MANU/DE/0784/2016

Equivalent Citation: 2016:DHC :2492, 230(2016)DLT109, MIPR2016(2)166

IN THE HIGH COURT OF DELHI

CS(OS) No. 182/2011
Decided On: 23.03.2016
Appellants: Ritika Private Limited Vs. Respondent: Biba Apparels Private Limited
Hon'ble Judges/Coram:
Valmiki J. Mehta, J.
Counsels:
For Appellant/Petitioner/Plaintiff: Tanvi Misra, Advocate
For Respondents/Defendant: Jayant K. Mehta, Mohd. Saeed Hussain, Roopa Dayal and
Yash Karan Jain, Advocates
Case Note:
Copyright - Ownership of Designer Work - Maintainability of suit - Section
15(2) of Indian Copyright Act, 1957/Act - Once copyrighted works of
Plaintiff were applied for making of dresses, and production of which
dresses exceeds 50 in number, whether Plaintiff loses out in ownership of
copyright works, inasmuch as, copyright works of Plaintiff were capable of
being registered as designs under Designs Act, 2000/2000 Act but Plaintiff
had not secured registrations of sketches, drawings, designs etc. under
2000 Act?
Held, issue arose in present case was clearly covered against Plaintiff by a
judgment of a Division Bench of this Court in case of Microfibres Inc. v.
Girdhar & Co. & Anr. Arguments urged on behalf of Plaintiff contending that
copyright in a drawing or a sketch would continue even if same was not
registered as a design and an article was produced on basis of drawing,
sketch or design for more than 50 times by an industrial process or means,
had been squarely dealt with against Plaintiff in judgment in Microfibre's
case. It had been held by Division Bench of this Court, and which was
binding upon this Court, that once a drawing, a sketch or a design was used
for creation of dresses, then, once dresses cross 50 numbers, no copyright
could subsist in drawing and sketch under Act because of language of
Section 15(2) of Act. Further, an interpretation to give protection under Act
although drawing, sketch or design was to be registered under 2000 Act
would result in 2000 Act being redundant because every design for its
origin would have an intermediate product such as engraving or mould or
diagram. Same aspect was reiterated in Microfibre's case clearly holding
that, if design was not registered under 2000 Act, then design would lose
its copyright protection under Act and copyright would subsist only till
threshold limit of application of a copyright to an article by an industrial
process was upto 50 times in number and once that limit was crossed,
design lost protection as a copyrighted work under Act. Section 15(2) of Act
used expression "capable of being registered" i.e. it was capable though not
actually so registrable as a design because of definition of design under
2000 Act excluding copyrighted artistic work. Legislature deliberately used
word capable in Section 15(2) of Act. Therefore, it was not necessary that a

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 drawing or a sketch or a design must fall within definition of design under
2000 Act and only then could it be said that it would fall under Section
15(2) of Act. In facts of present case, Defendant was creating dresses or
creating articles by an industrial means and process by application of
design or drawing or sketch and Defendant was not as it was affixing a
print taken from copyrighted work of Plaintiff as a print on a dress created
by Defendant. Issue in present case therefore would not be a violation of a
copyright of Plaintiff under Indian Copyright Act. Therefore, present suit
was barred by Section 15(2) of Act read with ratio of Division Bench of this
Court in case of Microfibres.
Copyright - Injunction - Violation of Trade Secrets - Whether relief of
injunction seeking restraint against Defendant from reproducing, printing,
publishing, distributing, selling, offering etc. of prints or garments which
were colourable imitation or substantial reproduction of Plaintiff's prints
and garments was liable to be allowed?
Held, If an injunction order was sought with respect to trade secrets then
such specific trade secrets had to be mentioned and as to how those trade
secrets were in ownership of Plaintiff, and only thereafter, Court could
consider grant of any injunction order on basis of specified trade secrets. A
general order could not be passed that, there was presumed to be a trade
secret of Plaintiff and Defendant to be injuncted with respect to that
unspecified trade secret which was not described in plaint, and with respect
to which thus, no specific injunction order qua specific trade secret could be
passed. Suit dismissed.
JUDGMENT
Valmiki J. Mehta, J.
IA No. 13045/2011 (under Order VII Rule 11 CPC filed by the defendant) & CS (OS)
No. 182/2011
1 . Though this application is titled under Order VII Rule 11 of the Code of Civil
Procedure, 1908 (CPC), counsel for the defendant states that this application actually
is under Order XII Rule 6 CPC for dismissing the suit on the admitted facts and legal
position, and since the heading of the application will not change the substance, the
subject application be treated as an application under Order XII Rule 6 CPC. Ordered
accordingly.
2 . Plaintiff has filed the present suit claiming copyright in various drawings and
sketches which are created by the plaintiff for dresses being sold under the trade
name/brand RITU KUMAR. It is pleaded that the drawings and sketches are
distinctive, exclusive and identifiable with the brand RITU KUMAR of the plaintiff and
the brand enjoys goodwill and reputation. It is pleaded that there is originality in the
garment prints and sketches created by the plaintiff for the dresses/garments. It is
pleaded that ensembles of the plaintiff are so designed that each component, such as
sleeves, front and back panels etc are delineated and are coordinated with unique
features. The plaintiff is stated to be maintaining digital records of the creation of
each drawing and print by giving it identification code and name which is also shown
in the invoices issued by the plaintiff. The claim of the plaintiff with respect to its
copyright work is set out in the form of process adopted by the plaintiff as detailed in
paras 10, 11 and 12 of the plaint and which paras read as under:-

