the Constitution.
II. The mischief sought to be protected by the amendment in the Designs
Act, 2000 is the larger protection period under the Copyright Act for a design
which has been put into commercial production. Consequently, the mischief
sought to be prevented is not the mischief of copying but of the larger
monopoly claimed by the design proponent inspite of commercial production.
The objects and reasons of the Designs Act clearly show that the legislature
intended by virtue of Designs Act to promote design activity, competition and
lessen the monopoly period. This is the finding in Microfibres Inc. v. Girdhar
& Co 2006 (32) PTC 157 in the following terms:
the mischief which is sought to be prevented by reading Section 15
is not copying by the respondent, but the mischief which is intended
to be prevented by Section 15 is that a right holder cannot switch

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 over the monopoly right and indirect claim right over a designable
subject matter.' In the case of Indian Handicrafts Emporium and Ors.
v. Union of India and Ors. MANU/SC/0640/2003 : AIR2003SC3240
the mischief rule has been thus enunciated by the Supreme Court as
under:

42. In Jones v. Wrotham Part Settled Estates AC at p.105, the law is

stated in the following terms: = ... .I am not reluctant to adopt a
purposive construction where to apply the literal meaning of the
legislative language used would lead to results which would clearly
defeat the purposes of the Act. But in doing so the task on which a
court of justice is engaged remains one of construction, even where
this involves reading into the Act words which are not expressly
included in it. Kammins Ballrooms Col. Ltd. v. Zenith Investments
(Torquay) Ltd. provides an instance of this, but in that case the three
conditions that must be fulfilled in order to justify this course were
satisfied. First, it was possible to determine from a consideration of
the provisions of the Act read as a whole precisely what the mischief
was that it was the purpose of the Act to remedy....
Similar view was taken in the case of S. Gopal Reddy v. State of A.P.
MANU/SC/0550/1996 : 1996CriLJ3237 wherein it was held as under:
He must set to work on the constructive task of finding the intention
of the Parliament, and he must do this not only from the language of
the statute, but also from a consideration of the social conditions
which gave rise to it and of the mischief which it was passed to
remedy, and then he must supplement the written word so as to give
= force and life' to the intention of the legislature....
III. The purpose of the Designs Act is that any aesthetic 'not classical' value
as applied to an article and appealing to eye is protected. The protection is
afforded to aesthetic and ornamental aspects of two dimensional and three
dimensional products as well as the idea of applying such aesthetic and
ornamental aspects to the product. The design registration giving protection
of 15 years encourages commerce and if there was no Section 15 of the
Copyright Act, the copyright protection would then be perpetual in effect
rendering the Designs Act otiose.
The three levels of protection suggested by Mr. Jaitley, the learned Senior
Counsel, i.e. the sketch, mould and product seeks to circumvent the
legislative intent by achieving what is prohibited directly; that is enlarging
the monopoly of commercial products.
Every design is traceable to a mould or a drawing and the only test which
needs to be applied is the intent of creating the mould.
IV. It is evident that the intent of making the mould is not to sell the mould
as a stand alone product on the article on which the mould or design would
be applied. Thus, a drawing or mould eventually merges into an article and
becomes part of the product and the copyright in the drawing or mould may
remain as per the Copyright Act, 1957 but would stand reduced for the
mould or drawing as applied to an article to 15 years, due to the commercial
production and the emerging of the drawing and the mould into article. It is

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 also submitted that if any monopoly right over the article is lost, then the
stages antecedent to the article has no value.
V. The design proponent once having elected to produce the article
commercially cannot claim the larger period of copyright protection as once a
right holder chooses to have patent/design right over an article then by
virtue of operation of doctrine of election, the indirect right of copy over the
drawings is abandoned/foregone by a right holder. This position was held in
the case of Catnic Components Ltd. v. Hill & Smith Ltd. (1978) 4 FSR 405.
VI. Non-application of the doctrine of election would result in term of
inconsistency that is the protection of design right for a period of more than
15 years. The claim of the appellant' s in Dart Industries Inc. and Mattel Inc.
are inconsistent with the copyright protection of 15 years by virtue of the
Designs Act, 2000 and would amount to extending the copyright to the term
of the lifetime of the author plus 60 years.
VII. The article is to be seen as a whole and the appeal of the article, subject
matter of the design protection forms part of the article itself and hence
cannot be protected as separate work of Article
18. In his rejoinder arguments Mr. Praveen Anand has argued that there is a vital
difference between the subject matter of copyright and design protection.
as follows: S. No. COPYRIGHT DESIGN
1. Creation based Registration based
2. Not destroyed by Destroyed by prior
prior publication publication
3. Copying necessary Grants monopoly
4. Compromise of the Compromise of
work itself Article in addition to
Design. That is the
a r t i c l e is the
different from the
design that is
applied to the
article.
II. He submits that the election theory or intention test, as is propounded by the
respondents is flawed. He submits that the election theory that the creator of an
artistic work loses his copyright upon application of the work to an article or if the
artistic work is created with the intention of being used as a design is improper and
that it would lead to inequitable situations. The reasons for this submission of his
are:
(a) The application of an artistic work to an article may not be in
contemplation of the person creating the artistic work at the time of creation.
Illustration: For instance, if 'A' creates an artistic work in the year 2001 and
releases it in an art gallery. In 2003, the work is applied to an article. Under
the interpretations of the respondents, 'A' will not be entitled to copyright
protection under Section 15 (2) of the Copyright Act, 1957. 'A' will also not
be entitled to design protection under Section 19(1) (b) of the Designs Act,
2000, as the 'design' has been published by the exhibition of the artistic
work in the art gallery in 2001 This will lead to an anomalous situation,
where artists would be deprived of both rights.

