This article has been written by Nehal Wagle.
Intellectual Property Rights have played a major role in widening the scope of the Fashion Industry. Fashion Industry and Intellectual Property Rights are so closely connected to each other that the very existence of the Fashion Industry would be in doldrums if not protected by Intellectual Property.
Fashion Industry as we know is one of the most glamorous industries in India, generating revenue of INR 12,546 million in 2019 (1). Several fashion events like the Lakme fashion week, India Fashion Week, India Runway week etc are conducted every year across different cities in the country. These events provide a platform for designers to showcase their creative talent, attract media attention and build awareness around their brand (2).
The advancement in trade and communication coupled with digitalisation has brought about a paradigm shift in the fashion industry. It became convenient for designers to showcase their creativity and talent through various channels such as social media and online advertising through which they are now able to directly reach the consumers. However, it is rightly said, with great inventions comes the great misery. The technology and digitalisation brought along with themselves newer ways to infringe upon the rights of the creators in the fashion industry.
This brings us to the question of how the works of fashion designers can be protected in this highly digitalised and competitive world. Well, the solution for this conundrum can be found through Intellectual Property Rights.
Intellectual Property Rights in relation to the fashion industry bestows on the designer’s protection in the form of:-
- Patents for innovations
- Copyright for creativity and artistic work
- Trademarks for protection of brand or logo
- Designs for protection to designs that are new and original
- Geographical indications (GI) to distinguish products that have specific geographical origins and possess qualities or a reputation that are closely associated with their place of origin.
- Trade Secrets for the protection of such information of enterprises from its competitors which, if disclosed in the market would result in unfair advantage to the competitors.
Of the above, trademarks, copyrights and designs are most widely used by designers to protect their work.
A continuing dispute relating to intellectual property rights in the fashion industry has been regarding the preference of Copyright Law versus Designs Law to effectively protect the rights of designers in their creative works. In a bid to resolve this ever-continuing conundrum, this article delineates differences in the two laws, and explores previous instances where the two have been pitted against one another.
Copyright v/s Designs….the battle continues
One of the biggest challenges faced by the designers in the fashion industry today, are knock offs of their designs. Knock offs or Copying of the designs has become a rampant trend in the fashion industry causing not only huge monetary losses but also severely affecting the rights of the original creators, and in some cases causing reputational damages to the original designers. Lack of knowledge of intellectual property law further aggravates the problem. Copyright and Designs law affords the best means of protection for the works of the original creators. However, the question arises, which of the two is appropriately applied in the situation faced by the creator?
The dilemma inapplicability of the Copyright law and Designs law first came before the Honourable Delhi High Court in 2006 in Microfibers v/s Girdhar (3) case where the court drew a clear distinction between Artistic works that qualify for copyright protection and those that involve industrial application. This article aims to study in-depth the provisions along with the applicability of the same.
Protection under Copyright Law
The Copyright Act,1957.
In order to qualify for the protection of Copyright, it is necessary that the Fashion design –
- Is new and Original;
- Work is published within the territorial limits of India, and;
- In case of works first published outside India, the author at the time of publication must be domiciled in India
Some of the Relevant Provisions (in relation to the current Article) –
Section 2 (c) – Definition of Artistic Works
Section 13- Works in which Copyright Subsists
Section 14(c )- Meaning of Copyright (Artistic Works)
Section 15-Special Provisions regarding copyright in designs registered or capable of being registered under the provisions of Designs Act,2000
Section 17- Owner of Copyrights
Section 22- Term of Copyright
Section 44-Register of Copyrights
Section 51- When Copyright is Infringed
Protection under Designs law
Governing law –
The Designs Act, 2000
According to Section 2(d) “design” means only the 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 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957
In order to register under the provisions of the act, it is necessary that the –
- Design is new and Original
- It should not be previously published
- Must be cable of being distinguished from known designs or combinations
- Must not contain scandalous or obscene matter
Some of the Relevant Provisions (in relation to the current Article) –
Section 2(d)- Definition of Designs
Section 4- Prohibition on registration of designs
Section 11- Copyright on registration
Section 22- Piracy in Designs
In light of the above legal provisions let us now understand the applicability of both laws with an example
In case of Garments, let’s take an example of a fashion designer named ‘X’ who has designed an exclusive evening gown in her production house She wishes to showcase her talent in one of the upcoming fashion show (4). In this case, would she be eligible for protection under the Copyright law or Designs law?
