This article is written by Ravi Tiwari pursuing Certificate Course in Advanced Civil Litigation: Practice, Procedure and Drafting from LawSikho.
As the fashion industry is booming, there is an advent of a lot of apparel brands in the Indian market. Every day some of the other companies are introducing their new designs or models in the market. A dispute arises when these designs are alleged for having a great degree of similarity to some already existing product design and eventually, the matter comes to the Court for adjudication. The matters about infringement of design, copyright, trademark, goodwill are considered as a matter of intellectual property right violation.
For instance, after the wedding of Anushka Sharma and Virat Kohli, a great many designers at local market levels had copied the design of her wedding lehenga which was originally a “Sabyasachi design.” As much as, it was also openly sold by the traders in Chandni Chowk Market, Delhi and also across various local markets pan India. Instances like this cause great concern for the original designer who puts in a lot of hard work and sweat to create a design and unfortunately his very created design is copied by other people sans taking designer permission. But the dispute regarding copyright infringement in the fashion industry becomes more pressing when a clash over a design occurs between reputed fashion houses. Ritika Private Limited v. Biba Apparels Private Limited is one such case and it will be interesting to see how the case was decided in the light of applicable rules.
In this article, we will analyse the judgement penned by the High Court of Delhi relating to infringement of copyright. The case will be discussed in light of the applicable provisions of the Copyright Act, facts and circumstances that led to the filing of the case, contentions of the plaintiff, contentions of the defendant and observations of the court on the issues raised.
The fashion industry and intellectual property right
Copyright is an intellectual property that is owned/possessed by the original creator. There are fields in which copyright plays a vital role in protecting and securing the interest of the original creator. Fields like musical works, dramatic, literacy, cinematograph films, sound recording, translation of work, an adaptation of work, computer programme, image etc. come under the ambit of copyright protection.
Section 14 of the Copyright Act, 1957 provides the meaning of the copyright, it clearly defines which are the fields in which copyright will be applicable and Section 54 of the Copyright Act, 1957 defines the “owner of the copyright”.
Section 15 of the Indian Copyright Act, 1957, is the most relevant provision related to copyright and design, which provides a wide picture as to what extent the design shall be registered under the copyright act. Design Act, 2000 is another important legal framework that comes into play while discussing the IPR issues in the fashion industry.
Design is another important term when we talk about apparels. The Design Act, 2000 protects not the ultimate product but the design, shape or pattern of it. For instance, a sketch of a dress. Registration of a design is important to seek protection under the law. However, the conflict between registering a design under the Copyright Act or the Design Act has been prevalent. The case of Ritika Pvt Ltd vs. Biba Apparels will be studied to understand the nature of this conflict and get a picture of how this dispute was settled.
Ritika Private Limited v. Biba Apparels Private Limited
The present case revolves around copyright infringement and registered design. The case begins by filing of a suit by the Ritika Private Limited (who is a plaintiff in this case), stating that the Biba Apparel Private Limited (who is the defendant in this case) had copied the design and work of the plaintiff which the plaintiff was selling under the brand name of “Ritu Kumar”. The plaintiff claimed to be its first owner and therefore contended that the defendant had earned profit from the design of the plaintiff and without any prior permission of the plaintiff the defendant had sold the design under its name.
The defendant on the other hand disagreed with the statement and contentions of the plaintiff and stated that the plaintiff had never registered the design in dispute. They stated that the suit would be barred by Section 15(2) of the copyright act as it had been produced more than 50 times and hence this would not be a case of copyright infringement.
Contentions of the plaintiff
The following were the contentions of the plaintiff, Ritika Pvt. Ltd. in the present case.
- That the plaintiff is an exclusive owner of the design and sketches made by the plaintiff are sold under the brand name of “Ritu Kumar”.
- The plaintiff said that the design and sketches are distinctive, identifiable and exclusive with the brand Ritu Kumar.
- They were maintaining the digital records of all the designs and also tagging identification codes to determine the genuineness of their product.
- The plaintiff explained the detailed procedure as to how the work is done under its brand.
- Another serious contention was that the defendant was in fact violating the trade secrets of the plaintiff by hiring the erstwhile(former) employees of the plaintiff. The employees who were part of the plaintiff’s organization have been revealing the trade secrets of the plaintiff’s works and design.
- The plaintiff stated that it takes a lot of time and effort to make the design come into reality and the plaintiff had put in a lot of hard work to make their design better and novel.
- Therefore, the exclusive right to enjoy the copyright of the design and sketches rests with the plaintiff.
- The plaintiff also requested the court to stop the defendant from reproducing, printing, publishing, distributing, selling, offering etc and also to show the accounts.
Contentions of the defendant
The following were the contentions of the defendant:
- The defendant, in this case, had asked for the dismissal of the suit under the provision of Section 15(2) of the Indian Copyright Act, 1957.
- The defendant emphasised the production of the design and sketches which the plaintiff has vehemently stated in the plaint. The strongest contention of the defendant was that the plaintiff has exceeded the 50 times of the production of said design and sketches. Also, despite the plaintiff design being capable of being registered under the Design Act, the plaintiff hasn’t made any endeavour to register its design and sketches under Design Act.