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 (b) The application of the artistic work may be the thought of subsequent
assignee and not the original artist; and
(c) The article to which the work is applied may itself come into existence in
future (e.g. KINDLE by Amazon) and may not be in existence at the time the
artistic work was created.
III. Mr. Anand submits that the extension of rights can arise only on the happening of
two events which are as under:
A. Registration of a design is necessary. This is only possible if there is an
article, under the Designs Act (Section 15 (1) of the Copyright Act, 1957) So
the intention test is non-workable as it discloses the ambiguity and
uncertainty of:-
i. Whose intention is relevant'
ii. When should the intention have existed; and
iii. Intention to do what
B. Copyright in the design is capable of being registered and is reproduced
over fifty times (Section 15 (2) of the Copyright Act, 1957). For this
provision to apply, an = article' has to exist, as defined under the Designs
Act.
IV. Consequently, for Section 15 of the Copyright Act to get triggered it is not steps
1, 2 and 3 but steps 4 and 5 which trigger the section.
1. Creation of an artistic work
2. Formation of an intention by someone to apply the work to an article.
3. Creation of an article
4. Getting design for the article
5. Not getting a design registered but multiplying it fifty times
V. He submits that what stands extinguished is the copyright in the design and
applied to an article and not the copyright in the artistic work itself. He refers to
Schedule 3 of the Designs Rules 2001 which deals with classification of goods for
purpose of registration as a design to point out that the schedule uses expressions
like equipment, apparatus, articles etc. but does not use the expression 'Drawings' .
He submits that the extent of extinction is copyright in the design for that article for
which steps 4 and 5 above, namely registration or mass- multiplication have taken
place. The copyright in the artistic work, as also the copyright in designs for non-
registered and non-mass multiplied articles is preserved.
VI. He submits that he would make his submissions with regard to the meaning of an
'article' and on the scope of Section 2 (d) on the Specific Reference to the facts of the
Mattel Inc.' s case and submissions in that respect has not been made as at present.
19. The relevant statutory provisions are as follows:
THE DESIGNS ACT, 2000 THE COPYRIGHT ACT, 1957
Section 2(c), The Copyright
Section 2(d), The Designs

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 Section 2(d), The Designs
Act, 2000 Act, 1957 (c) "artistic work"
means,- (i) a painting, a
"design" means only the sculpture, a drawing
features of shape, (including a diagram, map,
configuration, pattern, chart or plan), an engraving
ornament or composition of or a photograph, whether or
lines or colours applied to not any such work possesses
any article whether in two artistic quality;
dimensional or three
dimensional or in both (ii) a work of architecture;
forms, by an industrial
process or means, whether and (iii) any other work of
artistic craftsmanship;
manual, mechanical or Section 13 (2) (i) The
chemical, separate or Copyright Act, 1957 13 (2)
combined, which in the (i) in the case of a published
finished article appeal to and work, the work is first
are judged solely by the eye; published in India, or where
but does not include any the work is first published
mode or principle of outside India, the author is
construction or anything at the date of such
which is in substance a mere publication, or in a case
mechanical device, and does where the author was dead
not include any trade mark at that date, was at the time
a s defined in clause (v) of of his death, a citizen of
sub-section (1) of Section 2 India; Section 15 The
of the Trade and Merchandise Copyright Act, 1967 Special
Marks Act, 1958 or property provision regarding copyright
mark as defined in Section in designs registered or
479 of the Indian Penal Code capable of being registered
or any artistic work as under the Designs Act, 1911.
defined in clause (c) of (2) Copyright shall not
Section 2 of the Copyright subsist under this Act in any
Act, 1957; Section 2(g) The design which is registered
Design Act, 2000 "original", under the Designs Act, 1911
in relation to a design, (2 of 1911).
means originating from the
author of such design and (3) Copyright in any design,
includes the cases which which is capable of being
though old in themselves yet registered under the Designs
are new in their application; Act, 1911 (2 of 1911), but
Section 2(j) The Design Act, which has not been so
2000 : "proprietor of a new registered, shall cease as
o r original design" (i) where soon as any article to which
the author of the design, for the design has been applied
good consideration, executes has been reproduced more
the work for some other than fifty times by an
person, means the person for industrial process by the
whom the design is so owner of the
executed; (ii) where any copyright or, with his
person acquires the design licence, by any other person.
o r the right to apply the Section 16 (The Copyright
design to any article, either Act, 1957) No copyright
exclusively of any other except as provided in this
person or otherwise, means,