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 "10. The initial stage of the Plaintiffs creative process in general may be
summarized as follows:
(a) A drawing or sketch is created by Mrs. Ritu Kumar and/or other
designers employed by the Plaintiff. The same is an original
derivative artistic work.
(b) The drawing is put in digital form and completed on a computer
assigning colours. The same is independently a derivative artistic
work.
These first stages result in the creation of independent artistic works which
can be enjoyed for their own sake or used for various purposes including
different garments.
1 1 . The artistic works so created are then suitably adapted for different
garments and different parts of garment ensembles, as described below.
Each such variation is a further, derivative work, which does not affect the
Plaintiff's separate rights in the original.
(a) Screens are prepared for each colour facilitation an initial
printing ("switching") to test the design on different fabrics.
(b) The artistic work so created is then available for use in
connection with different products.
(c) According to requirement and market assessment, but artistic
work is then customized for use on different garments with
appropriate variations.
12. Further, in some cases embroidery of an artistic character is done on
each garment individually, by hand or using a machine, by a skilled
craftsman. Such garments are works of artistic craftsmanship".
3 . Plaintiff claims to be the first owner of the copyright in all the products of the
plaintiff's company created from the sketches, drawings, designs etc.
4 . Plaintiff also pleads violation of its trade secrets by the defendant inasmuch as
defendant is employing erstwhile employees of the plaintiff. The said employees are
Ms. Neelam Arora and Ms. Reshu Singbal. It is stated that these employees are in
know of the trade secrets of the plaintiffs work and are revealing these trade secrets
to the defendant. The issue with respect to violation of trade secrets of the plaintiff
by the defendant is pleaded as per paras 16 and 17 of the plaint and these paras read
as under:
"16. Fashion products have a short life, and the Plaintiffs business depends
on the Plaintiffs knowledge and understanding of trends and changing tastes,
its corporate judgment under Mrs. Ritu Kumar's creative leadership of what
will meet with success next season. There is a long gestation period for each
product during which the utmost confidently has to be maintained within the
Plaintiffs organization; surprise innovation is the lifeblood of the Plaintiff's
business. Starting with the Plaintiffs skilled market assessment, going
through the technical creative process described above, but also including
the general conceptualization of each collection of each outfit and of each
individual garment and accessory, there is thus a multiplicity of creative
inputs which cumulatively reflect the Plaintiff's know how and incorporate

