INTELLECTUAL PROPERTY RIGHTS

TOPIC
Copyright Design Overlap
Intellectual Property Rights Copyright Design Overlap

TABLE OF CONTENTS

ACKNOWLEDGEMENT.........................................................................................................3
TABLE OF CASES...................................................................................................................4
TABLE OF STATUTES............................................................................................................4
INTRODUCTION......................................................................................................................5
Research Methodology...........................................................................................................5
Mode of Citation....................................................................................................................5
Research Objectives...............................................................................................................6
Scope Limitation And Research.............................................................................................6
Research Questions................................................................................................................6
Hypothesis..............................................................................................................................6
COPYRIGHT.............................................................................................................................7
DESIGN.....................................................................................................................................8
COPYRIGHT v DESIGN LAW................................................................................................9
OVERLAP BETWEEN COPYRIGHT AND DESIGN LAW................................................10
CONCLUSION........................................................................................................................13

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Intellectual Property Rights Copyright Design Overlap

TABLE OF CASES

Dart Industries Inc. And Anr. V Techno Plast and Ors 2007 (35) PTC 285 Del....................11
Holland Company LP v S.P. Industries 2014 SCC OnLine Del 3135”...................................12
Microfibres Inc vs Girdhar & Co & Anr 2006(32) PTC 157 (Del).........................................11
Rajesh Masrani v Tahiliani Design Pvt Ltd 2015 SCC OnLine Bom 958..............................12
Rajesh Masrani V. Tahiliani Design Pvt Ltd FAO (OS) No.393/2008...................................10
Ritika Private Limited v Biba Apparels Private Ltd 2016 SCC OnLine Del 1979..................12

TABLE OF STATUTES

Section 13 (1) of the Indian Copyrights Act, 1957....................................................................7

Section 15 (1) of the 1957 Copyright Act................................................................................10
Section 15(2) of the Copyrights Act of 1957...........................................................................10
Section 2(d) of The Designs Act, 2000......................................................................................8
Section 5 of the Design Act.......................................................................................................8

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Intellectual Property Rights Copyright Design Overlap

INTRODUCTION

There are occasions when numerous rules might be applied to a property at the same time,
thanks to the ever-expanding laws for protecting Intellectual Property. There would be
overlapping of laws if several rights were applicable at the same time. Overlap is the problem
that arises when a person who owns intellectual property protects his work under multiple
concepts. The overlap between copyrights and design rights is one such overlap that is not
addressed by legislation.

As intellectual property rights are a set of rights, there may be overlap between the rights
given to the owner for the same subject matter. The overlap between the Copyright and the
Designs Laws is most apparent in the applied arts, where both laws apply. It should be noted
that the Designs Act of 2000 (the "Designs Act") as well as India's original copyright
legislation of 1957 seek to differentiate between the works protected by these two acts and
the rights granted to those works by both of these acts.

Research Methodology

A doctrinal research methodology is applied in this research. To produce this study,

researchers

looked to a variety of primary and secondary sources, such as comments, laws, journal
articles,

and court decisions. This study is conducted without the use of any empirical research.

Mode of Citation

The mode of citation that has been adopted for the present work is Oxford University
Standard for Citation of Legal Authorities (OSCOLA).

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Intellectual Property Rights Copyright Design Overlap

Research Objectives

I. To understand the laws, Indian Copyrights Act, 1957 and Designs Act, 2000?
II. To gain an understanding of how copyright act and design act are different to
each?
III. To gain an understanding on what are the overlapping areas in copyright act and
design act.

Scope Limitation And Research

In this work, the authors shall only go on to gain a detailed but broad understanding of the of
how copyright act and design act work. We will then move on to the difference between these
acts, as to when they apply and to what and in which case. And then we will move on to see
where is the overlapping been caused. For this, the relevant case law shall be discussed only
in as much detail as required and this work cannot be deemed to be exhaustively covering the
issues and aspects discussed in the referred cases.

Research Questions

The following are the research questions of the study:

I. How is copyright act and design act different from each other?
II. What are the overlapping portions in copyright act and design act?
III. How is the overlapping been sorted?

Hypothesis

To a large extent, the overlapping has been persisting between the two acts, i.e. the copyright
act and the design act.

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Intellectual Property Rights Copyright Design Overlap

COPYRIGHT

Section 14 of the Indian Copyrights Act, 1957, grants the copyright holder a bundle of rights.
Copyright protects those who create original works. Examples of work include literary,
dramatic, musical, artistic, cinematic, and sound recordings. Only a handful of the rights
given include adaptation, replication, publishing, translation, and public communication. The
'presentation of the notion' is protected rather than the idea itself. Programming languages
(words, codes, schemes, or any other form), tables, and compilations are all literary works.
These rights may only be asserted by the original creators or creator's estate.

Those who create unique works of literature, theatre, or art are granted copyrights. “These
rights prohibit anybody except the author/owner or those who have purchased the work from
using, selling, or creating it.