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 in the respect A c t . - N o person shall be
entitled to copyright or any
(iii) and to the extent in and similar right in any work,
to which the design or right w h e t h e r published or
has been so acquired, the unpublished, otherwise than
person by whom the design under and in accordance with
or right is so acquired; and the provisions of this Act or
in any other case, means the of any other law for the time
author of the design; and being in force, but nothing in
where the property in or the this section shall be
right to apply, the design has construed as abrogating any
devolved from the original right or jurisdiction to
proprietor upon any other restrain a breach of trust or
person, includes that other confidence. Section 40 (a)
person. Section 4. (The ( T h e Copyright Act, 1957)
Design Act, 2000) : Power to extend copyright to
Prohibition of registration of foreign works.- 40 (a) to
certain designs. "A design work first published in any
which" (a) is not new or territory outside India to
original; or (b) has been which the order relates in
disclosed to the public any like manner as if they were
where in India or in any first published within India;
other country by publication
in tangible form or by use or Section 22 Term of copyright
in any other way prior to the in published literary,
filing date, or where dramatic, musical and artistic
applicable, the priority date works.-Except as otherwise
of the application for hereinafter provided,
registration; or (c) is not copyright shall subsist in any
significantly distinguishable literary, dramatic, musical or
f r o m known designs or artistic work (other than a
combination of known photograph) published within
designs; or (d) comprises or the lifetime of the author
contains scandalous or until [sixty years] from the
obscene matter, Section 12 beginning of the calendar
(The Designs Act, 2000) : year next following the year
in which the author dies.
Restoration of lapsed Section 67 Penalty for
designs.-(1) Where a design making false entries in
has ceased to have effect by register, etc., for producing
reason of failure to pay the o r tendering false entries.
fee for the extension of "Any person who," (a) makes
copyright under sub-section or causes to be made a false
(2) of Section 11, the e n t r y in the Register of
proprietor of such design or Copyrights kept under this
his legal representative and Act, or (b) makes or causes
where the design was held to be made a writing falsely
by two or more persons purporting to be a copy of
jointly, then, with the leave any entry in such register, or
(c) produces or tenders or
of the Controller one or more causes to be produced or
of them without joining the tendered as evidence any
others, may, within one year such entry or writing,
from the date on which the knowing the same to be
design ceased to have effect, false, shall be punishable

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 make an application for the with imprisonment which
restoration of the design in may extend to one year, or
t h e prescribed manner on with fine, or with both.
payment of such fee as may
be prescribed. (2) An
application under this section
shall contain a statement,
verified in the prescribed
manner, fully setting out the
circumstances which led to
t h e failure to pay the
prescribed fee, and the
Controller may require from
t h e applicant such further
evidence as he may think
necessary. Section
11.Copyright on registration-
(1) When a design is
registered, the registered
pro pri eto r of the design
shall, subject to the
provisions of this Act, have
copyright in the design
during ten years from the
date of registration. (2) If,
before the expiration of the
said ten years, application
for the extension of the
period of copyright is made
to the Controller in the
prescribed manner, the
Controller shall, on payment
of the prescribed fee, extend
the period of copyright for a
second period of five years
from the expiration of the
original period of ten years.
Section 22. Piracy of
registered design. (1) During
the existence of copyright in
any design it shall not be
lawful for any person-
(a) for the purpose of sale to
apply or cause to be applied
to any article in any class of
articles in which the design
is registered, the design or
any fraudulent or obvious
imitation
thereof, except with the
licence or written consent of
the registered proprietor, or
to do anything with a view to

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 enable the design to be so
applied; or (b) to import for
the purposes of sale, without
the consent of the registered
proprietor, any article
belonging to the class in
which the design has been
registered, and having
applied to it the design or
any fraudulent or obvious
i mi tati o n thereof; or (c)
knowing that the design or
any fraudulent or obvious
imitation thereof has been
applied to any article in any
class of articles in which the
design is registered without
the consent of the registered
proprietor, to publish or
expose or cause to be
published or exposed for sale
that article.
20. After taking into account the above pleas, we are of the view that Section 2(c) of
the Copyright Act defines 'artistic work' to mean a painting, sculpture, a drawing
(including a diagram, map, chart or plan), and engraving or photograph, whether or
not any such work possesses artistic quality. It also includes a work of architecture
and any other artistic craftsmanship. This definition has a very wide connotation as it
is not circumscribed by any limitation of the work possessing any artistic quality.
Even an abstract work, such as a few lines or curves arbitrarily drawn would qualify
as an artistic work. It may be two dimensional or three dimensional. The artistic work
may or may not have visual appeal.
2 1 . The rights to which a holder of an original artistic work is entitled are
enumerated in Section 14(c) of the Copyright act. These are, the right:
(i) To reproduce the work in any material form including depiction in three
dimensions of a two dimensional work or in two dimensions of a three
dimensional work;
(ii) To communicate the work to the public;
(iii) To issue copies of the work to the public not being copies already in
circulation.
(iv) To include the work in any cinematograph film;
(v) To make any adaptation of the work;
(vi) To do in relation to an adaptation of the work any of the acts specified in
relation to the work in sub-clauses (i) to (iv)
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

