The Two-Pronged Test for Determining Copyright or Design Protection

1. Introduction

This commentary analyzes the decision in “Cryogas Equipment Private Limited v. Inox India Limited” (2025 INSC 483), delivered by the Supreme Court of India on April 15, 2025. The Judgment sets a new legal precedent for distinguishing between works protected under the Copyright Act, 1957 and those that fall under the Designs Act, 2000. Specifically, it clarifies how courts should approach claims of copyright infringement when an “artistic work” has been commercially or industrially exploited, thus potentially qualifying as a “design.” The decision draws heavily on domestic and comparative jurisprudence to elucidate a two-pronged test to determine whether Section 15(2) of the Copyright Act applies.

The appellants, Cryogas Equipment Private Limited and LNG Express India Private Limited, challenged the restoration of the suit filed by Inox India Limited, which alleged copyright infringement of certain proprietary engineering drawings used to manufacture cryogenic storage tanks and LNG trailers. The Judgment provides key insights into how Indian courts should evaluate intellectual property claims traversing the boundary between artistic works and industrial designs.

2. Summary of the Judgment

The Supreme Court upheld the Gujarat High Court’s decision to reject the appellants’ Order VII Rule 11 CPC application, thereby reinstating Inox India Limited’s suit for copyright infringement. The Commercial Court had earlier dismissed Inox’s claim at the threshold, concluding that Section 15(2) of the Copyright Act barred copyright claims once a design was reproducible more than fifty times by an industrial process. The High Court, however, found that the dismissal was premature because:

The question of whether the drawings qualified as copyrightable artistic works or designs required a more detailed factual examination.
Even if they were design-registrable, the question of whether Inox actually applied these works more than fifty times was a mixed question of law and fact, not suitable for summary rejection.
Additional claims regarding the alleged theft of confidential information, literary works, and know-how could not be summarily dismissed at the pleadings stage.

The Supreme Court affirmed the High Court’s reasoning, clarifying that courts must adopt a nuanced, case-specific assessment before dismissing such suits. In so doing, it formulated a precise, two-pronged test to resolve the overlap between copyright and design rights and directed the Commercial Court to proceed with the suit and decide the pending application for an injunction within a stipulated timeframe.

3. Analysis

3.1 Precedents Cited

The Judgment draws upon several Indian and international cases to clarify the overlapping domain of copyright and design:

Microfibres Inc. v. Girdhar (Delhi High Court): Established that once a work is reproduced more than fifty times through industrial processes and is capable of being registered under the Designs Act, copyright protection ceases as per Section 15(2) of the Copyright Act.
Dart Industries Inc. v. Techno Plast and Others (Delhi High Court): Highlighted that design registration under the Designs Act invalidates an overlapping claim under the Copyright Act.
Photoquip India Limited v. Delhi Photo Store (Bombay High Court): Emphasized that purely functional works do not qualify as artistic works under the Copyright Act, and that Section 15(2) must be read in tandem with the “functional utility” test.
Star Athletica LLC v. Varsity Brands Inc. (U.S. Supreme Court): The Judgment borrows this comparative perspective to consolidate the notion of “conceptual separability,” which is analogous to India’s “functional utility” principle for differentiating between aesthetic/artistic expression and function-driven designs.

3.2 Legal Reasoning

Central to the Court’s reasoning is that Sections 15(1) and 15(2) of the Copyright Act create a deliberate exception to extended copyright protection in cases of industrial designs:

Section 15(1) of the Copyright Act discontinues copyright protection for any item already registered under the Designs Act.
Section 15(2) of the Copyright Act bars continued copyright protection for works “capable of being registered” under the Designs Act once more than fifty reproductions have been made.

