This article has been written by Niharika Tiwari pursuing the Diploma IPR, Media and Entertainment Laws from LawSikho.

Introduction

A form of expression of art that we encounter in our daily lives is fashion.  Textiles from India have been appreciated globally since time immemorial. At present, the Indian textile industry generates revenue of around US $120 billion which is expected to reach US $ 230 billion by the end of 2021. It contributes approximately 2 percent to the country’s GDP and 14 percent to the overall Index of Industrial Production (IIP). From the year 2000 to 2020, the industry attracted FDI worth US $3.68 billion. Whether it is an admirable piece of work on attire or a beautiful piece of jewellery, fashion takes a lot of creative energy to result in a piece of art. We have all  heard about artistic work of famous designers being copied with a few changes here and there. These are called knock-offs of the original work. It happens quite frequently, especially in this era of technology and digitalization. Also, there is a  lack of awareness of intellectual property rights (IPR) amongst designers, which leads to monetary loss and even loss of reputation of the original creators. This article would be focussing on some relevant legal provisions surrounding the artistic works of fashion designs and the flaws within them.

Relevant provisions under the Copyrights Act, 1957 and the Design Act, 2000 protecting the artistic works of fashion designers:

Typically, artistic work is protected under the Indian Copyrights Act, 1957; designs that are applied to clothes can be copyrighted under the Designs Act, 2000 and Designs Rules, 2001. A design must be registered under a specific class of articles under the third schedule of the design rules to be entitled protection under the act.

• Articles of clothing and haberdashery fall under class 2 and articles of adornment (for example jewellery) fall under class 11 respectively under Schedule three of the Designs Rules, 2001.
• Section 2(d) of the Designs Act, 2000 defines designs to mean ‘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 appeals to and is judged solely by the eye.
• Under the provision of Section 11 of the Designs Act, 2000, a registered design can be copyrighted for a period of 10 years from the date of registration which can be extended up to 5 years.
• Section 22 contains the provision for the prohibition of piracy of a registered design. Any “fraudulent or obvious imitation” of a particular design is unlawful in respect of the class of articles for which it was registered. Retailers consciously selling pirated designs thus facilitating the act can also be held liable for the piracy of the designs.
• As per Section 15(1) of the Copyrights Act, once registered under the Design Act, a design is then not entitled to protection under the Copyrights Act. This means that artistic works cannot have dual protection under both the Acts. But if a particular design has not been registered under the Design Act, it will be protected under Section 15(2) of the Copyrights Act. However, if the design remains unregistered, the protection under this provision will cease to apply after the design has been reproduced on more than 50 articles. This kind of protection for unregistered designs or any similar provision is not provided under the Designs Act.
• The designer enjoys protection over his work is it a sketch or a garment or both. No one can reproduce the same without his permission and such an act despite the copyright would amount to infringement. When visiting a designer fashion store, you must have encountered the employees prohibiting you from taking any pictures of the dresses. Well, that is because the designer has the exclusive right to store his work in any medium and this is the exclusive right of the creator.
• Once the designer sells his work, he will not have any control over its movement. So let’s say Manish Mehrotra sells a gown to Prachi Desai and she later decides to sell it or dispose of it for a higher price or for free, he would not be able to prohibit the same. But this act of disposal on behalf of Prachi Desai has to be within the bounds of respectability and should not be prejudicial to the reputation and honour of the designer. These moral rights are vested in the creator even after his work has been licensed or assigned. However, if Prachi Desai decides to add some element to the gown then it may fall under the Doctrine of Fair Dealing for purposes of personal use thus avoiding violation of the exclusive right of the creator. 
• As per Section 22 of the Copyrights Act, the copyright of the artistic work shall subsist throughout the lifetime of the owner and until sixty years after the calendar year of the death of the owner. Section 51 lays down conditions for the infringement of copyrights.

These were some relevant provisions from both the acts. Now let us look at the preferable protection sought by the designers.

Copyrights Act or Designs Act: preference

The most basic dilemma encountered by fashion designers while seeking protection for their artistic works is the applicability of these two acts namely, the Copyrights Act and Designs Act. Under the Copyrights Act, a design qualifies for the protection of copyright if:

1. Is new and Original;
2. Work is published within the territorial limits of India, and;
3. In the case of works first published outside India, the author at the time of publication must be domiciled in India.

Under the designs act, a design is an entitled registration if:

1. Design is new and original.
2. It should not be previously published.
3. Must be capable of being distinguished from known designs or combinations.
4. Must not contain scandalous or obscene matter.

Case laws

• Microfibers v. Girdhar:

Now the question remains; which Act to go for? In the case of Microfibers v. Girdhar, the Hon’ble Delhi High court dealt with this dilemma for the first time and drew a clear distinction between artistic works that are entitled to copyright protection and those that involve industrial application. Both the parties, in this case, were involved in the business of upholstery fabric. The designs of Girdhar were a reproduction of that of the Microfibers but as the Microfibers had reproduced the designs on more than 50 articles by an industrial process, the copyright protection ceased to exist as per Section 15(2) of the Copyrights Act. Microfibers had not sought the protection of their design under the Designs Act, thus it became unprotected. The Court held that:

• Only those artistic works that have some visual appeal are entitled to registration under the Designs Act.
• The design should be original to qualify as an artistic work. Thus the scope and relevance of Section 2(c) and Section 15(2) of the Copyrights Act are very different.
• An original artistic work applied to an article through an industrial process enjoys copyright protection until the production of 50 industrial units. After that, if it’s not protected under the Designs Act, it becomes a free design, unprotected under either Act. However, this applies to the derivative of the original artistic work i.e. the material form of the original work which has some modifications put to reproduce it on the final output. Thus the original artistic work will still enjoy full protection under Section 2(c) of the Copyrights Act.
• Ritika Private Ltd. v. Biba Apparels Private Ltd: 

Under the Copyrights Act, the duration of protection of an original artistic works remains much longer (lifetime and 60 years after the year of death) than that of the Designs Act (10 years which can be renewed for 5 years) but once the artistic work in materialized in the form of any article (dresses, jewellery, etc.) and the number of times this article which is reproduced exceeds 50 and the artistic work was not protected under the Designs Act, the copyright holder will lose ownership of the copyright. 

