COPYRIGHT: Microfibres Inc. vs. Girdhar & Co., & Anr.

 

The Plaintiff was stated to be engaged worldwide in the business of manufacturing, marketing, selling and exporting of upholstery fabrics directly or through its subsidiaries and affiliates. It claimed that on all its upholstery fabrics n are printed unique and original artistic works conceptualized and drawn by and on behalf of the Plaintiff.  The Plaintiff claimed that its artistic works enjoyed copyright protection in India as a consequence of the Berne and the Universal Copyright Conventions (India and the U.S. being members of the Conventions).  The upholstery fabrics manufactured and sold by the Defendants were stated to bear artistic works which were identical or colorable imitations of the Plaintiff’s  artistic works and thus constituted infringement of its copyright therein. 

In defence, the Defendants submitted:

(i) the Plaintiff’s artistic works were actually designs relating to textile  products which were aesthetic, ornamental and visual in nature  and thus came within the scope of the Designs Act, 2000;

(ii) the Plaintiff had failed to register these designs under the Designs  Act, 2000 or under its predecessor Act and, therefore, could not  claim protection under the Copyright Act;

(iii) the Plaintiff was itself conscious of the fact that registration was  required under the Designs Act since it had registered some of its  upholstery designs in the U.K. under the local Designs Act;

(iv) the certificates relied upon  and issued by the United States  Copyright Office referred to the subject work as fabric designs and  not artistic works;

(v) the Indian Patent and Design Office confirmed in writing that the  subject works were register able and being registered under the

Designs Act, 2000.

In rejoinder, the Plaintiff pointed out that the definition of “design” under the  new Designs Act, 2000 specifically excluded artistic works  and thus did not apply to its artistic works within the meaning of the Copyright Act, 1957.  In  other words, the Plaintiff argued that its upholstery fabric designs could not  have been registered under the Designs Act, 2000 by virtue of the exclusion of  artistic works and thus entitled to copyright protection under the Copyright Act.

Consequently, it was stated that the defence under Section 15 of the Copyright

Act did not apply. 

On its part, the Defendants submitted:

(i) that the interpretation advanced by the Plaintiff would have the  effect of rendering the law of  designs redundant for the simple  reason that each design registered thereunder would be able to  trace its origin to a diagram, chart, drawing and thus cease to be governed by the Designs Act;

 (ii) this could not have been the legislative intent  because the law of  designs is based on the same principle as that applicable to other  monopolies and to fuel industrial innovativeness by granting limited time limit to the monopolies and allow others to make use of them after they have passed into the public domain;

(iii) the plea of the Plaintiff, if accepted, would be anti competitive and would throttle and stagnate the industry;

(iv) that the legislative intent behind the repealed Designs Act, 1911 and that under the Designs Act, 2000 remained the same and the  exclusion of “artistic works” in the new definition was only clarificatory and intended to  exclude artistic works pure and  simple such as paintings, sculptures and works of art;

(v) the statement of objects and reasons of the Designs Bill, 1999 provided that the intent was to ensure that the law does not unnecessarily extend protection beyond what is necessary to create the required incentives for design activities while removing impediments to the very use of available designs;

(vi) the proceedings from the Parliamentary debate also showed that the Act was being amended to provide help and protecting the rights of designers;

(vii) the hand book issued by the Design Office for information to the public also specifically stated;

 “What can be registered as a Design?

- To qualify for registration as a design, an article should relate to the ornamental or new shape, surface pattern, lines or colour with aesthetic look  (designs or industrial plans,  layouts or installation are not registerable).

- It should be applicable to any product reproducible by industrial means (Paintings / Sculptures and ‘works of art’ excluded).