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 valuable trade secrets.
1 7 . It is submitted that such confidently is an inherent feature of the
industry, without which no fashion enterprise would be viable. Though the
confidentiality of the Plaintiffs trade secrets does not depend on contractual
agreements, the Plaintiff nevertheless takes due care to ensure that its
employees appreciate their confidentiality obligations. The copies of
employment agreements filed in these proceedings contain the following
conditions which directly and indirectly ensure that confidentiality and
exclusivity of the employee's work for the Plaintiff......
5 . The subject suit is filed by the plaintiff claiming the relief of injunction seeking
restraint against the defendant from reproducing, printing, publishing, distributing,
selling, offering etc of prints or garments which are colourable imitation or
substantial reproduction of the plaintiff's prints and garments. Other related reliefs of
injunctions and rendition of accounts are also claimed against the defendant.
6. The issue urged on behalf of the defendant for seeking dismissal of the suit is as
per the provision of Section 15(2) of the Indian Copyright Act, 1957 and which
provides that once a copyright in a design is applied to an article by an industrial
process for more than 50 times, ownership of the copyright ceases because the
copyright resulting in creation of the article is capable of being registered under the
Designs Act, 2000 but has not been registered by the plaintiff. Section 15 of the
Indian Copyright Act, 1957 reads as under:
"Section 15 of the Indian Copyright Act, 1957
15. Special provision regarding copyright in designs registered or capable of
being registered under the Designs Act, 2000 (16 of 2000).--
(1) Copyright shall not subsist under this Act in any design which is
registered under the Designs Act, 2000 (16 of 2000).
(2) Copyright in any design, which is capable of being registered
under the Designs Act, 2000 (16 of 2000), but which has not been
so registered, shall cease as soon as any article to which the design
has been applied has been reproduced more than fifty times by an
industrial process by the owner of the copyright, or, with his licence,
by any other person."
7. It is also argued on behalf of the defendant that the paragraphs of the plaint with
respect to violation of trade secrets as alleged by the plaintiff are no averments as
required of a cause of action in law because not only what are the specific trade
secrets are not mentioned resulting in the fact that a general order of alleged
violation of unspecified trade secrets should not be passed, but also that really the so
called trade secrets are nothing but the copyrights claimed by the plaintiff as applied
to garments and dresses and that once copyright does not subsist in the plaintiff
because of Section 15(2) of the Indian Copyright Act, there does not arise the issue
of any violation of trade secrets as is falsely alleged by the plaintiff.
8 . The only issue which is called for decision by this Court is that once the
copyrighted works of the plaintiff are applied for making of dresses, and production
of which dresses exceeds 50 in number, whether the plaintiff does not lose out in
ownership of the copyright works, inasmuch as, the copyright works of the plaintiff
are capable of being registered as designs under the Designs Act, but the plaintiff has
not secured registrations of the sketches, drawings, designs etc under the Designs

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 Act.
9 . I may at the outset note that it is not the case of the plaintiff in the plaint that
plaintiff has not created dresses out of its designs and sketches only upto 50 times,
and therefore, this Court proceeds on the basis that designs and sketches have been
applied by the plaintiff on the dresses manufactured by the plaintiff and such dresses
etc have exceeded 50 in number. Even during the course of arguments, it has not
been the case of the plaintiff that the drawings, designs and sketches with respect to
the garments and dresses had not been applied by the plaintiff to the garments and
dresses only upto 50 times.
10. I may note that learned counsel for the plaintiff who argued the case on behalf of
the plaintiff had initially sought an adjournment as it was stated that counsel for the
plaintiff Sh. Pravin Anand who has to argue the case had gone abroad, but, the
counsel for the defendant has very vehemently opposed the adjournment on the
ground that adjournment cannot be granted if a counsel chooses to go abroad once
the specific date is fixed in the presence of the counsels for both the parties including
the counsel who appeared on the last date when today's date was fixed. In view of
the strong opposition by the defendant to the adjournment, I have refused the
adjournment, more so because the issue which calls for decision is fully covered by
the ratio of a Division Bench judgment of this Court and which binds this Court.
11. Besides referring to Section 15(2) of the Indian Copyright Act for the purposes of
the present decision, the definition of design under the Designs Act, 2000 would also
have to be seen alongwith Section 4 of the Designs Act. Section 4 of the Designs Act
is being referred to inasmuch as some arguments were urged on behalf of the
plaintiff by referring to Section 4. Sections 2(d) and 4 of the Designs Act read as
under:
"Section 2(d) of the Designs Act, 2000
2(d). "design" means only the features of shape, configuration, pattern,
ornament or composition of lines or colours applied to any article whether in
two dimensional or three dimensional or in both forms, by any industrial
process or means, whether manual, mechanical or chemical, separate or
combined, which in the finished article appeal to and are judged solely by
the eye; but does not include any mode or principle of construction or
anything which is in substance a mere mechanical device, and does not
include any trade mark as defined in clause (v) of sub-section (1) of section
2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property
mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any
artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957
(14 of 1957);
"Section 4 of the Designs Act, 2000
4. Prohibition of registration of certain designs.--A design which--
(a) is not new or original; or
(b) has been disclosed to the public anywhere in India or in any
other country by publication in tangible form or by use or in any
other way prior to the filing date, or where applicable, the priority
date of the application for registration; or
(c) is not significantly distinguishable from known designs or

