The junction between the Copyright Act and the Designs Act

An Indian railway engineering firm took the wrong track when it used copyrighted technical drawings and relied on the Designs Act as its defence, say Manisha Singh and Akanksha Kar of Lex Orbis.

The plaintiff, a UK-based company engaged in rail fastenings and track elasticity solutions, filed a case against an Indian company as well as its employees for infringement of the plaintiff’s trademark ‘Pandrol’ and copyrighted work of ‘Pandrol Double Resilient Baseplate Assembly System’ (DBRAS) drawings.

India’s Ministry of Railways had issued certain performance criteria for fastening systems for a ballastless track. The set parameters and standards were complied with by the plaintiff and the firm obtained approval for its drawings from the Ministry of Railways in 2011. The plaintiff holds registrations for the ‘Pandrol’ trademark dating back to 1964 and has gained reputation and goodwill through extensive use and sales promotion of its products marketed under the ‘Pandrol’ mark.

The plaintiff alleges that the defendants have copied its drawings and submitted the copied drawings under the Pandrol mark before state government entity, Madhya Pradesh Metro Rail (MPMRCL), in response to a railway tender. The plaintiff sought a decree of permanent injunction and other ancillary reliefs against the defendants.

‘An inadvertent error’

In its defence, defendant no. 1, the company that deals in railway track engineering, argued that the engineering drawings for DBRAS it submitted, are in conformity with the guidelines issued by the Ministry of Railways and that it can supply the system, as any other entity can do so. The Railway Board of the Ministry of Railways had approved six fastening systems for ballastless tracks which can be used by metro railways/mass rapid transit systems. The defendants pleaded that these systems are designed by different entities and exclusive rights can be claimed by those entities if they secure registrations— mere approval confers no statutory rights.

Defendant no. 1 claimed that ‘Pandrol’ mark on its submitted drawings was an inadvertent error which was rectified, and drawings were re-submitted without the mark. The defendant argued that the DBRAS is not registered under any Act, the drawings are in the public domain, easily available on the internet as well as the official website of the Ministry of Railways. There has been no commercial exploitation of the plaintiff’s trademark, it said. The defendant argued that it has not manufactured or produced the DBRAS components, and therefore, there is no case for trademark infringement or passing off. The defendant placed reliance on Section 15(2) of the Copyright Act (1957) that since the plaintiff’s drawings are capable of being registered under the Designs Act (2000), and based on said drawings, products have been produced more than 50 times by an industrial process, no copyright can be claimed.

"The court considered that the plaintiff’s drawings, even if they were used in industrial production, were covered under the ambit of ‘artistic work’."

In its response, the plaintiff argued that it intended to prevent the MPMRCL from being deceived by the defendants who are using its copyrighted drawings and trademark. The plaintiff alleges that DBRAS, which it developed and designed, has been infringed by the defendants, and there was no justification for the defendants to copy its drawings. It said that the defendants themselves admitted to copying the plaintiff’s drawings in their written statement. That even if the tender required the copying of the approved drawings, there was no basis for the defendants to expressly state that the submitted drawings had been drawn, checked, reviewed, and approved by their employees. Finally, since the plaintiff’s drawings did not constitute a design capable of registration under the Designs Act, the defendants’ reliance on Section 15(2) of the Copyright Act was misplaced.

The defendant counter-argued that the plaintiff’s drawings have been in the public domain since 2010 when they were first published in the UK and have also been published on the Research Design and Standards Organisation (RDSO)/ Ministry of Railways website. That the plaintiff does not have any copyright over its drawings under Section 14 of the Copyright Act and instead, such drawings fall under the ambit of the Designs Act. Since the plaintiff has already supplied more than 20,00,000 fastening sets and 50,00,000 elastic rail clips, no copyright subsists in the plaintiff’s drawings under Section 15(2) of the Copyright Act.

Copyright v Designs

The court analysed the relevant provisions of the Copyright Act and Designs Act to determine whether the plaintiff could claim copyright in the drawings or not. The judge referred to various judicial precedents to support the decision that an ‘artistic work’/original drawing can constitute a ‘design’ and even if the original drawing/‘artistic work’ is used to industrially produce an article, the original drawing/‘artistic work’ would continue to fall within the meaning of the artistic work as defined under Section 2(c) of the Copyright Act and will be entitled to the full period of copyright protection. Adjudging the present case, the court considered that the plaintiff’s drawings, even if they were to be used in industrial production, were covered under the ambit of ‘artistic work’ under Section 2(c) of the Copyright Act. In fact, a ‘design’ in respect of a finished product was yet to emerge in the present case and it could not be construed that these drawings reflect a product, which, in its finished state, would have any visual appeal, making it the subject matter of design registration.

‘Resorted to copying’

Coming to the issue of whether the copyright for these drawings vested with the plaintiffs or if it had been assigned in favour of the Ministry of Railways as claimed by the defendants, the court reviewed approval granted to the plaintiffs and concluded that such approval did not indicate that the copyright was granted to the Ministry of Railways or that any of the plaintiff’s copyright stood waived off. The court agreed with plaintiff’s submission that the defendants copied the plaintiff’s drawings, which were only one of the approved drawings, to manufacture a generic product in response to the tender floated by the MPMRCL.

The defendant’s claim that the tender was in respect of a specific product to be manufactured as per the plaintiff’s drawings and that the defendants had to copy these drawings, was baseless. The court was of the opinion that the defendants could have also opted an alternate route to approach one of the entities whose drawings had been approved, or their supplier(s), to obtain a license to bid for the tender. However, the defendants failed to prepare their own drawings and seek approval from the Ministry of Railways and resorted to copying the plaintiff’s drawings and put the names of their own personnel as the creators.

It was also held that the copyright registration is not a pre-requisite for seeking protection from infringement under the Copyright Act. The court also took into account that the local commissioner’s report revealed that the defendants had original drawings of the plaintiff’s on their systems/laptops. A search for the term ‘Pandrol’ on those laptops revealed various other documents and the defendants had no viable explanation as to why they were in custody of such data.

"It could not be construed that these drawings reflect a product, which, in its finished state, would have any visual appeal, making it the subject matter of design registration."

The court ruled in favour of the plaintiff and held the defendants liable for infringement of the plaintiff’s copyright and trademark. The injunction application filed by the plaintiff was allowed and an injunction order was made absolute until the final adjudication of the suit. The court also stepped in and imposed the costs of INR 1,00,000 ($1,200) on the defendants which is to be paid to the plaintiff.

This order rightly captures the interplay between the provisions of the Copyright Act and Design Act and draws the line between the copyright protection and protection granted by design registration in respect of artistic works. While the definition of ‘artistic work’ has a broader scope ranging from simplistic drawing to complex ones in 2D or 3D form, which may or may not have visual appeal, the creator nonetheless remains the rights holder of such original artistic works under the Copyright Act.

The lawmakers had clear intention to grant a higher protection to original artistic works (work of art) under the Copyright Act and lesser protection (in terms of timeline/duration) to registered designs which are commercial in nature. Once the artistic work is applied to an article which could be a registrable/registered design and has been applied more than 50 times, the copyright protection would cease to exist.

Manisha Singh is a partner at Lex Orbis. She can be contacted at: manisha@lexorbis.com

Akanksha Kar is an associate partner at Lex Orbis. She can be contacted at: akanksha@lexorbis.com