Section 13 (1) of the Indian Copyrights Act, 1957 states that the following types of works are
protected by copyright in India:”

a. “original literary, dramatic, musical and artistic works.

b. cinematograph films; and
c. sound recordings;”

In addition to the author's lifetime, copyrights protect a work for sixty years after the author's
death. In order to protect a work, copyright registration is not necessary. As soon as an idea is
stated, it is protected by copyright. Copyright registration, on the other hand, is highly
recommended since it makes things more simpler and faster in the case of a legal issue.

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Intellectual Property Rights Copyright Design Overlap

DESIGN

A design, as defined by Section 2(d) of The Designs Act, 2000, primarily consists of the
aesthetics of any object or manufactured product, and includes aspects such as: Shape
Configuration Ornamental Pattern Lines or colours are arranged in a certain way. These can
be used on any two-dimensional or three-dimensional object, or a combination of the two. An
industrial process or other means of production should be used to create the article
(mechanical, manual, chemical). It could be the outcome of a mix of several processes or a
single one.

Only the eye should be used to appeal to and appraise the finished result. The clause forbids
the use of a purely mechanical device in the construction of a structure. “When it comes to
trademarks and property markings, Section 2(1)(v) of the Trade and Merchandise Marks Act
of 1958 excludes them, but Section 479 of the Indian Penal Code of 1860 does not exclude
them either. Industrial designs may be registered under Section 5 of the Design Act, which
has a ten-year period, by anybody who claims ownership (can further be renewed for 5 years
after paying the renewal fees).”

As defined by the Designs Act of 2000 in section 2 (d), “design means only the features of
shape, configuration, pattern, ornament or composition of lines or colors 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 2of the copyright Act, 1957 (14 of 1957)”

A design protects a work for ten years, after which it can be renewed for another five years
by filing a renewal application and paying the required fee. It's important to understand that
designs encompass everything that isn't a trademark, a property mark, or a copyrighted
artistic work. To the untrained eye, the question of what additional designs the Design Act
protects is perplexing.

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Intellectual Property Rights Copyright Design Overlap

COPYRIGHT v DESIGN LAW

On the basis of their application, copyrights and design are frequently conflated. The grey
space between the two concepts has yet to be firmly defined. However, there are a few key
distinctions between the two that are worth noting.

1. Inventions are protected by a design right, while their concepts are protected by a
copyright. As long as it is the author's unique work, any statement of ideas qualifies
for copyright protections. Computer games, for example, are written in a computer
language and hence need coding skills.

2. The code would be protected by copyright, but it would not prohibit someone else
from developing a comparable work. Characters and other assets might be protected
under the design right, as well as the game's general 'look and feel.'

3. When a work is transformed into a physical form, copyrights belong to the person
who created it. If the registration of a design is done in accordance with legislation, it
is awarded a statutory right to the owner of the design.

4. It is necessary for a copyright holder to relinquish copyright rights in order to acquire

design rights for the same notion.

As long as an author is alive, and for an extra sixty years after his or her death, copyright
protection in India is in place. This length of time cannot be extended in any way, shape, or
form. Sixty years from the date of publication for” “films, sound recordings, photos,
posthumously published publications and works of government, as well as works of
international organizations" are covered by this protection.

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Intellectual Property Rights Copyright Design Overlap

OVERLAP BETWEEN COPYRIGHT AND DESIGN LAW

Both copyright and design are concerned with safeguarding a property's uniqueness. With
design, protection is sought just for those works that have been filed for copyrights, while
copyrights are sought only for those works that have already been registered. The issue stems
from the fact that both copyright and design are based on the same originality standard.

"Copyright shall not exist in any design which is registered under the Designs Act, 1911,"
reads Section 15 (1) of the 1957 Copyright Act, which states, "Copyright must not exist in
any Design which is registered under the Designs Act, 1911."

“As stated in Section 15(2) of the Copyrights Act of 1957, when an existing copyrighted
work is registered under the Design Act, the copyrights on that work are wiped out. It is
illegal to reproduce a work more than fifty times using an industrial technique without
registering and utilizing it as a design.” As soon as a printed copy of a garment design is
made, it is protected from being copied without authorization. As per a court decision, the
Designs Act copyrights for clothing designs have run their course. When more than fifty
copies of the outfit are created without registration under the Designs Act, the copyright is
lost for a second time.

There were more than 50 copies of Biba Apparels' designs before the case was decided, even
though the plaintiff neglected to register the designs under the Designs Act. The violation of a
third party's copyright or design was unabated under any of these laws. “Whereas, in the case
of Rajesh Masrani V. Tahiliani Design Pvt Ltd,1 Plaintiff was awarded infringement
protection since the duplicated copies did not exceed the requisite number of 50.