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 combination of known designs; or
(d) comprises or contains scandalous or obscene matter, shall not be
registered"
12. The arguments which have been urged on behalf of the plaintiff are as under:
(i) What is a subject matter of copyright continues to be a subject matter of
copyright in the exclusive ownership of the owner of the copyright inspite of
the copyright being used for manufacturing of an article for more than 50
times inasmuch as the definition of design by its very language in its last
part excludes an artistic work which is the subject matter of a copyright
under Section 2(c) of the Indian Copyright Act and once copyright artistic
work is excluded from the definition of a design under the Designs Act,
Section 15(2) of the Indian Copyright Act does not come into play as the
precondition for application of Section 15(2) is that that the copyright work
is included as a design under Section 2(d) of the Designs Act. In other words
it is sought to be argued that copyright can continue to exist in a sketch or a
design of a dress, although the said sketch, drawing or design is capable of
being registered as a design inasmuch as the drawing, sketch or design
which is the subject matter of Section 2(c) of the Indian Copyright Act is not
a design because it is excluded from the definition of design by the last few
words and lines as found in the definition of design under the Designs Act. It
is, therefore, argued that non-registration under the Designs Act by the
plaintiff of its drawings, sketches or design with respect to its garments and
dresses will not extinguish the rights of the plaintiff to the copyrights
existing in the plaintiff in such works and the defendant is, therefore, liable
to be injuncted from infringing the copyrighted works of the plaintiff.
(ii) Whereas what is the subject matter of the copyright has to be original in
view of Section 13(1)(a) of the Indian Copyright Act, because the language
of Section 4 of the Designs Act prohibits the registration of a design which is
not new/original, consequently, an existing copyrighted artistic work under
Section 2(c) of the Indian Copyright Act cannot be the subject matter of
registration of design under the Designs Act being excluded from the
registration as a design under the Designs Act, thus resulting in
inapplicability of Section 15(2) of the Indian Copyright Act. It is argued that
a copyright work has to be original whereas a design need not be original or
novel and, therefore, this Court should protect original artistic work which is
the subject matter of copyright under Section 2(c) of the Indian Copyright
Act.
13. Reliance is placed upon the two judgments of Hon'ble Division Benches of this
Court in the cases of Midas Hygiene Industries Pvt. Ltd. Vs. Sudhir Bhatia,
MANU/DE/4121/2015 : 225 (2015) DLT 178 (DB) and Rajesh Masrani Vs. Tahiliani
Design Pvt. Ltd., MANU/DE/1683/2008 : 2009 (39) PTC 21 (Del.) and it is argued
that these judgments lay down the ratios which support the plaintiff that copyrighted
works even if not registered as a design under the Designs Act, though capable of
being registered as a design, copyrighted artistic works will continue to have
protection as copyrights under the Indian Copyright Act.
1 4 . Ordinarily, the issues which are raised on behalf of the plaintiff would have
called for detailed discussion and analysis of various sections of the Indian Copyright
Act and the Designs Act alongwith the arguments of the plaintiff, however, this Court
need not venture on the same as the issue to be decided in this case is clearly and

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 completely covered against the plaintiff by a judgment of a Division Bench of this
Court in the case of Microfibres Inc. Vs. Girdhar & Co. & Anr. MANU/DE/0647/2009 :
2009 (40) PTC 519 (Del) . The very arguments which are urged on behalf of the
plaintiff of contending that copyright in a drawing or a sketch will continue even if
the same is not registered as a design and an article is produced on the basis of the
drawing, sketch or design for more than 50 times by an industrial process or means,
has been squarely dealt with against the plaintiff in terms of the following paragraphs
of the judgment in Microfibre's case (supra). Though the paragraphs are many, I
have no option but to reproduce them as all of them pertain to the ratio laid down in
Microfibre's case (supra). These para Nos. 20 to 33 and 35 to 46 are reproduced
below:-
"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.
21. 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 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