Once an idea of design is executed in an expression which might be in form of a drawing or a sketch by Miss X, it will automatically qualify for protection under the Copyrights law as an artistic work as long as it passes the test of creativity and originality as per provisions of Section 13 of Copyright Act, 1957(Works in which Copyright subsist). It should be noted that the protection of exclusivity is bestowed by Copyright Law once the work comes into existence. Mere non- registration of the copyright does not deprive the owner of his rights over the work. As a result of which Copyright is often termed as an inherit right.
However, the biggest issue arises when Miss X decides to materialise her drawing or sketch into a dress, then firstly the provisions of section 15 of Copyright Act, 1957 shall apply to the production and post-production the extent of copyright protection will exist up to 50 dresses, post which the copyrights protection afforded to Miss X will cease to exist.
So then the questions that arise are:
- Does the protection of exclusivity awarded to Miss X end on the production of 50 dresses?
- What would happen after the production of 50 dresses?
- Can her work post manufacture of 50 dresses be copied easily?
Let us now explore these questions by taking a look at what would happen if Miss X registers her designs under the Designs Act, 2000.
In order to register her work under designs law, it is necessary that the work of Miss X is original and is not to disclose to the public. Once Miss X applies the design on objects like a garment – unlike Copyright law, under Designs law the owner of the design shall be entitled to protection on registration. Miss X, on registration, can protect her work from infringement by the third party for a period of 10 years with a clause for renewal of a further 5 years.
However, the biggest issue in registering a design under the Designs Act,2000 is that the fashion Industry is highly susceptible to change. Trends in the fashion industry keep changing at a rapid rate, and the time involved in registration tends to exceed the life of the trends in the industry creating confusion among fashion designers. (5)
This again leaves Miss X to question if the time and expenses involved in registration of Designs is worth it in the end? Or will it outrun the trends?
These unanswered questions under Copyright law and Design’s law can read in light of some of the most important judicial decisions that have been delivered by the Honourable courts.
- Rajesh Masrani v/s Tahiliani Designs Pvt. Ltd ……2008 PTC (38) 251 DEL (6)
Facts of the Case
The instant case was filed under order XLIII Rule 1 of Civil Procedure Code 1908 against the order passed by the learned Single Judge of the Honourable Delhi High Court. By this order the application was filed by the respondent who is currently the plaintiff in the current suit for restraining the appellant, currently the defendant from involving in any process of reproduction, printing, publishing, distribution or selling in any manner the subject matter of the suit (the fabric) in any manner to amount to be the colourable imitation or substantial reproduction.
The Respondent (earlier a plaintiff) is private Limited Company under the leadership of renowned fashion designer Mr.Tarun Tahilani.
It was alleged that along with the drawings or sketches made for purpose of developing accessories or garments , the printed patterns or embroidered works on the fabrics also qualify for protection under the provisions of section 2 (c) (i) and Section 2(c) (iii)of the Copyright Act,1957 respectively.
It was also contended by the plaintiff to be owner of all the disputant products under section 17(c) of the Copyright Act,1957 as they were the product of their own creativity and artistic skills.
On further examination of the details produced before the learned single judge, an ex-parte ad interim injunction was granted on 2nd February,2007.
The present appeal was filed by the defendants who are the appellant in the current case (Rajesh Masrani)
- Whether the pattern made by the plaintiff on the fabric qualifies for ‘design’ or ‘artistic work’?
- Whether the product in question is the subject matter of artistic work as per the provisions of Copyright Act, 1957 as alleged by the plaintiff?
- Whether the copyright actually subsists in the plaintiff’s agreements as per Section 15 of the Copyright Act, 1957?
- Lastly, whether the registration of the work under the Copyright Act is compulsory or the registration is not a condition precedent for maintaining the suit for infringement of copyright?
The honourable court, in this case, held that the works of Tarun Tahilani constitutes as ‘artistic works’ and hence comes within the ambit of Copyright Act,1957.
