No Copyright Protection For Work Registrable Under The Designs Act

In Holland Company LP & Anr. vs. S.P. Industries, order dated July 27, 2017, the Delhi High Court, held that no copyright protection is available for work that is registerable under the Designs Act.

The plaintiff, Holland Company LP claimed to have a copyright over the industrial drawings of the ATL (a system for securing cargo containers to a support) and spare parts thereto.

The defendant, S.P. Industries outbid the Plaintiff in a tender floated by the Eastern Railway, Sealdah Division for carrying out repairs, replacement of spare parts and servicing of the defective parts of the ATL devices. Hence, the Plaintiffs instituted the suit for permanent injunction before the Delhi High Court for restraining them from reproducing the ATL spare parts in 3-D form, from the 2-D artistic work of Holland Company LP in the form of the industrial drawings.

The Plaintiffs claimed that a combined reading of Section 2(c), Section 13(1)(a) and Section 14(c)(i)(B) of the Copyright Act, 1957, shows that a copyright exists in engineering drawings/technical drawings under the category of Artistic Works, which includes the exclusive right to depict the drawings in three dimensions. Further, the Designs Act, 2000 is not applicable on the industrial/engineering drawings and technical drawings, as the present devices are functional in nature.

Whereas the defendant argued that industrial/technical drawings are not an artistic work and, therefore, no copyright exists and the same are capable of being registered under the Designs Act, 2000.  Further, according to Section 15 of Copyright Act, 1957, no copyright exists in any drawing or design once the production has been done more than 50 times by an industrial process using such drawing or design. Moreover, the Plaintiffs cannot have exclusive right over said drawings as said drawings have been published and readily available.

The Court held as follows:

  • A conjoint reading of Section 2(d) of Designs Act, 2000, Section 14(c) and 15(2) of the Copyright Act, 1957, makes it amply clear that where a design of an article is prepared for the industrial production of an article, it is a design and registrable under Designs Act and under Section 14(c), the author of such design can claim copyright, however, since such a design is registrable under the Designs Act, and if such design has been used for production of articles by an industrial process for more than 50 times by the owner of the copyright, or, by any other person with his permission, then such person ceases to have copyright in such design.
  • ……Plaintiffs had prepared the engineering drawings for the purpose of production of ATL devices. The industrial drawings are, therefore, or a design of the ATL device which the Plaintiffs had supplied to the Railways under a contract given to them by the Railways. The drawings of the ATL devices of the Plaintiffs, therefore, are registrable under the Designs Act. The said drawings have not been registered under the Designs Act. The Plaintiffs have also not disputed the fact that while using these engineering drawings, it had used for more than 50 ATL devices by an industrial process and, therefore, it is clear that it has used these engineering drawings for more than 50 times in an industrial process. By virtue of Section 15(2) of Copyright Act, therefore, even if assuming the Plaintiffs had a copyright in these engineering drawings, it ceases to have the same.
  • “…The Plaintiffs have not made the Railways a party to the suit although in the facts and circumstances of the case it is a necessary party because prima facie it is the Railways who have used the engineering drawing of the ATL devices for inviting tenders…

Held:

For being entitled to interim injunction under Order 39 Rule 1 and 2, the Plaintiff is required to show a strong prima facie case which means the Plaintiff is required to show that it has a right which needs protection. The Plaintiffs have failed to show any prima facie case in their favour. In the light of the same, the application of the Plaintiffs under Order 39 Rules 1 and 2 CPC stands dismissed.