India changes trademark law
Whether a technical drawing can be protected under copyright or design law in India is a complex issue, as Ranjan Narula and Suvarna Pandey of RNA Technology and IP Attorneys explain.
This article analyses the challenges of protecting engineering or technical drawings that are likely to be transformed into a product. Should such as drawing be protected as an “artistic work” under the Indian Copyright Act or as a “design” under the Indian Designs Act?
For a commercial enterprise, generally, a drawing follows a prototype before making the final product, which is likely to involve an industrial process. Thus, the question arises whether a business enterprise wishing to protect its adrawings that qualify for protection as an artistic work under the Copyright Act should necessarily register the work as a design.
The question of whether to register a drawing as a design takes on even greater importance for businesses that are trying to stop a third party from exploiting their artistic work by creating a three-dimensional reproduction of the drawing.
The question often asked is whether a technical drawing would continue to be protected as copyright by itself. In contrast, the resulting product that is industrially produced on the basis of that drawing qualifies to be registered as a design. In some cases for example, the product may not meet the criteria of a design under the Designs Act—it may fall under the exclusion being a mechanical device.
Also, from a commercial perspective, reverse-engineering a product to prepare identical drawings and then the mould or a cast to make an identical product (in appearance) is commonly resorted to by traders.
Overlap between copyright and design
The complexity between copyright and design for an engineering drawing arises from:
- The definition of a design that specifically excludes artistic work, as defined under clause (c) of section 2 of the Copyright Act. The definition of artistic work under the Copyright Act includes a drawing including a diagram, map or chart or plan, whether or not such work possesses artistic quality.
- Section 15 of the Copyright Act which has two parts:
The first part, ie, subsection (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, the design loses its protection as an artistic work under the Copyright Act. Therefore, subject to 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.
"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."
Subsection (2) of section 15 deals with the situation where the design, which is capable of being registered under the Designs Act, is not so registered. It provides that copyright in such a design shall cease as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process.
The Delhi High Court in Microfibers v Girdhar & Co & Anr (decision dated May 28, 2009 [2009 (40) PTC 519 (Del) (DB)]) dealing with the overlap of copyright and designs with respect to upholstery fabrics held the following: “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.”
The Bombay High Court in Photoquip India v Delhi Photo Store (September 15, 2014 [684 of 2014 In Suit 427 of 2014]) dealing with the copyright infringement of the drawings and mould of the flashlight as claimed by plaintiff, held:
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.
The court noted that “reverse-engineering is a sophisticated form of stealing”. The defendants have failed to produce their drawing “even though it is the mould and the drawings that are subject matter of this action”.
The court said: “Everything points to the defendants having reverse-engineered the plaintiff’s products. The rival products are virtually identical, but for the one marginal difference in a single dimension. There seems to be no manner of doubt that the defendants have with them illicit drawings that infringe the plaintiff’s copyright, and that these infringing drawings have been prepared by reverse-engineering the plaintiff’s products. There is no valid explanation for the presence of the plaintiff’s products in a disassembled state in the defendants’ premises.”
The Delhi High Court in Jagdamba Impex v M/S Tristar Products Private (May 5, 2014 [FAO No. 128/2014 & CM Nos. 7778-79/2014]) mentioned the following while dealing with an appeal filed by defendant Jagdamba Impex challenging the order restraining them from using a machine to manufacture hair combs, on the ground that the machine is a copy of the respondent/plaintiff Tristar Products’ machine having been produced from the drawings over which respondent/plaintiff has a copyright.
“Since in the present case no rights are claimed with respect to machine which manufactures a particular shape of the comb under the Patents Act, 1970 or under the Designs Act, 2000, we have to see the entitlement of the respondent/plaintiff to the drawing/design only under the Copyright Act, and once that is so, section 15(2) comes into play.
“It is not disputed before this court that more than 50 articles/combs have been manufactured by the respondent/plaintiff by applying the drawing/design by the machine/industrial process and consequently it is clear that no rights can be claimed with respect to drawing/design under the Copyright Act.”
The court also said: “Section 14(c) deals with an entitlement of a person who is the owner of the copyright because of existence/continuation of the copyright in the artistic work, but section 15(2) makes it clear that the entitlement of a copyright owner in an artistic work/drawing/design is lost once from the drawing/design an article is produced more than 50 times by means of an industrial process.
“Once the copyright is lost under section 15 of the Copyright Act, section 14(c) of the act cannot be read as to again confer a copyright in an artistic work although the same is lost by virtue of section 15 of the said act.”
To sum up, “reverse-engineering” by competitors or third parties of a machine or a particular part of the machine is one of the significant challenges for a business enterprise in protecting its interests. In many cases, it is neither commercially nor legally practical to seek design registration of every product that is industrially produced.
Further, many products change post-launch to improve their efficiency, and it remains a grey area whether such incremental changes create a new design that requires a separate registration.
In addition, many times complex mechanical parts of an apparatus or machine may be purely functional and lack aesthetic appeal and thus excluded from design registration but protectable as artistic works as defined under section 2(c) of the Copyright Act, 1957.
On the other hand, the courts “over-focus” on section 15(2) criteria as enumerated above to deny protection to such works.
The Delhi High Court (Full bench) in a case brought by Carlsberg Breweries against Som Distilleries and Breweries holding that common law rights in an unregistered design are also protected can come to IP owner’s rescue. Thus, in the case of reverse-engineering of the product, one of the ways to stop the third party is through the common law remedy of passing off.
Ranjan Narula is the founder and managing partner at RNA Technology and IP Attorneys. He has been practising since 1991 handling a wide range of IP, IT and technology matters including IP management issues, strategic advice on IP clearance, acquisition, and enforcement. He can be contacted at: firstname.lastname@example.org
Suvarna Pandey is a registered patent agent and law graduate with more than 10 years’ IP experience . Her specialities include patent searches, drafting and prosecution before the Indian Patent Office. She can be contacted at: email@example.com
RNA Technology, India, Copyright Act, design law, technical drawing, artistic works, commercial, reverse-engineering, Delhi High Court, Carlsberg Breweries