Section 15 Copyright Act Analysis

The Interplay of Copyright and Design: An Analysis of Section 15 of the Indian Copyright Act, 1957

Introduction

Section 15 of the Copyright Act, 1957 (hereinafter "the Act") stands as a critical legislative provision governing the interface between copyright protection and design rights in India. It addresses the potential for overlap where an artistic work, protectable under copyright, is also capable of being registered as a design under the Designs Act, 2000. The primary objective of Section 15 is to prevent the concurrent enjoyment of both copyright and design protection for the same subject matter, thereby precluding an unduly extended monopoly. This article undertakes a comprehensive analysis of Section 15, examining its statutory components, judicial interpretations by Indian courts, and its implications for creators and industries that rely on intellectual property rights.

Statutory Framework: Section 15 of the Copyright Act, 1957 and Relevant Design Provisions

The text of Section 15 of the Copyright Act, 1957, is pivotal to understanding its scope and application:[1]

“15. Special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 1911 (2 of 1911).—

(1) Copyright shall not subsist under this Act in any design which is registered under the Designs Act, 1911 (2 of 1911).

(2) 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 licence, by any other person.”

It is pertinent to note that references to the Designs Act, 1911, are now construed as references to the Designs Act, 2000, which repealed and replaced the former legislation.

Section 15(1): Designs Registered under the Designs Act

Subsection (1) of Section 15 unequivocally states that if a design is registered under the Designs Act, copyright protection under the Copyright Act, 1957, will not subsist in that design. This provision creates a clear demarcation, channeling protection for registered designs exclusively through the design regime.

Section 15(2): Designs Capable of Registration but Not Registered

Subsection (2) addresses a more nuanced scenario: where a design is *capable* of being registered under the Designs Act but has not been so registered. In such cases, copyright in that design ceases once the article to which the design has been applied is reproduced more than fifty times through an industrial process. This "fifty-times rule" acts as a threshold, beyond which the owner loses copyright protection in the design if they have not secured design registration, effectively compelling a choice between the two forms of protection for industrially applied designs.

Definition of "Design" and "Artistic Work"

The interplay is further shaped by the definitions within the respective statutes. Section 2(d) of the Designs Act, 2000, defines "design" as:

“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.”

Conversely, Section 2(c) of the Copyright Act, 1957, defines "artistic work" to include paintings, sculptures, drawings (including diagrams, maps, charts or plans), engravings, photographs, works of architecture, and other works of artistic craftsmanship.[2] The exclusion of "artistic work" from the definition of "design" under the Designs Act, 2000, is a key element in the interpretative challenges surrounding Section 15 of the Copyright Act.

Judicial Interpretation of Section 15

Indian courts have extensively deliberated upon Section 15, striving to harmonize the Copyright Act and the Designs Act. The jurisprudence reveals a consistent effort to prevent dual protection while safeguarding legitimate artistic expressions.

The Foundational Principle: Microfibres Inc. v. Girdhar & Co.

The Division Bench of the Delhi High Court in Microfibres Inc. v. Girdhar & Co. & Anr. S (2009)[3] (hereinafter Microfibres 2009) provided a seminal interpretation of Section 15. The Court emphasized that the legislative intent behind Section 15 was to prevent a long-term or perennial monopoly for commercially exploited designs that could otherwise enjoy extended copyright protection.[4] It held that retaining Section 15, even after the enactment of the Designs Act, 2000, was crucial for statutory harmony and to ensure that the Designs Act was not rendered otiose.[5] If an artistic work is used as a design and applied industrially to an article more than fifty times, copyright in that design ceases unless it is registered under the Designs Act. The Court clarified that the object with which an artistic work is made (i.e., for industrial application) is a critical factor.[6]

"Artistic Work" v. "Design": The Dichotomy

A central issue in many disputes is whether the subject matter is an "artistic work" protectable under copyright or a "design" falling within the ambit of the Designs Act and, consequently, Section 15 of the Copyright Act. The exclusion of "artistic work" from the definition of "design" in Section 2(d) of the Designs Act, 2000, does not mean that an artistic work can never be subject to Section 15 of the Copyright Act. The Delhi High Court in Microfibres 2009 clarified that this exclusion is to ensure that pure artistic works (e.g., a painting intended solely as a standalone piece of art) are not designs. However, if such an artistic work is intended for industrial application to an article to lend it eye-appeal, it functions as a design, and Section 15 of the Copyright Act becomes applicable.[3]