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 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.
23. There is, therefore, a clear distinction between an original artistic work, and the
design derived from it for industrial application on an article. This position is clarified
by the use of the expression 'only' before the words 'the features of shape,
configuration, pattern, ornament or composition of lines or colours' in the definition
of 'design' in the Designs Act. Therefore, the original artistic work, which may have
inspired the creation of a design, is not merely the feature of shape, configuration,
pattern, ornament or composition of lines or colours which are created to apply to an
article by an industrial process. The original artistic work is something different from
the design. Secondly, the definition of 'design' expressly excludes, inter alia, any
artistic work defined in Section 2(c) of the Copyright act, 1957.
24. It needs to be emphasized that it is not necessary that in every case a design has
to be preceded by an artistic work upon which it is founded. A craftsman may create
a design without first creating a basic artistic work. This may best be illustrated by a
weaver who may straightaway create a design while weaving a shawl, which product
could be created even without the basic artistic work.
25. Whether or not a design is preceded by an original artistic work, a design would,
in its own right qualify to be termed as an artistic work within the meaning of Section
2(c) of the Copyright Act. This is so because the expression = artistic work' as
defined in Section 2(c) of the Copyright Act bears a wide definition to mean 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.
However, the design may or may not enjoy a copyright protection under the
Copyright Act, depending on whether it is an = original artistic work' or not.
2 6 . The expression 'copyright in any design' used in Section 15(2) means the
copyright as understood under the Copyright Act, and not under the Designs Act. This
is evident from the expression 'copyright shall not subsist under this Act... ... 'used in
Sub-section (1) of Section 15. However, copyright in an artistic work subsists
provided it is an original artistic work. Therefore, there can be no claim for Copyright
under the Copyright Act in an artistic work which does not have the quality of
possessing originality. The holder of a copy of an original artistic work cannot claim
copyright protection. Therefore, to be entitled to protection under the Copyright Act,
the design should have originality. That is not to say that if the design is not entitled
to copyright protection under the Copyright Act, on account of it not possessing
originality vis-Ã -vis the original artistic work, the design does not require, or cannot
be granted registration under the Designs Act for it to be entitled to protection under
the Designs Act.
27. Under the Designs Act, a copyright has a different connotation from a copyright
under the Copyright Act. Under the Designs Act, copyright means the exclusive right
to apply the design to any article in any class in which the design is registered.
2 8 . The issue with regard to the extent of, and the conditions for the copyright

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 protection to such an artistic work, as an artistic work under the Copyright Act, which
is a design registered or capable of registration under the Designs Act, is what is
dealt with, by Section 15 of the Copyright Act. Once the distinction between the
original artistic work and the design derived from it, and the distinction between
Copyright in an original artistic work under the Copyright Act, and a copyright in a
design under the Designs Act is appreciated, the meaning and purport of Section 15
of the Copyright Act becomes clear.
29. Section 15 of the Copyright Act is in two parts. The first part i.e. Sub-section (1)
states that copyright shall not subsist under the Copyright Act in any design which is
registered under the Designs Act. Consequently once the design is created and got
registered under the Designs Act, whether or not the design is eventually applied to
an article by an industrial process, the design loses its protection as an artistic work
under the Copyright Act. Therefore, subject to whatever rights that are available
under the Designs Act, the registered design holder cannot claim protection or
complain of copyright infringement in respect of the registered Design under the
Copyright Act.
30. Subsection (2) of Section 15 deals with the situation where the design, which is
capable of being registered under the Designs Act, is not so registered. It provides
that copyright in such a design shall cease as soon as any article to which the design
has been applied has been reproduced more than 50 times by an industrial process
by the owner of the copyright or with his licence, by any other person. It is clear to
us that the Parliament in Section 15 of the Copyright Act was dealing with the aspect
of copyright in a registered/registrable design, as understood in the Copyright Act
and not the Designs Act. Else, there was no need to deal with this aspect in the
Copyright Act. The same would have been dealt with under the Designs Act.
Therefore, the law tolerates only a limited industrial, or shall we say commercial,
exploitation of the original artistic work by the application/reproduction of the said
work in any other form or reproduction of copies thereof in exercise of the rights
under Section 14(c)(1) and 14(c)(iii) of the Copyright Act. Beyond the specified limit,
if the design derived from the original artistic work is exploited (i.e. if the design is
applied more than 50 times by an industrial process on an article) the copyright in
the design ceases unless it is registered under the Designs Act.
31. We are also of the view that it is not correct on behalf of the appellant to urge
that the intention of the creation of the work determines the Intellectual Property
Rights contained therein, and not whether such work fell within the classification of
'Designs' under the Designs Act or the Copyright Act. The Designs Act nowhere
stipulates the intention of the creator of the work as a determinative criteria and the
exhaustive definition given not only in the Designs Act but indeed the Copyright Act
clearly rules out such interpretation as suggested by Shri Raju Ramachandran. In
fact, the appropriate occasion to evaluate the registrability of a design would arise
when the artistic work is translated into an object having features of shapes,
configuration, pattern, ornament or composition of lines or colors whether two
dimensional or three dimensional by employing an industrial process. Significantly,
the appellant themselves have registered their product under the Designs Act in U.K.
Furthermore, as submitted by the appellant, even if there is very little variation
between the original artistic work and the design which is industrially applied to an
article to produce a product, nevertheless, such a design can claim registration under
the Designs Act, provided such registration was sought. The interpretation suggested
by the appellant would clearly afford not only the design protection in case of
registered works but also in addition, the copyright protection to the works which
were industrially produced, which interpretation does not reflect the legislative intent.

