Image source: https://www.managingip.com/article/b1kblz0bnqdw43/india-special-bench-allows-combined-design-infringement-and-passing-off-action

This article has been written by Gunjeet Singh Bagga pursuing the Certificate Course in Advanced Civil Litigation: Practice, Procedure and Drafting from LawSikho. This article has been edited by Zigishu Singh (Associate, Lawsikho) and  Smriti Katiyar (Associate, Lawsikho).

Introduction

This judgment was pronounced by a Division Bench of Hon’ble Delhi High Court comprising Hon’ble Justices AK Sikri and Manmohan Singh. The equivalent citations for the decision are 2008 SCC OnLine Del 1283 : (2009) 107 DRJ 484 (DB) : AIR 2009 Del 44 : (2009) 39 PTC 21.

Facts of the case

This judgment arises out of the appeal by the appellant/ defendant against a temporary injunction application allowed in favour of the plaintiff/ respondent restraining the present appellant from distribution, sale etc. of the plaintiff’s fabric print designs and the dismissal of the defendant/ appellant’s application for vacation of the order. The questions for the consideration of court were whether the plaintiff’s garments are designs or copyright; if they are copyright, whether they are compulsorily registrable to claim protection under the Copyright Act, 1957. The plaintiff is a multi-national fabric company having over 100 outlets and the plaintiff has also won several awards throughout the world for their fabric designs including the Milan Fashion Week (Sept. 2003), the 2004 Moet & Chandon Fashion Tribute 2004 etc.

The appellant/defendant contended that plaintiff’s textile designs are not artistic works under the Copyright Act, 1957; rather they are designs under the Designs Act, 2000 and as these designs are not registered, the plaintiff cannot claim protection under the said act. Further, assuming for the sake of argument, that these designs are copyright, even in that case  they are unenforceable because they are unregistered. Per Contra, the plaintiff/respondent contended that the drawings made, or patterns printed or embodied are artistic works as distinguished from designs and the defendant has indulged in substantial imitation of the designs. The plaintiff stated in para 3 of his plaint that drawings are artistic works under section 2(c)(i) of the Copyright Act, 1957 and the garments themselves amount to artistic craftsmanship u/s 2(c)(iii) of the Act. These designs are curated by Mr. Tarun Tahiliani assisted by his team of designers. The plaintiff in para 13 of the plaint, demonstrated through a table the marked similarities in plaintiff’s and defendant’s design that was reproduced by the High Court in the judgment:

Plaintiff’s work titled KSJ from the Autumn Winter 2006-07 collection (Filed in the present proceedings under as T-1)Defendant’s work (Filed in the present proceedings under as M-1)
An Indo-western print having a prominent use of the colours pinkish-orange and yellow.An Indo-western print characterized by the prominent use of the colours pinkish-orange and yellow with some visible colour smudging.
The central motif is a glittering diamond/ stone necklace with a large fiery-red ruby pendant in an asymmetrical shape in the centre and flanked by two smaller rubies on either side. The three rubies give off a unique impression of flowing into each other.The central motif is a glittering diamond necklace with a large fiery-red ruby pendant in an asymmetrical shape in the centre and flanked by two smaller rubies on either side. The three rubies give off a unique impression of flowing into each other.
Another string of diamond/ stones follows the one on top, encircling a Mughal miniature painting in an oval, stone-studded frame, followed by a central pear shaped motif encircling a kundan center piece and culminating in a ruby and stone teardrop.Another string of diamond/ stones follows the one on top, encircling a Mughal Miniature painting in an oval, stone-studded frame, followed by a central pear shaped motif encircling a kundan centerpiece and culminating in a ruby and stone teardrop.
The second string of stones forms the line of demarcation for the two colours with the top one quarter comprising a self embossed yellow and the bottom three-quarters comprising symmetrical vertical columns of an overall orangish-pink hue.The second string of stones forms the line of demarcation for the two colours with the top one  quarter comprising a self embossed yellow and the bottom three-quarters comprising symmetrical vertical columns of an overall orangish-pink hue.
The columns in the bottom three quarters contain intricate patterns of interwoven Indian floral motifs that are repeated in a four-column symmetry.The columns in the bottom three quarters contain intricate patterns of interwoven Indian floral motifs that are repeated in a four-column symmetry.
Overall impression – A uniquely different image with a number of intricately woven elements fused together with a creative flair and resulting in an overall print that is part-asymmetrical and fanciful and part-systematic and orderly; but wholly new.Overall impression – An identical, poorly disguised and poorly executed copy with no attempt at originality; with the sole intent of reaping the fruits of the Plaintiff’s creative labour.