This was also the subject matter of this case. Both Plaintiff and Defendant were involved in creating fusion wear fashion. The plaintiff sought an injunction against the defendant to stop reproducing the artistic work on their garments, of which the plaintiff claimed to be the first owner of the copyright. But the court held that since the design had been reproduced by the plaintiff more than 50 times and the same was not protected under the Designs Act, the same is not entitled to copyright protection anymore as per Section 15(2). 

• Rajesh Masrani v. Tahiliani Design Pvt. Ltd:

In this case, as the reproduction of the artistic works on garments and accessories of Mr. Tarun Tahiliani, did not cross 50 times, the protection of the copyright remained in favour of Mr. Tarun Tahiliani and was still protected under Section 2(c)(i) of the Copyrights Act.

Obstacles faced by designers

There are two categorizations of a design which are the subject matter of protection. The drawing applied on any garment and the shape or design of cloth may or may not bear any drawing. An example of a drawing can be a t-shirt bearing the letter A of Avengers movie which is written in a very unique and distinct way using a very specific white and red colour combination and designed by writing the names of all characters of the Avengers franchise together in that letter A. In the case of a shape or design, it has to be a very specific and unique design, pattern, or configuration of the clothing itself. The shape of a poncho top itself is unique and thus can be protected under the Designs Act. Other features could be the unique style and fabric of the garment. 

This kind of protection is often the subject of IP disputes for designers as it is the shape itself that has been protected and anybody who tries to copy the shape, maybe in some other colour, is still liable for design piracy. Even for the judges, it becomes very difficult to demarcate a line between inspiration and design piracy. The new trends most of the time are an improvisation of the existing fashion. For example, the classic white Bengali sarees with a red border remain in the culture.  However, designers have drawn inspiration and created designer versions of it. The question that arises here is that whether drawing inspiration and adding different prints or just changing the shape of the blouse amounts to design piracy of the original design protected under the Designs Act? The judiciary still needs to deliberate on this issue and in the absence of a judgement in this regard, it can be said that only obvious imitations with a few negligible changes in maybe colour or the print would amount to design piracy.

Critical comments

Even with the growing awareness surrounding the rights of fashion designers, the law relating to the protection of these rights in India remains ambiguous. Different IPRs have different purposes in the protection of these rights. The lack of awareness subsists in the consumers as well. The availability of these knockoffs easily through online trade channels has increased the level of design piracy. You must have heard about people demanding to wear Anushka Sharma’s or Priyanka Chopra’s bridal lehenga designed by Sabyasachi for their weddings which was easily available in places like Chandani Chowk in Delhi at much cheaper rates. These are the replicas of the original ones. Adding to that, the plagiarism is not even hidden but on the face of it, blatant.

Under the Copyrights Act, there is wider protection of unregistered designs. However, in case of a copyright, registration is not necessary and there is no precedent to seek relief for infringement of copyrights. However, on a commercial basis, the copyright will cease to exist after 50 reproductions of the artistic work and would then be open to being exploited by others. But there is very limited protection for unregistered designs under the Designs Act as the trends in the fashion industry tend to fluctuate very quickly. The time to be invested in getting registration under the designs act on most occasions is more than the life of the trend and by the time it gets registered, it expires and is thus termed as ‘outdated’. That is why designers hesitate to file a design application. 

It seems like the hindrances in the development of legal principles are not just from the creator’s side but from the legal industry too. There is a need to make the creators aware of the intellectual property rights of their work to help them make the right choice while seeking protection under the existing laws and at the same time the judiciary needs to intervene and expand the scope of protection by evolving the existing laws better suited to protect the work of the creators. Programs exclusively should be made to make fashion lawyers more aware of their duties and bring consumer sensitization of their choices which would help them to make their clients enlightened about the legal issues surrounding the fashion industry including merchandising, distribution, franchising agreement, labour laws, etc. Even law school curriculums should be designed to cater to the needs of the fashion industry.

Conclusion

Recent trends do suggest that fashion designers are becoming more and more aware of their rights. Sabyasachi has more than 700 of his designs copyrighted. In 2017, Rohit Bal became the first designer in India to get his entire collection copyrighted and other well-known designers like Anju Modi and Anita Dongre followed in his footsteps. Designers invest a lot of time and resources to come up with a distinctive piece of artistic work and there is a need for a comprehensive one-of-a-kind law exclusively dealing with fashion designers’ issues regarding design piracy and infringement of their IPs.

References

1. https://www.inttladvocare.com/bar_act/The_Designs_Rules_2001.pdf. 
2. https://www.fdi.finance/sectors/textiles-and-garments. 
3. https://www.livemint.com/.

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