It was further held that Section 15(1) shall not be applicable to the present case as the Section 15(2) of the Copyright Act,1957 is applicable in cases where the copyright in any design is capable of being registered under Designs Act, 1911 but has not been registered and the copyright in the said design shall cease to exist as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process.
However, in the present case as per the contentions made by the plaintiff, not more than 20 pieces of any single costume were produced by the plaintiff, along with the fact that the said costume possessed the element of exclusivity and was limited to only a few copies. This brings to the conclusion that provisions of sec.15(2) continue to be applicable to the plaintiff.
The Court further held that since all of the creative work was done either by Mr Tarun Tahiliani, for and on behalf of the guidance and supervision of the Plaintiff`s Company on a contractual basis. The Plaintiff Company was held to be the first owner of the copyright.
With regards to the final issue pertaining to the question of registration, a reference was made to the decision delivered by honourable Bombay High Court in the case of Burroughs Wellcome (India) Ltd. Vs. Uni-sole Pvt. Ltd. and Another; 1999 PTC Vol. 19 p 188 in the following words:
Copyright it is a form of intellectual property. With the advancement in technology, it is very easy to copy. The basic test in actions based on the infringement of the copyright is that if a thing fetches a price, it can always be copied and therefore, it needs adequate protection. It is well settled that although under the Copyright Act 1957, there is a provision of registration, under Section 44(Register of Copyrights) of the Act. It is not in doubt that the said procedure is an enabling provision and registration is not compulsory for the purpose of enforcing copyright. Section 44 of the Act provides for registration of work in which copyright exists but in order to claim copyright registration is not necessary. This is because registration is only to raise a presumption that the person shown in the certificate of registration is the author. This presumption is not conclusive, but no further proof is necessary unless there is a proof rebutting the contents of the said certificate. Under Section 48 of the Registration Act therefore, the act of registration is ex- facie prima facie evidence of the particulars incorporated in the certificate. There is no provision under the Act which deprives the author of his rights on account of non-registration of the copyright. There is nothing in the Act to suggest that the registration is condition precedent to the subsistent of the copyright or acquisition of copyrights or ownership thereof or for reliefs of infringement of copyrights. The sine-qua-non of the existence of copyright is the expenditure of skill, labour and capital on any work expanded by a person/author and unless the original work is produced in Court to prima facie show that the work has originated from the author, no relief can be granted.
Thus, the final question with regards to registration was settled in favour of the fact that copyright shall subsist even in the absence of the formal process of registration.
- Ritika Pvt Ltd. v/s Biba Apparels Pvt.Ltd….. CS (OS) No.182/2011 (7)
The Plaintiff is a famous boutique apparel designer brand in India. The Defendant is also a famous apparel designer and manufacturer in India. Both companies design attractive contemporary ethic wear – creative fusion fashion.
The Plaintiff brought a suit against the Defendant seeking an injunction against the Defendant from reproducing, printing, publishing, selling or offering etc. prints or garments which are a reproduction of the Plaintiff’s prints and garments. The Plaintiff claimed to be the first owner of the copyright in the artistic works related to these garments and also claimed trade secret violation by its ex-employees.
It is, however, to be noted that the plaintiff`s designs were not registered under the provisions of the Designs Act,2000
- In cases where the work of plaintiff is copyrighted and is then passed through the process of manufacturing exceeds 50 in number, whether the plaintiff loses the ownership over the copyright works
- What relief is available to the plaintiff if he fails to register his work under Designs act 2000 when it qualifies for the same?
The court in this instance made a clear distinction between designs eligible for copyright protection under the provisions of the Copyright Act, 1957 and that of the Designs Act,2000.
It held that copyright protects the original expression of the “artistic work” and offers limited protection to the commercial exploitation of the same, whereas the Designs Act is the chief tool to protect the industrial application of the design, however, the design need not to be always original.
Reference was also made to provisions under section 15(2) of the Copyright Act,1957 (Special Provisions regarding Copyright in Designs)
The decision was then delivered in favour of the defendants and the suit was thus dismissed, relying on the bar set under the provisions Section 15(2) of the Copyright Act, 1957.
In the case of Jewelleries and Ornaments
The situation that we are exploring is not limited in its impact to garments but also affects the designs in Jewelleries and ornaments which too forms a significant part of the fashion industry.