In Rajesh Masrani v. Tahiliani Design Pvt. Ltd. (2008), the Delhi High Court found that fabric prints belonging to a couture line, with very limited reproductions (fewer than twenty), were original artistic works. The Court held that Section 15(2) was inapplicable, implying that the limited reproduction did not trigger the cessation of copyright, and the works retained their character as artistic works rather than mere industrial designs.[7]

Conversely, in Ritika Private Limited v. Biba Apparels Private Limited (2016), the Delhi High Court, relying on the ratio in Microfibres 2009, held a suit for copyright infringement in drawings/sketches for dresses to be barred by Section 15(2). Even though the plaintiff argued their work was an original artistic work excluded from the definition of "design" under the Designs Act, the court focused on its industrial application. The court noted that if a design derived from an original artistic work is exploited more than 50 times by an industrial process, copyright in the design ceases unless registered under the Designs Act.[8] This underscores that the application of an artistic work to an article for commercial production can transform its legal status for protection purposes.

The argument that features of shape and configuration, which are aesthetic and appeal to the eye, should be protected under the Designs Act, and are subject to Section 15(2) if industrially applied without design registration, was advanced by defendants in Samsonite Corporation v. Vijay Sales (1998).[9]

The "Capable of Being Registered" Criterion

Section 15(2) applies to designs "capable of being registered" under the Designs Act. An artistic work, when applied to an article as its pattern, shape, or ornament, becomes a "design" for the purpose of registrability if it meets the criteria of novelty, originality, and eye-appeal stipulated by the Designs Act.[10] The industrial application of the artistic work is a strong indicator that it is being used as a design and is thus potentially capable of registration. If such a design is not registered and is reproduced more than fifty times, copyright protection for that design application is lost.

Extent of Copyright Extinction

A crucial nuance highlighted in Microfibres 2009 is that Section 15(2) extinguishes copyright *in the design as applied to an article*, not necessarily the copyright in the original artistic work *per se*.[4] This means the original drawing or painting might still retain copyright for other purposes (e.g., reproduction as a standalone artistic work, inclusion in a cinematograph film), but not for its application as a design on an industrially produced article if the conditions of Section 15(2) are met.[4]

The Calcutta High Court in Hawkins Cookers Limited v. Khaitan Pressure Cooker Pvt. Ltd. (2015) observed that Section 15 does not prevent the owner of copyright from claiming protection for the artistic work or the label itself, even if used more than fifty times.[11] This aligns with the interpretation that the underlying artistic work (e.g., the original drawing of a label) may retain copyright, while the copyright in the design (the label as applied to numerous products) would cease under Section 15(2) if unregistered and mass-produced.

Procedural Implications and Enforcement

The application of Section 15 has significant procedural consequences. Copyright registrations have been expunged where the subject matter was found to be a design registrable under the Designs Act and/or subject to Section 15(2). In Kiran Shoes Manufacturers v. Registrar Of Copyrights & Anr. (2012), a copyright registration for a "side trim device" of a sports shoe was expunged, one of the grounds being disentitlement under Section 15 as the mark had also been registered as a design.[12] Similarly, in Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia (2015), the Copyright Board's order expunging copyright registrations for packaging material was challenged, with the appellant alleging misapplication of Section 15(2).[13]

Suits for copyright infringement have been dismissed or deemed misconceived when plaintiffs have ignored the mandate of Section 15(2). The Delhi High Court in M/S. Jagdamba Impex v. M/S. Tristar Products Private Ltd. (2014) set aside an injunction, noting that the suit and injunction application flew in the face of Section 15(2).[14] The dismissal of the suit in Ritika Private Limited also exemplifies this.[8]