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 32. A perusal of the Copyright Act and the Designs Act and indeed the Preamble and
the Statement of Objects and Reasons of the Designs Act makes it clear that the
legislative intent was to grant a higher protection to pure original artistic works such
as paintings, sculptures etc and lesser period of protection to design activity
commercial in nature. The period of copyright would be the author' s life span plus
60 years. However, the legislature has allocated a lesser time span for the protection
available to a registered design as only being 15 years. Thus, commerce and art have
been treated differently by the Legislature and any activity which is commercial in
nature has been granted lesser period of protection. On the other hand, pure artistic
works per se have been granted a longer protection.
3 3 . The Statement of Objects and Reasons of the Designs Act, 2000 reads as
follows:
Since the enactment of the Designs Act, 1911 considerable progress has
been made in the field of science and technology. The legal system of the
protection of industrial designs requires to be made more efficient in order to
ensure effective protection to registered designs. It is also required to
promote design activity in order to promote the design element in an article
of production. The proposed Designs Bill is essentially aimed to balance
these interests. It is also intended to ensure that the law does not
unnecessarily extent protection beyond what is necessary to create the
required incentive for design activity while removing impediments to the free
use of available designs.
The legislative intent is, thus, clear that the protection accorded to a work which is
commercial in nature is lesser than and not to be equated with the protection granted
to a work of pure Article
34. Section 6 of the Designs Act, 2000 reads as follows:
6 . Registration to be in respect of particular article.-(1) A design may be
registered in respect of any or all of the articles comprised in a prescribed
class of articles.
(2) Any question arising as to the class within which any article falls shall be
determined by the Controller whose decision in the matter shall be final.
(3) Where a design has been registered in respect of any article comprised in
a class of article, the application of the proprietor of the design to register it
in respect of some one or more other articles comprised in that class of
articles shall not be refused, nor shall the registration thereof invalidated-
(a) on the ground of the design not being a new or original design,
by reason only that it was so previously registered; or
(b) on the ground of the design having been previously published in
India or in any other country, by reason only that it has been applied
to article in respect of which it was previously registered: Provided
that such subsequent registration shall not extend the period of
copyright in the design beyond that arising from previous
registration.
(4) Where any person makes an application for the registration of a design in
respect of any article and either-

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 (a) that design has been previously registered by another person in
respect of some other article; or
(b) the design to which the application relates consists of a design
previously registered by another person in respect of the same or
some other article with modifications or variations not sufficient to
alter the character or substantially to affect the identity thereof, then,
if at any time while the application is pending the applicant becomes
the registered proprietor of the design previously registered, the
foregoing provisions of this section shall apply as if at the time of
making the application, the applicant, had been the registered
proprietor of that design.
A perusal of the above Section 6 clearly indicates that once the design has
been registered for a particular article comprised in a class of articles, the
subsequent registration of other articles comprised in that class of articles
shall not be refused but the subsequent registration shall not extend the
period of copyright in the design beyond that arising from the previous
registration. It is significant that the subsequent registration has statutorily
been mandated not to extend the period of copyright registration beyond the
period beginning from the original registration. This clearly shows the
legislative intent of limiting the copyright protection in the design to the
initial period of 10 years, extendable by further period of 5 years.
35. However, there can be no quarrel with the plea of Shri Ramachandran that the
operation of Section 15(2) of the Copyright Act does not exclude from the ambit of
Copyright protection either the original 'artistic work' upon which the design is based
or the design which by itself is an artistic work. It cannot be disputed that the
original paintings/artistic works which may be used to industrially produce the
designed article would continue to fall within the meaning of the artistic work defined
under Section 2(c) of the Copyright Act, 1957 and would be entitled to the full period
of copyright protection. This is also evident from the definition of the design under
Section 2(d) of the Designs Act. This, in our view, in fact is a factor which would go
against the appellants in construing the nature of protection to be given to the
original artistic work such as a painting, as contrasted with the applied artistic work
that is the design, which in the present case does not mean the intermediary medium
such as a mould, engraving devised/produced only to enable industrial application of
the painting to produce the furnishing products of the appellant. Thus, while the
original painting would indeed be entitled to the copyright protection, the
commercial/industrial manifestation of such paintings such as the design derived
from and founded upon the original painting for the purpose of industrial production
of furnishings would only be covered by the limitations placed in Section 15 of the
Copyright Act and would get protection if registered as a design under the Designs
Act but would enjoy lesser period of protection in case of a registered design.
36. This clearly shows that the legislature intended that even if the artistic work such
as a painting has been used as the basis for designing an industrially produced object
for commerce, such as the furnishing in the present case, nevertheless the original
painting would indeed enjoy full copyright protection, while the result of the
industrial application of such painting, namely, the design used in the industrial
production of the ultimate product shall enjoy lesser period of protection as
stipulated under the Designs Act provided it is registered as a design under the
Designs Act. Thus, we are of the view that an original artistic work initially acquires
protection under the Copyright Act as an 'artistic work' or else the protection under
the Designs Act qua the product created from the artistic work when industrially