Finding merit in the defence raised by the Defendants, the High Court of Delhi dismissed the Plaintiff’s suit for injunction, holding: “in order for the work of the Plaintiff to qualify as an “artistic works”, it must fall within the definition of sub section (c ) of Section 2 of the Copyright Act. A reading of the said provisions would show that attempt of the Plaintiff can only be to bring it within the concept of “painting.”  The comparison with the paintings of M.F. Hussain would be otiose as the work in question, in the present case, is not a piece of art in the form of a painting. There is no doubt that labour has been put and there is some innovativeness applied to put a particular configuration in place.  Such configuration is of the motifs and designs which by themselves would not be original.  The originality is being claimed on the basis of the arrangements made.  What cannot be lost sight of is the very object with which such arrangements or works had been made.  The object is to put them to industrial use.   An industrial process has to be done to apply the work or configuration to the textile.  It is not something which has to be framed and put on the wall or would have any utility by itself.  The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of art.  In fact, it has no independent existence of itself. In India, we have special legislation governing the protection of different nature of rights.  Insofar as the industrial designs are concerned, the protection is provided under the Designs Act, 2000…..An important and relevant aspect is that both under  the old Act and the new Act, fabric designs on textile goods have been classified as proper subject matter of design protection by inclusion as a  specific class in the Rules framed

under the Acts…

Furthermore, the legislative intent is also to be kept in mind which is to provide protection for a certain period of time for commercial exploitation.  Thus, nature of protection is quite different for an artistic work under the Copyright Act which is for the life time of the author / creator + 60 years.  This is not so in the case of commercial exploitation as under the Designs Act and the Patent Act, the period is much lesser.  In the present case, the configuration was made only with the object of putting it to industrial /commercial use.”

In view of the above findings, the High Court of Delhi dismissed the suit.

No Res Judicata on Adverse Finding in Previous Cases

In Midnapur Zamindari Co. Ltd. vs. Naresh Narayan Roy, it was observed as under:- "Their Lordships do not consider that this will be found an actual plea of res judicata, for the defendants, having succeeded on the other plea, had no occasion to go further as to the finding against them: but it is the finding of a court which was dealing with facts nearer to their ken than the facts are to the Board now, and it certainly creates a paramount duty on the appellants to displace the finding, a duty which they have now been able to perform."

In Devaki Amma and others v. K.P. Sreedharan, referred to the earlier decision of the same High Court in Cherian v. Kochuvareed, which observed as follows:

"If a High Court remands a case to the lower court, the matters finally disposed of by the order of remand cannot, any of them, be re-opened when the case comes back from the lower court but, if at the time of remand, no final decision is given on a point, though some observations only are made in respect of it, it is open to another Bench, a court of coordinate jurisdiction, when finally determining the case, to come to its own conclusions on it, and that even in a case decided by the first court of appeal other than a case, decided by the High Court, if a Judge on appeal decides certain points and remands the case, his decision is binding on his successor, before whom the case comes up again from the judgment after remand because such a court is a court of coordinate jurisdiction, and, therefore, he cannot go behind the earlier final decision of his predecessor before remand."

In paragraph 11, it is stated as follows:

"The test, therefore, in such a case, to ascertain if a particular finding given by the Judge on appeal is a final decision, or not is to find out, if, by the order of remand, the Judge on appeal has remanded the suit for determination of all the points at issue, or, it has determined some points in controversy, and remanded the suit for determination of the remaining points, which may include the question of maintainability of the plaintiffs' suit itself, in which case the decree of the first court has to be set aside, and, the suit remitted to the court below for a fresh decision of the case according to law. If therefore a final decision is rendered on any point in the order of remand which could have been appealed against, that decision is binding on the parties and is not open to challenge before the same court or even before a superior court in a subsequent appeal. If however no final decision is given but only some observations made on any point, Section 105(2) does not bar consideration of that point in the subsequent stages of the proceeding. The test therefore is whether there is a final decision on any particular point".

