Summary
Whether proprietary engineering drawings of cryogenic semi-trailers are 'artistic works' protected by the Copyright Act, 1957 or 'designs' whose copyright ceases under Section 15(2) once applied to articles reproduced more than fifty times by an industrial process is a mixed question of law and fact that cannot be decided on an application under Order VII Rule 11 CPC. The Supreme Court laid down a two-pronged test for the Section 15(2) interface: first, whether the work is purely an artistic work or a design derived from it and industrially applied; second, if copyright protection is unavailable, whether on the 'functional utility' test the work qualifies for design protection at all. The High Court's restoration of the suit was upheld and the Commercial Court directed to try the matter and decide the interim injunction application within fixed time.
Issues
- What are the parameters for determining whether a work or article falls within the limitation in Section 15(2) of the Copyright Act, 1957, so as to be classified as a 'design' under Section 2(d) of the Designs Act, 2000 rather than an 'artistic work' under Section 2(c) of the Copyright Act.
- Whether the High Court erred in setting aside the Commercial Court's order rejecting the plaint under Order VII Rule 11 CPC on the ground that the suit for copyright infringement was barred by Section 15(2) of the Copyright Act.
Provisions considered
- Section 2(c), Copyright Act, 1957'Artistic work' includes a drawing (including a diagram, map, chart or plan) whether or not it possesses artistic quality. The Court held the expression has a very wide connotation, extending even to abstract lines or curves, two- or three-dimensional, with or without visual appeal; Section 2(d) of the Designs Act expressly excludes such artistic works from 'design'. (¶¶ 13, 14, 21, 55)
- Section 14(c), Copyright Act, 1957The holder of copyright in an artistic work has the exclusive right to reproduce it in any material form, including depiction in three dimensions of a two-dimensional work and vice versa. The Court noted this right in explaining that an original artistic work does not lose copyright merely because a design derived from it has been industrially applied. (¶¶ 10, 11, 55, 58)
- Section 15(1) and (2), Copyright Act, 1957Copyright does not subsist in a design registered under the Designs Act, and copyright in a design capable of registration but not registered ceases once an article to which it is applied has been reproduced more than fifty times by an industrial process by the owner or his licensee. The Court read Section 15(2) as harmonising the two statutes: the original artistic work keeps copyright, but the design derived from it for industrial production is protected only if registered under the Designs Act. Whether the drawings in suit fell within this limitation was held to be a triable mixed question. (¶¶ 15, 16, 17, 21, 57, 58, 60, 67)
- Section 2(d), Designs Act, 2000'Design' means features of shape, configuration, pattern, ornament or composition of lines or colours applied to an article by an industrial process which in the finished article appeal to and are judged solely by the eye, excluding any mode or principle of construction, anything that is in substance a mere mechanical device, trade marks, property marks and artistic works under Section 2(c) of the Copyright Act. The Court held that design protection is not granted by default to whatever fails as an artistic work; the 'functional utility' test (Amp v. Utilux, Interlego, Smithkline, Photoquip, TTK Prestige) must be applied to see whether the dominant purpose is aesthetic or functional. (¶¶ 12, 13, 20, 30, 31, 32, 33, 38, 39, 56, 59, 60)
- Order VII Rule 11, Code of Civil Procedure, 1908At this stage the court conducts only a prima facie inquiry into whether the plaint discloses a cause of action; it does not decide complex mixed questions of law and fact. The Court agreed with the High Court that the true nature of the drawings, and the consequent applicability of Section 15(2), could not be decided on a casual appraisal of the plaint, and that the suit in any case included claims to literary work, confidential information and know-how which could not be rejected in part. (¶¶ 7, 63, 64, 66, 67, 68)
Held
- The intent with which an original artistic work was produced is not determinative of whether it is protected under the copyright or the designs regime. The legislative scheme harmonises the two statutes: an artistic work qualifies for copyright, while its commercial or industrial application, that is the 'design' derived from the original work for industrial production, is subject to the limitation in Section 15(2) of the Copyright Act and is protected only if registered under the Designs Act. The original artistic work does not lose copyright merely because a design derived from it has been industrially applied. (¶¶ 55, 56, 57, 58)
- Two-pronged test for the Section 15(2) conundrum: (i) determine whether the work is purely an 'artistic work' entitled to copyright protection or a 'design' derived from such original artistic work and subjected to an industrial process, on the language of Section 15(2); (ii) if the work does not qualify for copyright protection, apply the 'functional utility' test to determine its dominant purpose and then ascertain whether it qualifies for design protection under the Designs Act. Courts must undertake a case-specific inquiry guided by the statutes, precedent and comparative jurisprudence, so that neither regime encroaches on the other. (¶¶ 59, 60, 61, 62)
- The functional utility test, developed by English courts and adopted by Indian High Courts (Microfibres I and II, Smithkline, Mohan Lal, Whirlpool, Photoquip, TTK Prestige) and paralleled by the American 'conceptual separability' standard (Mazer v. Stein to Star Athletica) and recognised in TRIPS Articles 25 and 26, is integral to determining whether an article qualifies for protection under the Designs Act; what exists solely to make the article work, with no appeal to the eye, is excluded from 'design'. (¶¶ 20, 32, 33, 38, 39, 40, 47, 51, 53, 59)
- Whether the original artistic work falls within the meaning of 'design' under the Designs Act cannot be answered on an application under Order VII Rule 11 CPC, which involves only a prima facie inquiry into the disclosure of a cause of action. Ascertaining the true nature of the proprietary engineering drawings is a mixed question of law and fact requiring trial; the Commercial Court erroneously non-suited the plaintiff by misreading the plaint, misapplying legal principles and overlooking the distinction between 'artistic work' and 'design'. (¶¶ 66, 67, 68, 69)
Result
Appeals dismissed. The High Court's judgment dated 22.10.2024 rejecting the Order VII Rule 11 application and restoring the suit upheld. The Commercial Court directed to decide Inox's pending interim injunction application within two months, and to conduct the trial, determine the true nature of the proprietary engineering drawings on the test in paragraph 60 and adjudicate the other IP infringement claims (literary work, confidential information, know-how) within one year. Pending applications disposed of.