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 '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.
2 5 . 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.
26. 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 protection to such an artistic work, as an artistic work under the
Copyright Act, which is a design registered or capable of registration

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 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. Sub-section (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

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 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.
3 2 . 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.
33. 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 art.
xxxxx
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

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 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 applied.
37. 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

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 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
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.
(Emphasis supplied)"
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

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 consequently also claim copyright protection under the Copyright
Act in addition to the protection as a registered design under the
Designs Act.
42. 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 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,

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 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.
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

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 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 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

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 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 art.
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."
(emphasis added by me).
1 5 . The underlined and emphasised portions of the above paragraphs leave no
manner of doubt that it has been held by the Hon'ble Division Bench of this Court,
and which is binding upon this Court, that once a drawing, a sketch or a design is
used for creation of dresses, then, once the dresses cross 50 numbers, no copyright
can subsist in the drawing and sketch under the Indian Copyright Act because of the
language of Section 15(2) of the Indian Copyright Act. The Hon'ble Division Bench of
this Court in Microfibre's case (supra) has noted that the legislature intended to give
lesser period of protection to a copyright when from the copyright a design is created
which is applied for commercial purposes. The Hon'ble Division Bench has also
clearly observed that if the interpretation as is sought to be urged by the plaintiff in
this case, and which was also urged on behalf of the plaintiff in that case is accepted,

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 then registrations of designs would be rendered meaningless (vide paras 37 & 41).
The Division Bench in para 42 of its judgment has also observed that the
interpretation as is canvassed on behalf of the plaintiff in the present case, and which
is also canvassed in that case of entitlement of protection under the Indian Copyright
Act even if the design is not registered under the Designs Act, would lead to a design
under the Designs Act being given protection of copyright even under the Indian
Copyright Act as an original artistic work resulting in rights being enforced
simultaneously under the Indian Copyright Act and the Designs Act which was not the
intention of the legislature. In para 43 of the judgment, the Division Bench has
clearly observed that an interpretation to give protection under the Indian Copyright
Act although the drawing, sketch or design is to be registered under the Designs Act
would result in the Designs Act being redundant because every design for its origin
would have an intermediate product such as engraving or mould or diagram. The
same aspect is reiterated in para 45 of the judgment in Microfibre's case (supra)
clearly holding that if the design is not registered under the Designs Act, the design
will lose its copyright protection under the Indian Copyright Act and the copyright
will subsist only till the threshold limit of application of a copyright to an article by
an industrial process is upto 50 times in number and once that limit is crossed, the
design loses protection as a copyrighted work under the Indian Copyright Act. This is
finally so stated in para 46(i) of the judgment by observing that the interpretation
given in the Microfibre's case (supra) would harmonize the Indian Copyright Act and
the Designs Act in accordance with the legislative intent.
16. In view of the categorical ratio in Microfibre's case (supra), it is not permissible
for the plaintiff to reargue the case noting that the same counsel who appears for the
plaintiff in the present case had unsuccessfully argued the same aspects before the
Division Bench in Microfibre's case (supra).
17. Reliance placed by the plaintiff upon the judgment in the case of Midas Hygiene
Industries Pvt. Ltd. (supra) is clearly misconceived as the judgment in the case of
Midas Hygiene Industries Pvt. Ltd. (supra) dealt with the application of a copyright
work to a carton or a packaging and accordingly observations were made. Midas
Hygiene Industries Pvt. Ltd. (supra) was not a case of application of a copyright work
by creating an article more than 50 times by an industrial process or means. For the
sake of completeness let me refer to para 25 of this judgment in the case of Midas
Hygiene Industries Pvt. Ltd. (supra) which is being relied upon by the plaintiff and
which para 25 reads as under:
"25. The label is clearly both a trademark, as it indicates the brand and the
origin (i.e. the manufacturer or producer) as well as a copyright, as it
contains a combination of colours and stylized lettering, set in red colour,
with the image of a cockroach. The expression "LAXMAN REKHA" and the
other one, "KRAZY LINES" are at least in combination with the colour scheme
and get up, trade-marks; hence they are labels and clearly excluded from the
definition of "designs". Furthermore, the respondent nowhere asserts that
there are novel or new elements in the shape or configuration of the
packaging which deserve design protection. By virtue of Section 4(c) design
registration is refused if the work is "not significantly distinguishable from
known designs or combination of known designs..." It is not shown how the
packaging or label upon it, in this case is so unique or novel as to
distinguish it from known designs. The object of the Designs Act is to confer
protection to novel and unique designs. If every object based upon some
drawing were afforded design registration, soon, objects of common utility-
vessels, containers, furniture items, etc. could not be replicated. Therefore, it
is held that apart from the fact that the work in the present case was