As laid out in paragraph 60 of the Judgment, the Supreme Court outlines a two-pronged test to determine whether a work is entitled to copyright protection or must be registered as a design:

Whether the work is purely an artistic work (thus protected under the Copyright Act in its own right) or whether it constitutes an industrial application of a drawing (thus a “design” subject to registration under the Designs Act).
Whether functional utility dominates aesthetic form, thereby excluding the design from copyright and pushing it into the domain of the Designs Act’s regime. If a shape or configuration is driven principally by functional or utilitarian aspects, it is a “design” and not an artistic work.

The Court held that whether Inox’s proprietary engineering drawings qualified as artistic works or industrially applied designs capable of registration could not be resolved merely on the pleadings. Such determination calls for a complete inquiry, including evidence on components of design, the degree of aesthetic appeal, and the scope of industrial usage under Section 15(2). Hence, the application under Order VII Rule 11 CPC was deemed premature.

3.3 Impact

This ruling significantly bolsters clarity for businesses and legal practitioners handling overlapping copyright and design disputes. By emphasizing that courts must first ascertain whether a work meets the statutory definition of “artistic work” or qualifies for design registration, the Judgment:

Reinforces that creative efforts behind purely industrial designs enjoy a narrower window of exclusive rights relative to enduring copyright protection for pure “artistic works.”
Promotes certainty in the industrial sector, ensuring that mass-produced designs intended for commercialization qualify under the Designs Act rather than long-term copyright protection to which purely creative works are entitled.
Encourages companies to undertake timely design registration if they foresee large-scale, industrial reproduction. This reduces future judicial friction and prevents potential suits for infringement under more extended copyright categories.

4. Complex Concepts Simplified

The Judgment addresses the often confusing interplay between protectable “artistic works” under copyright law and design-protectable works under the Designs Act. Key concepts include:

Artistic Work: Under Section 2(c) of the Copyright Act, it includes paintings, sculptures, drawings, and works of artistic craftsmanship. These works receive long-term protection, typically lasting beyond the lifetime of the author plus 60 years.
Design: Defined in Section 2(d) of the Designs Act. It covers the features of shape, configuration, pattern, etc., applied to an article via industrial means that “appeal to the eye.” Designs are protected for shorter terms, recognizing their commercial orientation and the need to ensure competitive market freedom once protection expires.
Functional Utility Test: Courts examine whether a design’s visual elements are dictated by functional requirements or by the desire to create an aesthetic impression. In short, an item that “could have been shaped or patterned other ways without affecting its function” may have protectable visual appeal under the Designs Act, whereas purely functional forms lose design protection.
Conceptual Separability: An analogous U.S. doctrine that requires courts to determine if the decorative or artistic aspects of a product can be separated from its utility. Indian courts use a similar approach, requiring an overarching inquiry to see if utility dominates aesthetics.

5. Conclusion

The Supreme Court’s Judgment in Cryogas Equipment Private Limited v. Inox India Limited definitively addresses the nuanced question of how to classify creative works that might also serve industrially oriented purposes. It makes clear that summary dismissal under Order VII Rule 11 of the CPC is improper in scenarios where the nature of a purported artistic work (or design) is contested, requiring a deeper factual and legal inquiry. The newly formulated two-pronged test provides a structured approach:

First, assess whether the drawing or diagram is an “artistic work” in its own right or has primarily been used in an industrial/commercial context.
Second, ascertain whether the work, once applied to an article, is predominantly for aesthetic embellishment or for a functional/technical purpose. A design driven by aesthetic form may seek design registration, whereas a utility-driven form cannot avail itself of copyright or design exclusivity in the long-term.

This ruling significantly underscores the Legislature’s intent that long-term copyright protection should remain the preserve of genuine creative endeavors, while industrial creations or functional designs must gain recognition under the Designs Act within its defined (and shorter) term of monopoly. Consequently, future claimants pondering copyright infringement for mass-produced designs would be better served by promptly securing their rights under the Designs Act. The Judgment thus harmonizes complementary aspects of intellectual property law, preventing protracted litigation and preserving a balanced framework for encouraging both creativity and industrial innovation.