Artistic works are under the definition of section 2(c) of the Copyright Act, 1957 as stated by
the court in its judgement in Pranda Jewelry Pvt. Ltd. And Ors V Aarya & Ors.” Under the
Design Act, 2000, if that creative work is used in a commercial context, it will be eligible for
protection. Protective status of an item disappears if it is reprinted more than 50 times without
the appropriate Design Act protection.

If the design generated from an original painting is not registered and the design is then
reproduced 50 times or more, the copyrights of the design will be waived rather than those of

1 Rajesh Masrani V. Tahiliani Design Pvt Ltd FAO (OS) No.393/2008

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Intellectual Property Rights Copyright Design Overlap

the original painting, as in Microfibres Inc. V. Girdhar & Co. & Anr. Decisions in this kind of
case are often based on a person's intentions. A design may be deemed an artistic work if the
designer intends to copyright the design, but if they intend to protect the design, the design
can not be considered an artistic work, which means it can not be protected by design patents.
The courts have a difficult time proving this intention.

“In Dart Industries Inc. And Anr. V Techno Plast and” Ors. 2, Using a 2-D sketch to
generate a 3-D mold is legal, according to the Supreme Court, as long as the mold is also
covered by design copyright. There may be an indirect copyright infringement charge for
copying the 3D work without authorization.

In order to provide you with both main and secondary protection, the Copyright Act includes
Section 15. “A design registered under the Designs Act, 2000, does not enjoy copyright
protection under this section. Any copyright associated with a design that is not registered
under the Designs Act is lost to the original creator.

If a design is not registered under the Designs Act and is manufactured more than 50 times by
any industrial technique, the copyright protection is removed. Here are a few instances of it in
action:”

Let us have a look at a well-known Delhi High Court ruling to see how this clause causes a
quandary. In Microfibres Inc vs Girdhar & Co & Anr3, For example, if an artist creates a
picture and a design is made from it, the design must be registered and duplicated at least 50
times to retain copyright protection. As stated by the lawmakers, their intention was to put
more focus on the author's original work and less attention on an industrially designed design.
That copyright law fails to acknowledge design-based copyright creates an issue in this area
of intellectual property law.

In the following instance, this ruling was immediately applied: Ritika Private Limited v Biba
Apparels Private Ltd.4 After more than 50 reproductions of Ritu's designs and sketches, she
failed to register them in accordance with Section 3 of the Designs Act. Since the accused
had been found in violation of the Copyright and Designs Acts, she had no recourse.

2 Dart Industries Inc. And Anr. V Techno Plast and Ors 2007 (35) PTC 285 Del
3 Microfibres Inc vs Girdhar & Co & Anr 2006(32) PTC 157 (Del)
4 Ritika Private Limited v Biba Apparels Private Ltd 2016 SCC OnLine Del 1979

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Intellectual Property Rights Copyright Design Overlap

Rajesh Masrani v Tahiliani Design Pvt Ltd is a case where the plaintiff, 5 Only because there
were not more than 50 copies of the illegal material did the plaintiff get a restraining order.
These examples show how these provisions create a problem. Once a piece of art has been
made, the issue of copyright must be dealt with.

The Designs Act, on the other hand, only protects designs that have been registered, but
copyright has traditionally been regarded an inherent right of the creator as no registration is
necessary. The court's objective application of the methodology violates a long-standing
norm.

If you would like to see an example of "intention of the creator," here it is. Holland Company
LP and S.P. Industries6, Due to the fact that the designs of an automatic twisted lock were
registrable under the Designs Act, copyright was refused to the plaintiff.

In the copyright vs. design argument, these case laws illustrate that the courts lay a lot of
attention on the subject matter that is being used in industrial settings. When utilized for
commercial gain, the copyright for that work is forfeited. This interpretation was selected
because any other reading would make the Design Act's subject matter meaningless and
useless. This, however, does not set a good precedent since it erodes people's rights as a result
of this view.

5 Rajesh Masrani v Tahiliani Design Pvt Ltd 2015 SCC OnLine Bom 958
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6 Holland Company LP v S.P. Industries 2014 SCC OnLine Del 3135”

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Intellectual Property Rights Copyright Design Overlap

CONCLUSION

It is still unclear how copyright and design intersect, despite a number of court judgements on
the matter. As a consequence of this misconception, there is a discussion concerning the need
and existence of design rights. To put it another way, what is the point of copyright law if it
does not apply to design?

It is also an issue of whether or not changing the Copyright Act to provide for a shorter
protection term in circumstances when an artistic work is duplicated more than fifty times is a
good idea.

Legislators should take action to fill the hole left by this overlap. To ensure that infringement
rights are safeguarded, numerous Indian courts have ruled that industrial techniques used to
incorporate creative works into a product must be registered under the Designs Act. As soon
as a design has been duplicated more than 50 times, copyright in such registrable designs
expires.

Instead than relying only on courts to sort through ambiguous or conflicting sections of
legislation, legislators should be in charge of creating clearer laws.

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