From the above survey, the following broad legal principles emerge: (a) An appeal is a creature of statute. Unless statutory conditions are fulfilled, a court of justice has no jurisdiction to entertain an appeal. (b) If the statute prohibits, the court has no jurisdiction to entertain an appeal. (c) A successful party has no right of appeal against a finding against him. Such a decision will not operate as res judicata in a subsequent suit. (d) A question decided and a finding recorded against a losing party will operate as res judicata against him if not challenged by him. (e) A remand order conclusively deciding the rights of parties is a decree within the meaning of Clause (2) of Section 2 of the Code of Civil Procedure and hence appealable. If not appealed against it will operate as res judicata. If the appellate court purports to act under Order 41, Rule 23, CPC an order of remand is appealable. (f) The grounds available to an appellant in such appeals against findings are those which would be available to him in a second appeal. (g) In appeals against orders of remand, the findings of fact other than those relating to the order of remand, cannot be pressed into service. (h) If findings on orders of remand are not appealed against, they will become final and the party aggrieved will be precluded from disputing their correctness. R. Maria Siluvai vs B. Sreekumari Amma And Three ... on 16 December, 1997

Ram Niwas And Ors. vs Shiksha Prasar Samiti Ratangarh ... on 7 November, 2000

Para 13. Having considered the contentions raised by the learned counsel for the appellants, I am of the opinion that in the first instance the finding recorded by the trial court that principle of res judicata cannot be applied to this case does not appear to be correct. It is true that ordinarily a finding recorded against a successful party who has no opportunity to challenge that finding in the appeal does not bind him and such a finding does not operate as res judicata for him in the subsequent litigation but this rule is not without exception and cannot be applied with a straight jacket mind. The principle is well established through a large number of decisions that generally an adverse finding against a defendant in a decree of dismissal of suit would not operate res judicata but it is equally well settled that where such an adverse finding form fundamental part of the decree itself, it operates as res judicata in spite of the fact that the decree is one of dismissal.

Muthiya Pillai vs Ramalingam on 17 December, 2009

Firstly, it is found that there was no finding that the suit properties were the joint family properties in A.S.No.37 of 1996. Secondly, it is found that the said appeal, in fact, ended in favour of the plaintiff herein. Even assuming for the sake of argument that there was some adverse finding as against the plaintiff, the plaintiff, who went on appeal, cannot prefer any appeal as against the mere finding in the said judgment. In view of the above facts and circumstances, I find that the principle of res judicata will not operate in this case.

Venkatachala Padoyachi and Ors. v. Velayudha Padayachi A.I.R. 1935 Mad. 701, where Venkatasubba Rao, J., sitting alone held as follows: An adverse finding against a successful party in a suit on one issue cannot operate as res judicata so as to bind him in a subsequent suit, for he could not have appealed against that finding, the decree having been in his favour.

The  Chief Court in Pateshwari Din v. Mahant Sarju Doss, AIR 1938 Oudh 18 : 1937 OWN 1127 held that where a decree in previous suit is wholly in favour of a person and gives him all the reliefs sought for by him, he has no right of appeal against the decree so as to enable him to contest any adverse finding against him in such suit. Hence, such adverse finding cannot operate as res judicata as against him in a subsequent suit".

In Chandrika Singh v. Chokhe Singh, AIR 1930 Oudh 124, the finding was against the party who was successful. He had no right of appeal. It was held that it would not operate as res judicata. Following the latter decision, in Pateshwari Din v. Mahant Sarju Doss, AIR 1938 Oudh 18 it was held that where a decree in a previous suit is wholly in favour of a person and gives him all the reliefs sought for by him, he has no right of appeal against the decree so as to enable him to contest any adverse finding against him in such suit. Such decision cannot operate as res judicata as against him in a subsequent suit".

In Banarasi Sah. v. Bhagwanlal Sah, AIR 1977 Pat 206, it was held that where a decree is absolutely in favour of a party but some issues are found against him. he has no right of appeal against the decree and plea of res Judicata cannot be founded on adverse decision against him because he had no occasion to go in appeal.

