Introduction1

The exclusive rights to use provided to an author for the creation of some literary, artistic, musical, dramatic, cinematography and sound recording are called Copyright whereas exclusive rights provided to the creator of a distinctive design are called Design protections. The two concepts are quite different but they can overlap each other when a particular design is a subject matter of design protection but there is also a possibility of Copyright protection for the same as well. The same problem has been dealt with in both copyright Act, 1957 and Design Act, 2000.

Legal provision related to the subject matter of design

A design or a shape of a product can be a subject matter of Trademark, Copyright as well of Design. In order to safeguard right related to a distinctive shape it is of utmost importance that the proper mode of protection should be chosen to get maximum out of the intellect put in creation of the shape. One wrong move can easily ruin all the efforts made in creation of the design. More specifically it could be said that the confusion related to the registration of design is mainly concerned with the copyright and design registration as the any design which is distinctive and can be represented graphically will get registration under the Trademark Act, 1999. The confusion comes when deciding between copyright and design protection. For better understanding the problem it is relevant to go through the provision of both Acts dealing with the same issue.

Section 15 (2) of the Copyright Act 1957 provided that

According to Section 15 (2) of The Copyright Act, Copyright in any Design which is capable of being registered under the Designs Act, 1911 (2 of 1911), 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 license, by any other person.

Whereas Section 2(d) of the Design Act, 2000 provides

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

Analyzing both the section mentioned above it can easily be observed that the intention of the legislature while drafting the two enactments was to provide protection to a unique design but at the same time they tried to make sure that unnecessary monopoly should not be created due to abuse of the law. The special section regarding the protection of design is added in Copyright Act, 1957 due to the fact that the protection provided under the copyright Act is for sixty years from the date of death of the owner of the Copyright whereas the protection under Design Act, 2000 is only for fifteen years.

International outlook regarding the confusion related to design and copyright protection

The eligibility of the protection of a design is totally dependent upon concept of ‘appeal to and are judged solely by the eye’ which is given under the definition of design under the Design Act, 1999. In Interlego A.G. Vs. Tyco Industries INC2., the Court held that a shape has to be tested by two criteria, one positive and one negative, and both must satisfy in full in order to qualify as a design within the definition of the Act. First, the primary essential before a shape can be registered as a design is that it should have eye-appeal and in this context (a) the eye is that of the prospective customer and (b) the appeal is that created by a distinctiveness of shape, pattern or ornamentation calculated to influence the customer’s choice.

When a design which is not technical in nature and the same is different from the usual design of the product to which the same is applied then the same design is the subject matter of the design registration under the Design Act, 2000. If a owner instead of going for the design registration claims the copyright in the same then the protection of design is provided till the reproduction of fifty article of the same product to decision regarding the protection of the design is of utmost importance.

In Copinger and Skone James, the learned author laid down the principle which clearly states that every artistic work, the design of which is reproduced or is intended to be reproduced in more than fifty articles, was to be excluded from protection under the Copyright Act, as this would affect many engravings and photographs of a purely artistic character. In Cimon Ltd. Vs. Benchmade Furniture Corp3., Jackett P., held that a design which relates to shape or configuration of an article is not itself an objection provided that it is a design to be applied to the ornamenting of an article, and is eligible for registration even though it requires that its purpose of ornamenting be accomplished in whole or in part by constructing the article or parts of it in certain shape or shapes.

In Bayliner’s case4 the court held that what constitutes a design refers to those essential characteristics which it possessed when being made. In Interlego A.G. Vs. Tyco Industries INC5., the Court held that a shape has to be tested by two criteria, one positive and one negative, and both must satisfy in full in order to qualify as a design within the definition of the Act. The primary essential before a shape can be registered as a design is that it should have eye-appeal that is, the eye is that of the prospective customer and the appeal is that created by a distinctiveness of shape, pattern or ornamentation calculated to influence the customer’s choice.

Indian legal scenario

In a recent judgment of Microfibres Inc vs. Giridhar & co,6 the questions to be decided of was if designs in question was capable of being registered under the Designs Act, 2000 and has not been so registered whether the Appellant was entitled to seek protection under the copyright law as the designs had not been registered under the Design’s Act — Held, 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

In Samsonite Corporation vs. Vijay Sales7 the court specifically dealing with the subject of confusion regarding the subject matter of design and copyright discussed the following issues:

  1. The case debated on the effect of the absence of a specific meaning for work ‘design’, for the purpose of Copyright Act,1957 –It was held that since the meaning of ‘design’ was defined in the Designs Act, 1911, hence the provisions had to be read together for the purpose of deciding the question
  2. The case dealt with the effect of nonregistration of the design under Section 15 of the Copyright Act, 1957 – It was found that the design drawn was clearly within the definition of design under the Designs Act, 1911 and within the meaning of the Copyright Act – It was ruled under Sections 47 & 2(5) of the Designs Act, 1911, that the plaintiff could not claim the protection under the Copyright Act, 1957, with reference to the drawings
  3. The case debated on the scope of requirements of law in relevance to the users of the international design – It was ruled that general understanding meant that the nature of the article concealed in the design should be suited to production in quantity – The article would be excluded which would normally be or only capable of being produced singally such as non-reproducible or artistic creation or architectural works
  4. The case discussed the criteria to determine whether drawings could be the design within the meaning of Section 2(5) of the Designs Act, 1911 - It was held that the purpose and the intention would be relevant criterion to consider if the drawings were design in the light of the provisions of the Designs Act, 1911 and Section 2(c)(1) of the Copyright Act, 1957.

Hence from the above discussion it is very clear that a subject matter of design would have to appeal to the eye in a sense that it looks different from the usual shape of a particular product. The design falling in category discussed above should be applied for the registration under the Design Act, 2000. The decision regarding a particular design is dependent upon the fact and circumstance of each particular case. A design applied to a particular product might be unique in reference to a particular product whereas the same design can be taken as a usual design in relation to another products. For example a heart shape Specs can be distinctive and can become a subject matter of design registration whereas heart shape applied to greeting cards may not become so.

Conclusion

The design of a product as being a work of intellect deserves the protection from unauthorized use hence the protection is provided to the same under the Trademark, Copyright as well as under the Design Act. The type of protection chosen for the protection of rights in a design is a delicate issue which if not considered properly would let the owner regret later on. There are numerous cases wherein the owner has lost the protection over his design right due to improper mode chosen by him.