In a world where innovation propels success and creativity powers companies, it is more important than ever to protect your intellectual property. The significance of comprehending the subtle distinctions between copyright and design protection has been emphasized by recent court decisions and changing legal interpretations. The importance of decision-making on the best ways for creators and businesses to protect their creative assets has been highlighted by the Microfibres Inc. vs. Girdhar & Co. case, in particular. This blog aims to demystify these two forms of protection, offering guidance on how to effectively safeguard your creative works.
Automatic Shield for Artistic Creations
Assume you’ve just completed a stunning picture or written a great piece of music. The Copyright Act of 1957 assures that your creation is protected from the minute it is created and recorded in physical form. This protection applies to literary, dramatic, musical, and artistic works, including films and sculptures. The beauty of copyright rests in its automated nature, with no need for instant paperwork or procedures. However, registering your work might bring additional legal benefits, including a strong protection against infringement.
Copyright protection is broad, encompassing the expression of ideas rather than the ideas themselves. This means that, while anyone can write a novel about love and loss, your individual interpretation of the theme is protected. It gives you the ability to regulate who reproduces, distributes, performs, or displays your work, offering you a significant weapon for preventing unauthorized use.
Formal Protection for Visual Appeal
Consider that you’ve created an inventive, eye-catching product, such as a one-of-a-kind piece of furniture or a trendy new technology. The Designs Act of 2000 protects the aesthetics of your design. This act addresses the shape, arrangement, pattern, and adornment of products. Unlike copyright, design protection necessitates formal registration, but it offers exclusive rights to your design for up to 15 years, guaranteeing that your product stands out in the marketplace without risk of imitation.
The crux of the situation is understanding what each form of protection provides. Copyright is all about expressing ideas—your story, music, or artwork. On the other hand, design protection is concerned with how things appear—the visual appeal of a product that catches the eye and attracts buyers. Understanding this divide enables authors to choose the best course for their work.
Sometimes, it’s wise to harness both forms of protection. For example, an artist who creates a beautiful pattern for textiles can secure copyright for the artwork itself and design registration for its application on fabric. This dual approach maximizes protection, ensuring that both the artistic and commercial value of the creation are safeguarded.
Case Highlights: Microfibres Inc. vs. Girdhar & Co.
The case of Microfibres Inc. vs. Girdhar & Co. is a prime example of the importance of choosing the right protection. Microfibres Inc. accused Girdhar & Co. of copying their upholstery designs, claiming copyright infringement. In this legal battle, two companies, Microfibres Inc. (Company A/ plaintiff) and Girdhar & Co. (Company B / defendant), were both involved in manufacturing and selling upholstery fabrics. Plaintiff alleged that defendant had copied their unique and original fabric patterns. Defendant countered this claim by arguing that the artistic patterns of Plaintiff should be protected under the Designs Act rather than the Copyright Act.
However, the court ruled that these designs, used industrially, should have been registered under the Designs Act. The failure to register meant Microfibres Inc. lost their exclusive rights under the Copyright Act.
Legal Provisions and Interpretations
The court examined several legal provisions to reach its decision:
- Section 2(c) of the Copyright Act: “artistic work” means,— (i) 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; (ii) a 1 [work of architecture]; and (iii) any other work of artistic craftsmanship;
- Section 2(d) of the Copyright Act: “author” means, — (i) in relation to a literary or dramatic work, the author of the work; (ii) in relation to a musical work, the composer; (iii) in relation to an artistic work other than a photograph, the artist; (iv) in relation to a photograph, the person taking the photograph; 2 [(v) in relation to a cinematograph film or sound recording, the producer; and (vi) in relation to any literary, dramatic, musical or artistic work which is computer-generated, the person who causes the work to be created;]
Defines “artistic work” and outlines exclusive rights granted to copyright holders.
- Section 15 of the Copyright Act: 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.
States that copyright does not subsist in designs registered or capable of being registered under the Designs Act once reproduced more than 50 times industrially.
- Section 2 of Designs Act, 2000: 2. In this Act, unless there is anything repugnant in the subject or context. (a) “article” means any article of manufacture and any substance, artificial, or partly artificial and partly natural and includes any part of an article capable of being made and sold separately; (b) “Controller” means the Controller-General of Patents, Designs and Trade Marks referred to in Section 3; (c) “copyright” means the exclusive right to apply a design to any article in any class in which the design is registered; 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 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957
Act require the registration of industrial designs for legal protection. The definition of “design” explicitly excludes artistic works intended for independent existence, such as paintings and sculptures.
Court’s Findings
The court determined that the plaintiff’s designs, applied to upholstery fabrics through industrial processes, fall under the category of industrial designs rather than artistic works. Consequently, these designs should have been registered under the Designs Act, 1911, or the Designs Act, 2000, to receive legal protection.
- The plaintiff’s failure to register their designs meant they forfeited the right to exclusive use under the Copyright Act, 1957.
- The plaintiff failed to provide sufficient evidence of the defendants passing off their goods as those of the plaintiff. Despite the similarity in designs, the goods were sold under distinct and different trade names.
- The court emphasized that industrial designs intended for commercial use should be registered under the Designs Act, 1911, or the Designs Act, 2000, to encourage innovation and competition. Artistic works under the Copyright Act, 1957 are protected for the author’s lifetime plus 60 years, whereas designs under the Designs Act, 1911, or the Designs Act, 2000, are protected for a maximum of 15 years.