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 applied.
3 7 . Dr. Abhishek Manu Singhvi, the learned Senior Counsel appearing for the
respondent in FAO (OS) No. 447/2008 had submitted, and in our view rightly so that
the object of the two legislations was to prevent long term usage by the person who
was commercially exploiting something and yet wanting to claim an exclusive
monopoly through longer period of copyright protection afforded to an artistic work.
Section 15 of the Copyright Act demonstrates the legislative intention of integrating
the Copyright and Designs Acts and any other interpretation would, as rightly
submitted by Dr. Singhvi, render the registration under the Designs Act as
meaningless as a design proponent will always get a longer period of copyright
protection under the Copyright Act. In our view, the above plea would make a
registration under the Designs Act meaningless, which the legislature could have
never intended. In fact, the plea of Dr. Singhvi that a design which has been granted
the protection under the Designs Act cannot be granted protection under the
Copyright Act is correct and this is evident from Section 15(1) of the Act.
38. Thus, while it is not open to the respondent to reproduce such paintings per se,
which formed the basis of the design that was applied to the fabric, nevertheless,
such protection qua the design imprinted on the product through industrial
application is available only under the Designs Act, provided there is a registration.
This is precisely why the legislature not only limited the protection by mandating that
the copyright shall cease under the Copyright Act in a registered design, but in
addition, also deprived copyright protection to designs capable of being registered
under the Designs Act, but not so registered, as soon as the concerned design had
been applied more than 50 times by industrial process by the owner of the copyright
or his licensee. This clearly indicates that the legislature intended to provide
industrial and commercial application of an artistic work for commerce lesser
protection.
39. Shri Arun Jaitley, the learned Senior Counsel appearing for the appellant in FAO
(OS) No. 326/2007 titled as Dart Industries Inc. and Anr. v. Techno Plast and Ors.
had only made submissions in the present appeal in respect of Section 15 of the
Copyright Act to the extent it could affect the appeal filed by his clients. He had
advanced a very attractive argument as to the three stages of processes leading to
the eventual designed product. He submitted that the first stage is of the preparation
of drawing or artistic work which leads to the production of mould/engraving which
is the second stage and such mould/engraving leads to the final commercially
marketable product, which is the third stage. He has also submitted that the products
of the respondent were made by the process of reverse engineering starting from the
final product leading to the second stage of creating a moulding, and from it a final
drawing. His plea was based upon the premises that the mould and the drawing of
the appellant are copyright protectable under the Copyright Act and cannot be or are
incapable of forming part of the design registration regime. It is submitted that the
product of the respondent involves the copying of the mould/drawing of the
appellant.
40. While the argument is very attractive but nevertheless it is not legally sustainable
because such a plea would enlarge the monopoly in industrial design from the
current maximum time of 15 years to the longer period available under the Copyright
Act. While the original drawings of the appellant could be entitled to copyright
protection under the Copyright Act as artistic works, the designs derived therefrom as
moulds which are used for industrial application of the design on the articles would
not qualify for protection as artistic works under the Copyright Act except in
accordance with Section 15(2) of the Copyright Act. It is not the case of the appellant