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 copyrighted as an artistic work and thus stood excluded from the definition
of design-as well as the fact that it was a trademark label, it is also held that
it cannot also qualify for design registration-the sole condition for operation
of Section 15(2). The respondent had urged that the artistic work does not
qualify for registration because it is not original or creative. However, there
is no discussion on the issue by the Board."
18. I do not find anything in para 25 in Midas Hygiene Industries Pvt. Ltd.'s case
(supra) to support the arguments urged on behalf of the plaintiff in the present case
of a protection under the Indian Copyright Act to continue although the copyright is
capable of being registered as a design under the Designs Act but not registered and
the copyrighted drawings, sketches or designs having applied to produce an article
more than 50 times in number by an industrial process or means.
19. It is very relevant to note that the observations which are made by a court in a
judgment have necessarily to be related to the facts of the case and the ratio of a
case cannot be dehors the facts of the case as held by the Constitution Bench
judgment of the Supreme Court in the case of Padma Sundara Rao (Dead) and Others
Vs. State of T.N. and Others, MANU/SC/0182/2002 : (2002) 3 SCC 533. Para 9 of this
judgment is relevant and which reads as under:-
"9. Courts should not place reliance on decisions without discussion as to
how the factual situation fits in with the fact situation of the decision on
which reliance is placed. There is always peril in treating the words of a
speech or judgment as though they are words in a legislative enactment, and
it is to be remembered that judicial utterances are made in the setting of the
facts of a particular case, said Lord Morris in Herrington v. British Railways,
Board. Circumstantial flexibility, one additional or different fact may make a
world of difference between conclusions in two cases."
(underlining added)
20. Therefore, observations made by the Division Bench in the case of Midas Hygiene
Industries Pvt. Ltd. (supra) were in the facts of that case of applying copyright work
as it is to a carton or a packaging, and such observations therefore cannot be read
with respect to copyright continuing to exist although from the copyrighted work
articles are manufactured by an industrial process or means more than 50 times in
number.
21. The judgment in the case of Rajesh Masrani (supra) is also not applicable for the
same reason that the facts of the said case were different and again the ratio of the
Constitution Bench case in Padma Sundara Rao (Dead) and Others (supra) is
reiterated that the issue of interpretation of Section 15(2) of the Indian Copyright Act
never came up in Rajesh Masrani's case (supra) as the admitted position in that case
was that the limit of 50 number of articles produced from the copyright work was not
crossed. The Division Bench in Rajesh Masrani's case (supra) in paras 27 and 28
distinguished the judgment of a learned Single Judge of this Court in the case of
Micro Fibre Inc Vs. Girdhar & Co., MANU/DE/8193/2006 : 2006 (32) PTC 157, and
which ultimately went up in appeal and was decided by the Division Bench in
Microfibre's case (supra) of 2009. These paras 27 and 28 of the Division Bench in
Rajesh Masrani's case (supra) distinguish the observations of the said case from the
issue in the case before the Division Bench in Microfibre's case (supra) (and in this
case), and these paras 27 and 28 of Rajesh Masrani's case (supra) read as under:
"27. We may mention that in support of his plea, the learned Counsel for the
Defendant has strongly relied upon the judgment of this court in the case of