Implications
The Microfibres Inc. vs. Girdhar & Co. case underscores the importance of adhering to proper legal procedures for protecting industrial designs. It highlights that:
- Designs applied industrially must be registered under the Designs Act, 2000, to receive protection.
- Failure to register negates claims of exclusive rights and protection under the Copyright Act, 1957 once the designs are reproduced industrially.
- Proper evidence and documentation are crucial in establishing claims of infringement and passing off.
This decision is an important reminder to companies that they should carefully follow the registration procedures in order to properly protect their intellectual property. The case highlights the necessity for precise legal procedures to protect creative works in the fashion and textile industries by illuminating the subtle differences between copyright and design protection.
The Microfibres Inc. vs. Girdhar & Co. case illustrates the importance of registering designs under the correct framework—specifically the Designs Act—when dealing with industrial designs. Similarly, the Midas Hygiene Industries Pvt. Ltd. vs Sudhir Bhatia (2015) case reinforces this distinction by emphasizing the overlap between trademark, copyright, and design protection.
In the Midas Hygiene Industries Pvt. Ltd. vs Sudhir Bhatia (2015) case, the court explored the overlap between copyright, trademark, and design protection. It ruled that the subject artistic work, being used as a trademark (label) and involving creative elements like typography and design, could not be registered as a design under the Designs Act, as it was already copyrighted. The court emphasized that copyright protection would remain unless the design was industrially reproduced more than 50 times, aligning with Section 15 of the Copyright Act.
When to File Copyright for Your Work
Protecting your creative assets goes beyond just making them—it’s about ensuring they are legally yours. Here’s a guide to know when and why to file copyright for your creations.
Product Label
Think of your product label as your brand’s identity. If it includes artistic elements like unique logos, typography, or graphics, filing for copyright is essential. This protects the creative effort behind the label design. But don’t stop there!
If the label acts as your brand identifier, consider trademark registration too, which gives you the upper hand in protecting your brand from imitators.
The Trademarks Act, 1999 defines a trademark as any word, name, logo, or label used to distinguish goods or services from others.
In India, copyright protection applies to artistic works, while trademarks help protect brand identity (see Section 2(zb) of the Trademarks Act, 1999).
Product Container/Photo
If your product container or photograph features original artistic designs, you can file for copyright protection. This safeguards the unique visual elements of your container or photograph. For example, if your product container features distinctive graphics or your photographs are creatively captured, copyright protects those artistic works under the Copyright Act, 1957.
However, if the shape of the container or its functional design is novel and used in industrial applications, you may also need to file for design protection under the Designs Act, 2000. This law protects the visual appearance of products, focusing on their shape, colour, and configuration.
Copyright protects the artistic expression, while design registration protects the visual appeal of products in industrial use. For more information on design protection, refer to Section 2(d) of the Designs Act, 2000.
2D Engineering Drawings
Engineering drawings might look technical, but if they involve original artistic elements, they qualify for copyright protection. For purely functional designs used in industrial processes, design registration is the better path. Combining both ensures comprehensive protection for your technical and creative work. However, if the drawing represents a design intended for industrial application, you should consider filing for design registration under the Designs Act, 2000, as this will protect the shape, configuration, and ornamentation of a product. Design registration is necessary for designs used in manufacturing, ensuring they are not copied by competitors.
If the 2D drawing has artistic elements, copyright protection is appropriate. If it represents a functional design, you should register it as a design.
The Impact of the 2012 Amendments on the 1957 Copyright Act
Section 52(1): The following acts shall not constitute an infringement of copyright, namely:-
“(w) the making of a three-dimensional object from a two-dimensional artistic work, such as a technical drawing, for the purposes of industrial application of any purely functional part of a useful device”.
Notably, Section 52(1)(w) came into effect as part of the 2012 amendments to the Copyright Act, restricting copyright claims for designs that were capable of being registered under the Designs Act, 2000. The Copyright Act protects the artistic expression of ideas in works like paintings, drawings, and sculptures, and it allows for the conversion of 3D works into 2D and vice versa. However, Section 52(1)(w), introduced a provision that permits the making of a 3D object from a 2D artistic work for industrial application, specifically for functional components of a device, without requiring the copyright holder’s permission. This provision ensures that purely functional applications are not restricted by copyright protections, effectively distinguishing between artistic works and industrial designs.
Developing a Robust Defence Plan
Protecting your creative work requires understanding the difference of copyright and design protection. Whether you’ve created a work of art or an eye-catching product, picking the best protection plan can guarantee that your intellectual property is safeguarded against unlawful use. You can safeguard your position in the market and optimize the protection of your creative assets by utilizing both copyright and design registration.
At Stratjuris Law Partners, we understand the subtle distinction of intellectual property law and are here to help you develop a tailored protection strategy. Our experienced attorneys can guide you through the process, ensuring comprehensive protection for your innovations and creativity. Protecting your work is not just about compliance—it’s about securing your vision and future success.
Consult with us to bridge any gaps in understanding and to ensure your creative work is protected against unauthorized use. Let us help you secure your creative assets and achieve your business goals with confidence.