Copyright vs Design: The continuing dilemma in the fashion industry

Which is the more appropriate legislation for designers to protect their collections?

Published: 08, Mar 2019

Rajdeep Banerjee is an advocate and legal consultant. He has additional PG Diplomas in Alternate Dispute Resolution, Media Laws, Cyber Laws, Intellectual Property Laws and Human Rights Law from NALSAR, Hyderabad and NLSIU, Bengaluru. He has been practicing law for the last ten years. He is also a visiting faculty at various premier institutions and has taught Corporate Taxation, Business Laws, Labour Laws, Intellectual Property Laws, Cyber Laws, Business Process Outsourcing, Drafting and Conveyancing, Constitutional Law, Sports Law, Public International Law and Human Rights to MBA and Law students. He delivers guest lectures on diverse topics to working professionals and students. He has been a resource person and has also presented research papers at various International and National Seminars and Conferences. He knows various languages including German, French, Spanish and Japanese. Joyeeta Banerjee is a legal consultant and practicing advocate for the last ten years. She is also a qualified Mechanical Engineer. She is also a visiting faculty at various premier institutions teaching Business and Economic Laws, Corporate Laws, Taxation Laws, Legal and Regulatory aspects of Banking, Intellectual Property Laws, Drafting and Conveyancing, Criminal law and Cyber Laws to MBA and Law students. She has delivered various guest lectures to working professionals and students. She has been resource person and has also presented research papers at various International and National Seminars and Conferences. She has PG Diplomas in Cyber Laws, Intellectual Property Laws, Media Laws, Alternate Dispute Resolution and Human Rights Law from NALSAR, Hyderabad and NLSIU, Bengaluru. She knows seven languages including Japanese, German, French and Spanish.

Image: Shutterstock
Image: Shutterstock

The fashion industry in India has been facing rampant piracy. India’s Copyright Act, 1957 seeks to protect copyright in various types of works including artistic works. As per section 22 of the Act, the term of protection granted to copyright holders subsists during the life of the copyright-owner and for 60 years thereafter. There is also a specific design law titled Designs Act, 2000. As per section 11 of the Designs Act, a registered design is copyrighted for a period of 10 years from the date of registration of the design which can be extended for a further period of five years.

Thus, it is clear that Copyright Act provides a longer duration of protection than the Designs Act. Another advantage under the Copyright Act is that it does not require compulsory registration, unlike that under the Designs Act.

The vexed question which has confounded the courts is the appropriate legislation for the protection of fashion designs. Works in which copyright subsist include original artistic works. This definition of 'artistic work' is very wide and not dependent on any artistic quality. Thus, fashion designs can be protected by the copyright law if they are original, and this law also provides the copyright holder an exclusive right to reproduce it any material form. Thus, prima facie, fashion designs are protected under the Copyright Act.

But there are special provisions under the Copyright Act, 1957, which mandate that any design registered under the Designs Act, 2000, will lose protection under the Copyright Act. Section 15(2) of the Copyright Act, 1957 stipulates that ‘Copyright in any design, which is capable of being registered under the Designs Act, 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 50 times by an industrial process by the owner of the copyright or, with his licence, by any other person’.

The Division Bench of the Delhi High Court in the Microfibres Inc. case had earlier observed that reading the Preamble and the Statement of Objects and Reasons of Designs Act leaves no doubt that the intention of the legislature is to grant a higher protection to pure original artistic works. It also suggests that design activity that is purely commercial in nature should be afforded a lower duration of protection. The legislature, treating commerce and art differently, has granted a longer protection to pure artistic works than any activity that is purely commercial in nature.

The courts have held that the original paintings or artistic works that may be used to industrially produce the designed article would continue to get the protection under the provisions of the Copyright Act. But if the design is registered under the Designs Act, that design would be deprived of the copyright protection under the Copyright Act. The designer cannot escape the applicability of the Designs Act by not registering the designs under the Designs Act--then also the design can have the extended copyright protection under the Copyright Act as long as the threshold limit of its application on an article by an industrial process has not crossed 50 and as soon as that limit is crossed, it would even lose its copyright protection under the Copyright Act.

In an interesting case Ritika Private Ltd. vs. Biba Apparels Private Ltd., a leading fashion label (RITU KUMAR) alleged a rival company of imitation of its fashion designs. The Delhi High Court following the Microfibres Inc. case held that once the copyrighted works of the plaintiff were applied for making of dresses, and production of which dresses exceeded 50 in number, the plaintiff lost out in ownership of the copyright works as the plaintiff had not secured registrations of the sketches, drawings, designs under the Designs Act as mandated by the Copyright Act; hence, the plaintiff could not ask for injuncting the infringing activity and the case was dismissed.

But in an earlier case, Rajesh Masrani vs. Tahiliani Design Pvt. Ltd., the infringing activity of copying was injuncted as the designs were not reproduced more than 50 times; thus the protection under the Copyright Act remained available.

With the courts putting more emphasis on the provisions of the Designs Act and the mandatory requirement of registration, fashion designers should register their designs under the Designs Act so that unauthorised copying can be suitably tackled. The interpretation of the various provisions of the Designs Act and its infringement provisions and the requirement of novelty is now being gradually dealt with by the law courts in India.

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