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 Micro Fibre Inc v. Girdhar and Co. MANU/DE/8193/2006 : 2006 (32) PTC
157. He referred various paras of the said judgment, particularly Paras 62
and 72 said judgments which are reproduced as under:
"62. In order for the work of the plaintiff to qualify as an 'artistic
work', it must fall within the definition of Sub-section (c) of Section
2 of the Copyright Act. A reading of the said provision would show
that attempt of the plaintiff can only be to bring it within the concept
of 'painting'. 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 a painting. There is no doubt that
labour has been put and there is some innovativeness applied to put
a particular configuration in place. Such configuration is of the
motifs and designs which by themselves would not be original. 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 them to
industrial use. An industrial process has to be done to apply the
work or configuration to the textile. It is not something which has to
be framed and put on the wall or would have any utility by itself.
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
art. In fact, it has no independent existence of itself.
7 2 . The conspectus of the aforesaid shows that what the plaintiff
was actually required to do was to register the designs which the
plaintiff has failed to do. The designs are older and, thus, would
have been registrable under the Designs Act of 1911. The plaintiff
failed to register the designs. Insofar as the Designs Act of 2000 is
concerned, the plaintiff has also admittedly not registered the
designs under the said Act. It has already been discussed above that
these designs were capable of registration under the earlier and the
current Designs Acts. In fact, the Registrar of Designs had confirmed
vide letter dated 19.07.2002 that the fabric designs continued to be
registered under the Designs Act of 2000. The plaintiff had even
initiated criminal proceedings where certain reports were filed by the
investigative agency saying that the offences were really under the
Designs Act and not under the Copyright Act. However, it is not
necessary to dwell greater in respect of that matter. It would suffice
to say that the patterns and designs of the plaintiff were capable of
registration both under the old Act and the new Act and the plaintiff
failed to do so with the result that the protection is not available to
the plaintiff which would have arisen if they had been so registered.
The said issues are answered accordingly."
28. The above said case, in our view, is on an entirely different footing from
the present case for the following reasons:
a) In the present case, as per the pleadings, the work in question
has not been reproduced more than 50 times by an industrial
process by the plaintiff. In the case of Micro Fibre (supra), the court
has specifically noticed and highlighted in Para 62 of the said
judgment, the fact that the intent of creating the design in question
was to put them into industrial use and the production of the said
work had occurred more than 50 times as mentioned in Para 73 of

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 the said judgment.
b) The court has also noticed in Para 47 of the said judgment that
the subject matter of the work in dispute are floral design which are
applied upon fabric used for upholstery through the industrial
process and the plaintiff has registered the subject matter of the
work of design in United Kingdom and the said certificates of
registration have also been placed on record.
c) In Para 72 of the judgment, it was further held that the plaintiff
failed to register the designs which were capable of being registered
under the Designs Act, therefore, the protection of copyright in the
design was not available to the plaintiff.
In the present case all the above said aspects are absent and, therefore, the
said judgment is not applicable to the facts and circumstances of the present
case. Moreover as we have already come to the conclusion that the subject
matter comes under Section 2(c) of the Copyright Act, this judgment does
not help the case of the appellant."
2 2 . Learned counsel for the plaintiff placed strong reliance upon para 26 of the
judgment in Rajesh Masrani's case (supra) in support of the plaintiff's arguments and
this para 26 reads as under:
"26. We are, therefore, of the opinion that the plaintiffs' work is entitled for
protection under Section 2(c) of the Copyright Act and is an original artistic
work. Since the work is an 'artistic work' which is not covered under Section
2(d) of the Designs Act, 2000, it is not capable of being registered under the
Designs Act and the provision of Section 15(2) is not applicable."
23. The aforesaid para 26 of the judgment in Rajesh Masrani's case (supra) holds
and proceeds on the basis that the copyright work which is the subject matter of the
Indian Copyright Act being an artistic work is not covered under the Designs Act
because it is not capable of being registered under the Designs Act resulting in
Section 15(2) of the Indian Copyright Act being not applicable. It is however noted
that these observations were made in the facts of that case which are different from
the facts in Microfibre's case (supra) and which points of distinction have been stated
by the Division Bench itself in Rajesh Masrani's case (supra) in para 28 which has
been reproduced above. Plaintiff cannot therefore derive any benefit of para 26 of the
judgment in Rajesh Masrani's case (supra).
24(i) At this stage, I would like to refer to the argument urged on behalf of the
plaintiff that copyright work is excluded by the definition of designs and therefore
once a copyright cannot be registered as a design by virtue of definition of design
under the Designs Act, hence, the copyright will have an independent protection than
the subject matter of design under the Designs Act. What is essentially sought to be
argued is that since a copyright artistic work is excluded from the definition of a
design, therefore, a copyright work does not fall within the scope of the design and
hence does not fall within the scope of Section 15(2) of the Indian Copyright Act.
(ii) This argument urged on behalf of the plaintiff is misconceived for the reason that
Section 15(2) of the Indian Copyright Act uses the expression "capable of being
registered" i.e. it is capable though not actually so registrable as a design because of
the definition of design under the Designs Act excluding copyrighted artistic work.
Legislature has consciously used the words "capable of being registered" meaning
thereby the possibility of a copyrighted sketch or drawing or artistic work being also