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 Microfibres or even that of Mr. Jaitley' s clients that the design applied on the fabric
(in the case of Microfibres) or the plastic (in the case of Mattel Inc.) has not been
applied for more than 50 times. There designs have been used more than 50 times.
The learned Single Judge in paragraph 51 of the impugned judgment held as follows:
The plea of the plaintiff is also sought to be negated on the issue of
definition of a = design' under Section 2(d) of the Designs Act, 2000
whereby an = artistic work' as defined in Clause (c) of Section 2 of the
Copyright Act has been specifically excluded. The submission was, thus,
advanced that this would have the effect of rendering the law of designs
redundant for the simple reason that each design registered thereunder
would be able to trace its origin to a diagram, chart, drawing, etc. and, thus,
cease to be governed by the Designs Act. The legislative intent could not
have been this because the law of designs is based on the same principle as
applicable to other monopolies and to fuel industrial innovativeness by
granting limited time-limit to the monopolies and allow others to make use
of them after they have passed into the public domain. Thus, the plea of the
plaintiff, if accepted, would be anti-competitive and would throttle and
stagnate the industry.
In our view the learned Single Judge has felicitously summed up the legislative intent
that limited monopoly should be granted to fuel industrial inventiveness in the field
of commerce. We fully approve and reiterate the aforesaid view.
4 1 . As rightly submitted by Shri Rajender Kumar, the learned Counsel for the
respondent No. 2 in the present appeal, the interpretations canvassed by the
appellant would, render the design legislation otiose, because every registered design
would then be able to trace its origin to a chart, drawing, diagram etc. and
consequently also claim copyright protection under the Copyright Act in addition to
the protection as a registered design under the Designs Act.
4 2 . Shri Prashanto Chandra Sen, the learned Counsel appearing on behalf of the
respondent No. 1, contended that the difference between a design and an artistic
work lies in the applicability of the former to an article as evident from the decision
in Con Planck Ltd. case 1923 KB 804, wherein it was held that the fundamental
distinction between a design and a simple artistic work lies in the applicability of the
former to some other article. In our view, the interpretation suggested by Shri Jaitley
would result in every industrial tracing, drawing or mould which may not be an
original artistic work within the meaning of Section 2(c) read with Section 13 of the
Copyright Act, and which lead to the designed product, being afforded protection
under the Copyright Act as an original artistic work and also being at the same time
industrially and commercially exploitable by being applied to marketable articles by
claiming protection under the Designs Act, 2000.
In the case of Interlego (1988) RPC 343, the following position of law was laid down:
The definition of = design' in Section 1(3) of the Act of 1949 is hardly a
model of Parliamentary draughtsmanship and this is by no means the first
case in which its meaning and application have been called in question. In
approaching the question of construction there has to be borne in mind that
the purpose of the Act, as appears both from its terms and its legislative
history, is to protect novel designs devised to be = applied to' (or, in other
words, to govern the shape and construction of) particular articles to be
manufactured and marketed commercially. It is not to protect principles of
operation or inventions which, if protected at all, ought to be made the

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 subject-matter of a patent. Nor is it to prevent the copying of the direct
product of original artistic effort in producing a drawing. Indeed the whole
purpose of a design is that it shall not stand on its own as an artistic work
but shall be copied by embodiment in a commercially produced artifact.
Thus, the primary concern is what the finished article is to look like and not
with what it does and the monopoly provided for the proprietor is effected by
according not, as in the case of ordinary copyright, a right to prevent direct
reproduction of the image registered as the design but the right, over a much
more limited period, to prevent the manufacture and sale of articles of a
design not substantially different from the registered design. The emphasis
therefore is upon the visual image conveyed by the manufactured article.
Thus, in the case of Pugh v. Riley 1912 RPC 196 the general principle was laid down
that any application for registration must be accompanied by a representation of the
design which ought to be in the nature of a drawing or a tracing, by means of which
the suggestion Constituting the design may be imparted to others. A person looking
at the drawing must be able to form a mental picture of the shape, configuration,
pattern or ornament of the article to which the design has been applied. Further, in
the case of Interlego (supra) it was laid down that the purpose of design is not to
protect the principles of operations or inventions which, if protected at all, must be
made the subject matter of the patent. This process of operation or invention such as
a moulding/engraving could at best be granted patent protection and thus, Mr.
Jaitley' s plea that such intermediary process be granted copyright protection cannot
be accepted. Thus, what is granted is a right, over a lesser period, to prevent the
manufacture and sale of articles of a design not substantially different from those
industrially produced by the application of the registered design. The emphasis
therefore, is upon the visual image conveyed by the manufactured article and thus
the above judgment of Interlego (supra) also supports the case of the respondent,
that the intermediary process of creation of a design from an original artistic work
cannot be afforded protection under the Copyright Act if it crosses the lakshman
rekha of having been applied more than 50 times industrially to produce an article.
43. Undoubtedly, it is true as contended by Shri Jaitley that the artistic work defined
under Section 2(c) of the Copyright Act need not possess artistic quality. His plea
about the copyright protection available to moulding/engraving/drawing is postulated
on the above premise. Nevertheless, we cannot lose sight of the fact that the design,
based upon a moulding or an engraving derived from the original artistic work, which
is used for industrial application on an article and which evolves during any process
intermediate to the reproduction of the finally designed article, would not qualify as
an artistic work. The case of Dover LD (supra) clearly requires the exercise of
intellectual activity so as to originate some novel application and thus, this principle
cannot be applied to a mould, or an engraving i.e. the intermediates which are mere
derivatives of the original artistic work. In the case of Pugh v. Riley (supra) also it
was held that a design is preceded by a drawing or tracing which incorporates the
design to be imparted to produce the designed article and upon being applied to an
article become incapable of being registered as a design.
Thus, the interpretation as suggested by the appellant would have the effect of
rendering the design legislation in India redundant as every design could have its
origin to an intermediate product such as a engraving, mould, diagram etc. It is also
anti-competitive and stagnates innovativeness beside in effect negating the legislative
intent of giving lesser protection of 15 years to a = design' under the Designs Act as
compared to the larger protection of 60 years to an = artistic work' under the
Copyright Act.