- On the issue of violation of trade secrets raised by the plaintiff, The defendant contended that there has not been any reliance of evidence of such violation to the court and hence it cannot be established
- The defendant further said since the production is exceeded 50 times then no infringement of copyright has been done by the defendant. The defendant relied on his argument on Section 15(2) of the Indian Copyright Act, 1957.
Provisions discussed in this case
The following provisions related to this case are as follows:
- Section 2(d) of the Design Act, 2000 defines the term “Design” which means that the characteristic 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 which is finished by industrial, mechanical or chemical, separate or combined and can be seen through naked eyes or it must be tangible.
It doesn’t include trademarks, property marks, any artistic work in the design Act.
- Section 4 of the Design Act, 2000, which is related to Prohibition of registration of certain design which emanates that:
- The design which is not novel and original are prohibited from getting registered in the design act.
- The design which is known by all the public before the filing of the suitor is not distinguishable from known designs or the combination of known designs cannot be registered under the design act.
- The design consisting of obscene, scandalous matter will not be registered under the design act.
- Section 2(c) of the Indian Copyright Act, 1957, defines “artistic work” which means the work of painting, sculpture, drawing (including a diagram, map, chart or plan), engraving, photograph, architecture and other work of craftsmanship come under artistic work.
- Section 15 of the Indian Copyright Act, 1957, provides special provision regarding copyright in designs registered and capable of being registered under the Design Act, 2000 which states that:
- Copyright shall not subsist under this Act in any design which is registered under the design act, to be simply put on it means that if a design is registered under the design act, then the copyright act shall not be applicable on that design.
- If the design is registered under the copyright act and that design is capable of being registered under the design act but due to some reason it is not registered under the design act, and the owner of the design has produced the design more than 50 times of production by industrial process whether by him or by any other person, then such design shall cease under the Copyright Act, 2000.
These four provisions play a vital role in reaching the final upshot of the judgement of this case.
Observations made by the Hon’ble Court
The following were the analysis of the Hon’ble Court in this case:
- The Hon’ble Court observed that this case revolves around two legislations, which are the Indian Copyright Act, 1957 and Design Act, 2000 and the questions to be determined by the court were:
- Whether Section 15(2) of Indian Copyright Act, 1957 protects the rights of the real and exclusive owner’s design if the design is registered under the copyright act and is capable of being registered under Design Act, 2000, but not registered under Design Act, 2000, and the owner produced the design 50 times more of the same design?
- What are trade secrets being referred to in this case and if they were violated by the defendant?
To answer the first question, the court relied on the judgement given by the Division Bench of the same Court in “Microfibres Inc. Vs. Girdhar & Co. & Anr” in which the division bench has dealt the same question which is asked by the plaintiff in this case.
- The Hon’ble Division Bench stated in the above-mentioned case that the design, sketches and drawings used in making the dresses if the cross or exceeds the 50 times of the production of the design by the way of Industrial process or any other method and is registered under the Indian Copyright Act, 1957, then the protection of copyright shall not remain with the real and exclusive owner of the design.
- The Hon’ble Division Bench further said that the legislature intends to give a lesser period of protection to the copyright when such copyright leads to the creation of a design that can be used for commercial purposes.
- The court further said that if the interpretation to protect a drawing or design under the Copyright Act was accepted, it would make the framework of the Designs Act meaningless as for every design, there would be an intermediate product such as an engraving or a diagram.
- The court reiterated that the design has to be registered under the Designs Act for protection, failing which it will lose its copyright protection once it is produced more than 50 times by an industrial process.
- The court decided that there was no violation of copyright by the defendant as the dresses were created by the industrial process of applying the design or sketch. There was no instance of affixing a print from the work of the plaintiff on the defendant’s apparel.
- On the question of trademark violation, the court said that the plaintiff has not shown any trade secrets violation done by the defendant in his plaint so the court refrained from going deep into this issue.
The main point highlighted by the Hon’ble Court, in this case, was that when a particular design is produced more than 50 times, then such design shall cease to get protection under the Copyright Act. Such a view also helps to prevent monopoly by a particular producer in the market. The Hon’ble Court has clearly distinguished between “Original Artistic Work” and “Design”. Giving the above-mentioned reason the court rejected the plea of the plaintiff. The defendant applied for dismissal of the case according to Order XII Rule 6 of the Code of Civil Procedure, 1908.
The case has gone on to establish the importance of registration under the Designs Act. It is interesting to come across such a stance of the court wherein a violation of copyright was decided not on the ground of similarity between the plaintiff’s and the defendant’s products but on the basis that the defendant was creating the cloth through an industrial process and not literally affixing a print on his product. The court was quite clear in its approach that there was no infringement of copyright in such cases. Therefore, copyright persists until put to an industrial process. An emphasis on the language of Section 15(2) of the Copyright Act is also noteworthy which makes it clear that no copyright can subsist in the drawing and sketch under the Indian Copyright Act once it is produced more than 50 times.
Such an interpretation might restrict the rights of the owner, but at the same time leads to healthy competition in the fashion market and also meets the various needs of the consumers at reasonable rates.
- Pranda Jewelry Pvt. Ltd. And 2 Ors vs Aarya 24K And 5 Ors on 1 April 2015 (indiankanoon.org)
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