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 capable of being registered as a design though excluded from the definition of
design. The legislature deliberately used the word capable in Section 15(2) of the
Indian Copyright Act. Therefore, it is not necessary that a drawing or a sketch or a
design must fall within the definition of design under the Designs Act and only then
can it be said that it will fall under Section 15(2) of the Indian Copyright Act,
inasmuch as, such an argument overlooks the expression "capable of being
registered" deliberately so used under Section 15(2) of the Indian Copyright Act.
25. Finally, I would like to note that counsel for the plaintiff sought to argue that
there are judgments of foreign courts and there are judgments of other High Courts
which take different views than the view taken in Microfibre's case (supra), however,
there is no need for me even to refer to such judgments, inasmuch as, I am bound by
the ratio given by the Division Bench of this Court and I cannot decide a case in
violation of a ratio of the judgment of the Division Bench of this Court. Thus,
arguments accordingly sought to be urged cannot be raised before this Court and can
only be raised before a Bench larger than the Division Bench of this Court inasmuch
as decision in Microfibre's case (supra) is a decision of a Division Bench of this
Court.
26. Lastly, I may note that in the facts of the present case it is not as if the copyright
work in itself is reprinted so to say on the dresses which are created by the
defendant. If the facts were that from the copyrighted works of the plaintiff prints
were created and such prints which have protection under the copyright work are as
it is lifted and printed upon the dresses of the defendant, may be in such a case
without saying so finally on this aspect, an issue of violation of the copyright of the
work of the plaintiff under Indian Copyright Act may have arisen. However, in the
facts of the present case the defendant is creating dresses or creating articles by an
industrial means and process by application of the design or drawing or sketch and
the defendant is not as it is affixing a print taken from the copyrighted work of the
plaintiff as a print on a dress created by the defendant. Issue in the present case
therefore will not be a violation of a copyright of the plaintiff under the Indian
Copyright Act.
27. So far as the issue of violation of trade secrets is concerned, it is noted that
firstly paras 16 and 17 of the plaint are far too general to make out such a case and
for passing an order as to so called trade secrets which are being not specifically
talked of and pleaded by the plaintiff. If an injunction order is sought with respect to
trade secrets then such specific trade secrets have to be mentioned and as to how
those trade secrets are in the ownership of the plaintiff, and only thereafter the court
can consider the grant of any injunction order on the basis of specified trade secrets
and it cannot be that a general order can be passed that there is presumed to be a
trade secret of the plaintiff and the defendant to be injuncted with respect to that
unspecified trade secret which is not described in the plaint, and with respect to
which thus no specific injunction order qua specific trade secret can be passed.
As a matter of abundant caution during the course of arguments I put it to the
counsel for the plaintiff as to what are the trade secrets which the plaintiff has and to
which counsel for the plaintiff argued that they are the same sketches, drawings and
designs in which copyright is claimed by the plaintiff and which are taken away by
the erstwhile employees of the plaintiff and used by the defendant. Therefore really
the issue once again is nothing but of application of Section 15(2) of the Indian
Copyright Act and not with respect to any trade secret dehors the provisions of the
Indian Copyright Act and the Designs Act.
28. In view of the above, it is found that the present suit is barred by Section 15(2)

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 of the Indian Copyright Act read with the ratio of the Division Bench of this Court in
the case of Microfibres (supra), and therefore, the suit is dismissed, leaving the
parties to bear their own costs.
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14-05-2024 (Page 22 of 22) www.manupatra.com Librarian Tada Law Faculty, University of Delhi