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 44. We cannot accede to the plea of Shri Sanjay Jain that the intention of creating an
artistic work would determine as to which enactment applies. The artist' s intent at
the time of creation of the artistic work is indecipherable at the best of times. Artists
are governed more often than not by their emotions and moods and whatever be the
intention at the time of the creation of the artistic work cannot, in our view,
determine the nature of protection available to the artistic work. Indeed such a plea
of Shri Ramachandran has already been rejected by us, as the stupendous and
commercial success of a particular artistic work may spur on the artist to permit
commercial utilization and exploitation of such a work of Article To this extent, we
agree with Mr. Praveen Anand that an intention of creation is difficult to ascertain and
cannot form the basis of determining the rights. Thus, even if the original painting
was intended to be created only as a work of art, a latter intention may transform it
by its industrial application into a commercially viable object. To this extent, we
agree with the plea of Shri Sanjay Jain that once the artistic work, by industrial
application transforms into a commercially marketable artifact its design falls within
the domain of the Designs Act and the protection to the design founded upon the
artistic work is limited by Section 15 of the Copyright Act and the provisions of the
Designs Act.
45. Learned Counsel Shri Praveen Anand, appearing on behalf of the appellant in
FAO (OS) No. 447/2008 has contended that there is a vital difference between the
subject matter of copyright and design protection. In our view, while this plea is
sustainable, nevertheless, it cannot be ignored that different kinds of protection for
an artistic work, and the design founded upon the artistic work which is industrially
and commercially exploited, has been intended by the Legislature. He has further
submitted that what stands extinguished under Section 15 of the Copyright Act is the
copyright in the design itself as applied to an article and not the copyright in the
artistic work itself. There is no quarrel with this proposition. However, that does not
advance the case of the appellant. We do hold that in the original work of art,
copyright would exist and the author/holder would continue enjoying the longer
protection granted under the Copyright Act in respect of the original artistic work.
Thus, for instance a famous painting will continue to enjoy the protection available to
an artistic work under the Copyright Act. A design created from such a painting for
the purpose of industrial application on an article so as to produce an article which
has features of shape, or configuration or pattern or ornament or composition of lines
or colours and which appeals to the eye would also be entitled design protection in
terms of the provisions of the Designs Act. Therefore, if the design is registered
under the Designs Act, the Design would lose its copyright protection under the
Copyright Act but not the original painting. If it is a design registrable under the
Designs Act but has not so been registered, the Design would continue to enjoy
copyright protection under the Act so long as the threshold limit of its application on
an article by an industrial process for more than 50 times is reached. But once that
limit is crossed, it would lose its copyright protection under the Copyright Act. This
interpretation, in our view, would harmonize the Copyright and the Designs Act in
accordance with the legislative intent.
46. We thus summarize our findings as follows:
a. The definition of = artistic work' has a very wide connotation as it is not
circumscribed by any limitation of the work possessing any artistic quality.
Even an abstract work, such as a few lines or curves arbitrarily drawn would
qualify as an artistic work. It may be two dimensional or three dimensional.
The artistic work may or may not have visual appeal.
b. The rights to which a holder of an original artistic work is entitled are

19-05-2024 (Page 30 of 31) www.manupatra.com Librarian Tada Law Faculty, University of Delhi
 enumerated in Section 14(c) of the Copyright act.
c. 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.
d. The design protection in case of registered works under the Designs Act
cannot be extended to include the copyright protection to the works which
were industrially produced.
e. A perusal of the Copyright Act and the Designs Act and indeed the
Preamble and the Statement of Objects and Reasons of the Designs Act
makes it clear that the legislative intent was to grant a higher protection to
pure original artistic works such as paintings, sculptures etc and lesser
protection to design activity which is commercial in nature. The legislative
intent is, thus, clear that the protection accorded to a work which is
commercial in nature is lesser than and not to be equated with the protection
granted to a work of pure Article
f. The original paintings/artistic works which may be used to industrially
produce the designed article would continue to fall within the meaning of the
artistic work defined under Section 2(c) of the Copyright Act, 1957 and
would be entitled to the full period of copyright protection as evident from
the definition of the design under Section 2(d) of the Designs Act. However,
the intention of producing the artistic work is not relevant.
g. This is precisely why the legislature not only limited the protection by
mandating that the copyright shall cease under the Copyright Act in a
registered design but in addition, also deprived copyright protection to
designs capable of being registered under the Designs Act, but not so
registered, as soon as the concerned design had been applied more than 50
times by industrial process by the owner of the copyright or his licensee.
h. In the original work of art, copyright would exist and the author/holder
would continue enjoying the longer protection granted under the Copyright
Act in respect of the original artistic work per se.
i. If the design is registered under the Designs Act, the Design would lose its
copyright protection under the Copyright Act. If it is a design registrable
under the Designs Act but has not so been registered, the Design would
continue to enjoy copyright protection under the Act so long as the threshold
limit of its application on an article by an industrial process for more than 50
times is reached. But once that limit is crossed, it would lose its copyright
protection under the Copyright Act. This interpretation would harmonize the
Copyright and the Designs Act in accordance with the legislative intent.
47. Thus, we find no merit in this appeal and the same is dismissed but with no
order as to costs.
48. List FAO (OS) No. 447/2008 and FAO (OS) No. 326/2008 for hearing on 7th
August, 2009.
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