Zamlndart Company Ltd, v. Naresh Ranjan Roy, AIR 1922 PC 241 ; Sri Pal v. Swami Nath, AIR 1968 All 282 ; Smt. Tarabai Mohata v. Union of India, AIR 1971 Col 225 ; Mathura Bai v. Ram Krishna Bhaskar Barve, AIR 1961 Bom 97 ; Sukhani v. Sukhbasi, AIR 1967 All 423, it was reiterated that when a party succeeds in a suit or appeal, an adverse finding against him cannot be the basis of a plea of res Judicata, for having succeeded he had no occasion to prefer an appeal. In Commissioner for the Port of Calcutta v. Bhairadinram Durga Prasad, AIR 1961 Col 39 (FB), it was held that such a party has no right of appeal when a suit is dismissed on a finding that the plaintiff had no right to sue, an adverse finding against the defendant Is not res Judicata, as was held in Markanda Mohapatra v. Varada Kameshwar Rao Naidu. AIR 1949 Pat 197.

Overlaping of Section 15 of Copyright Act and Designs Act

CASES

1.    William Grant & Sons Ltd. vs Mcdowell & Compay Ltd. on 27 May, 1994. 
   
     It follows further that in view of the fact that the plaintiff's label is a mark within the meaning of the Trade & Merchandise Marks Act, Section 15 of the Copyright Act can have no application to the label in question, for the reasons that the same is not an article. The label is permanently affixed on the bottle. It is not sold as an article. Nor is it intended to be sold as anarticle. The sole purpose of the plaintiff's label is to show that the Glenfiddich whisky which is a Single Malt Whisky, which is "Special Old Reserve", is manufactured by William Grant & Sons Ltd., the plaintiff. In this view of the matter, it cannot be said that because of section 5 of the Copyright Act, the copyright of the plaintiff in the label would cease to be, once more than 50 impressions of the label are made. 

2.    Fabric designs covered under designs Act (section 15(2) will apply)

As far as the defendants' arguments on the question of the copyright protection in this case, not being available due to provisions of Section 15 of the Act, and provisions of the Designs Act are concerned, it would be appropriate to set out the observations in Microfibres (supra): ‚In India, we have special legislations governing the protection of different nature of rights. Insofar as the industrial designs are concerned, the protection is provided under the Designs Act, 2000, which came into force from May, 2001 and repealed the earlier Designs Act, 1911. An important and relevant aspect is that both under the old Act and the new Act, fabric designs on textile goods have been classified as proper subject matter of IA NO.2352/2008 IN CS (OS) 344/2008 Page 19 design protection by inclusion as a specific class in the Rules framed under the Acts. In the Designs Act of 1911, Classes 13 and 14 of the Fourth Schedule of the Rules dealt with printed or woven designs of textile goods other than checks and stripes and checks and stripes respectively. Such protection is now provided under Class 5 of the new Design Rules of 2001.

3.       However, there can be no quarrel with the plea of Shri Ramachandran that the operation of Section 15(2) of the Copyright Act does not exclude from the ambit of Copyright protection either the original "artistic work" upon which the design is based or the design which by itself is an artistic work. It cannot be disputed that the original paintings/artistic works which may be used to industrially produce the designed article would continue to fall within the meaning of the artistic work defined under Section 2(c).

This clearly shows that the legislature intended that even if the artistic work such as a painting has been used as the basis for designing an industrially produced object for commerce, such as the furnishing in the present case, nevertheless the original painting would indeed enjoy full copyright protection, while the result of the industrial application of such painting, namely, the design used in the industrial production of the ultimate product shall enjoy lesser period of protection as stipulated under the Designs Act provided it is registered as a design under the Designs Act. Thus, we are of the view that an original artistic work initially acquires protection under the Copyright Act as an 'artistic work' or else the protection under the Designs Act qua the product created from the artistic work when industrially applied."Servewell Products Pvt Ltd & Anr vs Dolphin on 9 April, 2010

4.       Rajesh Masrani vs Tahiliani Design Pvt. Ltd on 28 November, 2008,

It is alleged that the drawings which are made in the course of developing the garments and accessories by the plaintiff are artistic works under Section 2(c)(i) of the Copyright Act, 1957. The patterns printed or embroidered on the fabric are also artistic works in their own right and are developed by the plaintiff. The garments or accessories themselves are works of artistic craftsmanship under Section 2(c)(iii) of the Act, while the patterns printed or embroidered on the fabric are also artistic works in++ their own right. The Plaintiff does its creative work on computers and claims to be the author under Section 2(d) (vi) of the Copyright Act. The Plaintiff claims to be the first owner of Copyright in all the products of the company under Section 17(c) of the Copyright Act.