The Object and Purpose of Section 15

The overarching object of Section 15 is to maintain a balance between different intellectual property regimes and prevent an unwarranted extension of monopoly. As affirmed by the Madras High Court in A. Sreedevi & Another v. M/s. Wooltop Design Private Limited (2017), Section 15 ensures a clear division between the Copyright Act and the Designs Act, which are distinct and function in their respective spheres.[15] The provision prevents dual protection, where a creator might claim longer copyright protection for what is essentially an industrial design. It also ensures that the Designs Act, which provides a shorter term of protection tailored for industrial products, is not rendered redundant.[5] The Gujarat High Court in INOX INDIA LIMITED v. CRYOGAS EQUIPMENT PRIVATE LIMITED (2024) also noted arguments that Section 15 acts as a limitation on the scope of copyright protection for artistic works when applied as designs.[16]

Navigating the Overlap: Practical Considerations for Rights Holders

Creators and businesses must carefully consider the nature of their work and its intended application. If an artistic work is primarily intended for industrial application to articles to enhance their aesthetic appeal, registration under the Designs Act should be sought. Relying solely on copyright protection for such industrially applied designs is perilous, as the reproduction of the article more than fifty times without design registration will lead to the cessation of copyright in that design under Section 15(2). This necessitates a strategic decision at an early stage regarding the most appropriate form of intellectual property protection.

Conclusion

Section 15 of the Copyright Act, 1957, plays a vital role in delineating the boundaries between copyright and design protection in India. Judicial pronouncements, particularly the principles laid down in Microfibres 2009, have clarified that the provision aims to prevent dual monopoly and ensure that industrially applied designs are primarily governed by the Designs Act, 2000. While copyright subsists in original artistic works, their application to articles as designs, coupled with industrial reproduction exceeding fifty units without design registration, leads to the extinguishment of copyright in such applied designs. This legislative scheme mandates a careful strategic approach by rights holders to secure appropriate and effective intellectual property protection for their creations in the Indian legal landscape.

References

  1. Microfibres Inc. v. Girdhar (Delhi High Court, 2006) (providing the text of Section 15 of the Copyright Act, 1957).
  2. Copyright Act, 1957, Section 2(c).
  3. Microfibres Inc. v. Girdhar & Co. & Anr. S, 2009 SCC OnLine Del 1647 (Delhi High Court, 2009).
  4. Microfibres Inc. v. Girdhar & Co. & Anr. S (Delhi High Court, 2009) (Reference Material 9).
  5. Microfibres Inc. v. Girdhar (Delhi High Court, 2009) (Reference Material 23, citing Dr. Singhvi's arguments adopted by the court).
  6. Microfibres Inc. v. Girdhar & Co. & Anr. S, 2009 SCC OnLine Del 1647 (Delhi High Court, 2009) (referring to the Single Judge's findings on the object of the work, Reference Material 17).
  7. Rajesh Masrani v. Tahiliani Design Pvt. Ltd., 2008 SCC OnLine Del 1283 (Delhi High Court, 2008).
  8. Ritika Private Limited v. Biba Apparels Private Limited, 2016 SCC OnLine Del 1979 (Delhi High Court, 2016).
  9. Samsonite Corporation v. Vijay Sales, 1998 SCC OnLine Del 324 (Delhi High Court, 1998).
  10. See generally, Designs Act, 2000, Section 4 (Prohibition of registration of certain designs).
  11. Hawkins Cookers Limited v. Khaitan Pressure Cooker Pvt. Ltd. (Calcutta High Court, 2015) (as per the provided summary).
  12. Kiran Shoes Manufacturers v. Registrar Of Copyrights & Anr., 2012 SCC OnLine Del 1152 (Delhi High Court, 2012).
  13. Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia, 2015 DLT 225 178 (Delhi High Court, 2015).
  14. M/S. Jagdamba Impex v. M/S. Tristar Products Private Ltd. (Delhi High Court, 2014) (as per the provided summary).
  15. A. Sreedevi & Another v. M/s. Wooltop Design Private Limited (Madras High Court, 2017) (as per the provided summary, citing Microlube India Limited v. Rakesh Kumar, 2013 (55) PTC 61).
  16. INOX INDIA LIMITED v. CRYOGAS EQUIPMENT PRIVATE LIMITED (Gujarat High Court, 2024) (as per the provided summary).