The plaintiff averred in para 5 of the plaint in relation to the process from creation to execution of an artwork and averred that the pattern is designed by Mr. Tarun Tahiliani along with his team to make it print-worthy. Thereafter, this “print-worthy design” is preliminarily printed. Further, these preliminary prints are evaluated as to whether they are up to the mark and the designs are accordingly amended to suit the requirements of a marketable garment, till a satisfactory outcome is reproduced. Then samples are dispatched to the buyers and orders are taken accordingly. After the orders are received, they are sent to the Production Department where they are finally printed and sent to the buyers.

Laws involved

Section 2(c) of the Copyright Act, 1957 provides that artistic works shall include, inter alia, a painting, an engraving, a photograph, an architectural work or any other work of artistic craftsmanship.

Observations of the court

The court observed that the plaintiff has made a specific averment in the plaint that he has produced artistic works in the form of designs on garments to which there is no specific denial in the Written Statement except in Para 3 where it is urged that the work in question is not covered under u/s 2(c)(iii) of the Copyright Act.

The High Court in rejected the appellant’s argument that the respondent’s copyright could not be enforced because they are unregistered. The HC relied upon a Bombay HC judgment in Burroughs Wellcome vs Unisole Pvt. Ltd. (1999) 19 PTC 188 wherein the Court observed that registration of copyright is not compulsory to claim protection under the 1957 Act. Section 44 of the 1957 Act read with Section 48 of the Registration Act, 1908 makes registration optional and provides for a rebuttable presumption of the proof of the contents of the copyrighted work. The Bombay HC observed that Copyright is an incorporeal right which lies in the expression of an idea which, when once written down, becomes the subject matter of copyright. Thus, copyright as a negative right of preventing copying of physical material in the field of art, literature etc is granted for a specified term of 60 years after which then copyrightable subject matter falls in public domain. After the work falls in public domain, it is perfectly legal for the public to use that work without any kind of permission from the owner.

The Court observed that registration of a copyright is not a sine qua non for maintaining a suit for damages for copyright infringement. It is pertinent to mention here that the Honorable Supreme Court in AIR 1972 SC 1359 – Parle Products (P) Ltd vs J. P. & Co. Mysore has held, although in relation to a trademark, that to ascertain whether a mark is deceptively similar to another the broad and essential features of the two are to be considered and it is to be ascertained whether one can be mistaken for the other observing very pertinently that “After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes”.

A perusal of the averments in the plaint would make it very clear that the plaintiff’s designs are undoubtedly artistic works and they fulfil the requirement that a copyrightable subject matter must be original to claim protection under the 1957 Act and they also fulfil the requirement that a copyrightable subject matter must involve some creativity, labour, capital, skill etc as enunciated in the “Sweat of the Brow Doctrine”. The plaintiff’s work is at least creative and different if not novel and the defendant has indulged insubstantial reproduction of the plaintiff’s work which ought not to be permitted. The appellant tried to buttress his contention by relying upon a 2006 Delhi High Court judgment but the court distinguished that judgment from the present case and reasoned that there are significant differences in facts of both the cases.

Conclusion

Thus, the High Court dismissed the present appeal while holding that the case at hand is a flagrant example of the piracy of copyright and observing this is not the case where the first appellate court will interfere with the findings of the learned trial court. The court further observed that the facts of the present suit are only tentative observations and are not an expression as regards the issues involved in suit and shall not have any bearing on the merits of the suit and the parties’ submission.


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