It seems to me, going backwards in the order of the claims, that the Plaintiffs must succeed on the ground of infringement of copyright. The Plaintiffs? design was an artistic work within the meaning of the Copyright Act and it has been copied, there is no doubt about it at all. The small differences that have been introduced on behalf of the Defendants do not make any substantial difference: substantially, in the words of Sec. 49 of the Copyright Act, 1956, the Plaintiffs? work has been reproduced on behalf of the Defendants and, therefore, it seems to be quite plain that there has been an infringement of the Plaintiffs? copyright in their picture, which is quite an artistic picture within its limitations, and the Plaintiffs are entitled to succeed on that ground.

26. We are, therefore, of the opinion that the plaintiffs? work is entitled for protection under Section 2(c) of the copyright Act and is an original artistic work. Since the work is an ?artistic work? which is not covered under Section 2(d) of the Designs Act,2000, it is not capable of being registered under the Designs Act and the provisions of Section 15(2) is not applicable.

5. A. F. Products v. A. B. Works, . It was held in this case that a design is

necessarily part and parcel of the article manufactured while a trade mark is necessarily not so. Thus the label to be put on a carton to be used as a container for the goods can never amount to design within the meaning of Section 2(5) of the Designs Act. Section 15(2) of the Copyright Act, 1957 has no application to this case. No such contention is raised in any of the affidavits filed on behalf of the defendant.

The defence raised by the defendants under Section 15 of the Copyright Act has certainly to be considered at the time of trial. That cannot be rejected off-hand as a frivolous ground. Learned Counsel for the appellant attempted to argue that Section 15 of the Copyright Act would apply only to designs on the article itself and not to designs on the package. That is a question of law turning on the interpretation of Section 15 of the Copy Right Act and the provisions of the Designs Act. That is not a matter which can be decided at the interlocutory stage. In fact, we directed learned Counsel for the appellant not to argue the question raised by the defendants under Section 15 of the Copy Right Act.

7. Warner Brothers v. Roadrunner 1988 FSR 292 however, if the intended industrial use of the work was contemporaneous with its coming into existence, Section 15 of the Copyright Act would apply. I may hasten to clarify that it is not suggested that if any design is registered, copyright under no circumstance exist in the drawings. Section 15 lays down that on registration of a design under the Designs Act, the copyright shall not subsist in that design and not in the drawings. Therefore, it is possible that when the moulded plastic article of novel shape is made from a working drawing, as in the instant case, the drawing may qualify as an original work entitled to copyright protection and, at the same time, a registered design for the shape of the article would be protected under the Designs Act. If an unauthorized copy is made of the article, it may constitute an indirect copy of the drawing and therefore may infringe the copyright.

8. So labels cannot be registered as Designs under Designs Act 2000.

There is no need to stick or affix the design to the article. Applying a design to produce an article or a machine means using the design as a model or pattern to be multiplied by an industrial process. A design applicable to a thing for its shape can only be applied to the thing by making it in that shape or pattern. When a design is applied to an article it means that the characteristic features e.g. shape, configuration, lines, etc. are reproduced in conformity with the model design. It is a naive argument submitted by the respondent that application means sticking the paper on which the design is printed. It has no logic and if accepted would make the whole provision namely Section 15(2) nugatory and worthless. Such an interpretation being contrary to all canons of interpretation cannot be adopted. Accurate Transheat Pvt. Ltd. vs Devendra Somabhai Naik on 4 June, 2004