As stated earlier in this article, Copyright law through the Copyright Act,1957 conferrers protection on sketches and designs. But as per provisions of section 15 of Copyright Act, 1957 if any design qualifies for protection under the provision of Designs Act,2000 then in such cases the Copyright shall cease to exists after producing it for 50 times. One such decision highlighting the importance of registering under the Designs Act has been delivered by honourable Bombay High Court in
Pranda Jewellery and Ors. v/s Arya 25kt and Ors…… (2015) (8)
Facts of the case
The instant case the Plaintiff no.1 was involved in the business of branded jewellery and the plaintiff no.2 and plaintiff no.3 held 49% and 51% equity respectively in the business of the Plaintiff no.1.
Plaintiff no.1 was indulged in the business of designing, making and selling of gold sheet articles of deities and religious symbols under the brand name of Prima Art. The drawing pertaining to which was designed by the Plaintiff no.1 through a computer software with the aid of a graphic designer under his employment. Based on these drawings the Plaintiff no.3 would manufacture the articles in Thailand and the same were imported from Thailand and then sold in India by plaintiff no.1 and Plaintiff no.2.
It came to the notice of Plaintiff in 2010 that the Defendants in the instant case had copied his 22 product designs. Defendant no.1 a partnership firm of which Defendant 2 to Defendant 7 were indulged in producing identical gold sheet articles and religious symbols. Thus, a suit for Copyright infringement was filed by the Plaintiff.
- Whether the alleged work constitutes a Design within the meaning of Designs under the Designs Act,2000?
- Whether the images of deities and religious figures and signs in gold plates are a reproduction of the artistic works in a material form including depiction in three dimensions or articles “to which the design has been applied….. by an industrial process.”
The Court, in this case, held that the work shall constitute as artistic work as long as it falls within the ambit of section 2(c) of Copyright Act,1957. But when the same has been put to industrial use, it would qualify for protection under the provisions of Designs Act,2000 failure of which the Copyright in the articles shall cease to exist after 50 products as per provisions of Section 15 (2) of the Copyright Act,1957.
This brings us to our root issue as to whether Miss X can seek protection under Copyright law or Designs Law, well as per the provisions of the Copyright Act,1957 and Designs Act,2000 read in light of the Judicial decisions brings us to the conclusion that it is necessary to understand the intention of the designer before deciding on the applicability of law.
If the intention of the designer is to develop ideas by producing it by an industrial process more than 50 times either on own or through a license, Designs law is the best suited to protect the rights of the creators. Otherwise Copyright law holds an edge.
- B.L.Wadehra, Law Relating to Intellectual Property,(5th edition 2017)
- Naraynan, Intellectual Property Laws,(3rd edition 2018)
- The Copyright Act,1957
- The Designs Act,2000
- Statista from https://www.statista.com/outlook/244/119/fashion/india; last seen on 22nd November 2019
- John Zarocostas, Role of IP rights in fashion Business:US prespective available at World Intellectual Property Magzine from https://www.wipo.int/wipo_magazine/en/2018/04/article_0006.html; last seen on 24th November 2019
- Microfibres Inc vs Girdhar And Co. And Ors. ,2006 (32) PTC 157 Del available at https://indiankanoon.org/doc/1210059/; last seen on 22nd November 2019
- Sunanda Bharti, Legal Protection of Fashion Design in Apparels in India: A Dilemma under the Copyright and Design Law available at journals.du.ac.in/humsoc/pdf/Bharti_Final_9.pdf; last seen on 24th November 2019
- IP and Business: Intellectual Property in Fashion Industry; WIPO Magzine available at https://www.wipo.int/wipo_magazine/en/2005/03/article_0009.html; last seen on 24th November 2019
- Rajesh Masrani vs Tahiliani Design Pvt. Ltd., FAO (OS) No.393/2008, available at https://indiankanoon.org/doc/111285241/; last seen on 24th November 2019
- Ritika Private Limited vs Biba Apparels Private Limited, CS(OS) No.182/2011 available at https://indiankanoon.org/doc/20292476/; last seen on 24th November 2019
- Pranda Jewelry Pvt. Ltd. And 2 Ors vs Aarya 24K And 5 Ors, available at https://indiankanoon.org/doc/196384280/; last seen on 24th November 2019
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