OK PLAY INDIA LIMITED v. MAYANK AGGARWAL & ORS

(C) depiction in two-dimensions of a three-dimensional work;

(ii) to communicate the work to the public;

(iii) to issue copies of the work to the public not being copies already in circulation;

(iv) to include the work in any cinematograph film;

(v) to make any adaptation of the work;

(vi) to do in relation to an adaptation of the work any of the acts specified in relation to the work in sub-clauses (i) to (iv); (d) …… (e) …… Explanation. – For the purposes of this section, a copy which has been sold once shall be deemed to be a copy already in circulation.”

(ii) Section 15 of the Copyright Act.

(iii) Sections 2(c) and (d), 6(1) and 11 of the Designs Act ―2. Definitions. – In this Act, unless there is anything repugnant in the subject or context, - (c) “copyright” means the exclusive right to apply a design to any article in any class in which the design is registered; (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 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

6. Registration to be in respect of particular article. - (1) A design may be registered in respect of any or all of the articles comprised in a prescribed class of articles.

11. Copyright on registration. - (1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration. (2) If, before the expiration of the said ten years, application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the period of copyright for a second period of five years from the expiration of the original period of ten years.”

11. It was enquired from the counsel for the plaintiff whether not the copyright under Section 14(c) supra, even if any of the plaintiff in the drawing as re-produced above, was a copyright in a design within the meaning of Section 2(d) and being capable of registration under the Designs Act and whether not, having not been so registered, and the plaintiff having applied the design to manufacture by industrial process of the toy concerned more than 50 times, the said copyright in design ceased under Section 15(2) supra.

12. The contention of the counsel for the plaintiff is and as indeed cannot be anything else that the drawing aforesaid in which the plaintiff claims a copyright does not constitute a design within the meaning of Section 2(d) supra and was thus not capable of being registered under the Designs Act.

13. On enquiry whether not the said question had been the subject matter of any earlier judgment, the counsel for the plaintiff drew attention to the judgment of the Division Bench of this Court in Microfibres Inc. Vs. Girdhar & Co. 2009 (6) R.A.J. 106 (Del). However it was found that the said judgment besides in the appeal preferred by Microfibres Inc. was also in FAO(OS) No.447/2008 preferred by Mattel Inc., also a manufacturer of toys, against Jayant Aggarwalla and further finding the judgment of the Division Bench copy of which was handed over to be pertaining more to the appeal preferred by Microfibres Inc., and having deferred the hearing of appeal by Mattel Inc., the judgment of the Single Judge of this Court in Mattel, Inc. Vs. Jayant Agarwalla and the judgment of the Division Bench in the said appeal being FAO(OS) No.447/2008 were enquired of. The counsel for the defendants no.1 to 7 handed over a copy of the judgment of the Single Judge in Mattel, Inc. Vs. Jayant Agarwalla 2008 (38) PTC 416 (Del.) and during the course of hearing the counsel for the plaintiff also procured from the internet the copy of the order dated 23rd April, 2012 of the Division Bench disposing of FAO(OS) No.447/2008 preferred by Mattel, Inc.

14. Mattel, Inc., also claiming to be a leading manufacturer of toys, games and consumer products had filed the suit aforesaid in respect of its board game marketed and popularized by the name SCRABBLE and to restrain the defendants from adopting deceptively and confusingly similar online version of the plaintiff‘s games. It was the contention of the defendants therein that the question of the copyright protection being available to Mattel, Inc. did not arise due to Section 15 of the Copyright Act and the provisions of the Designs Act. Dismissing the application of Mattel, Inc. for interim injunction it was reasoned:- (a) relying on the judgment of the Single Judge in Microfibres Inc. Vs. Girdhar & Co. 2006 (32) PTC 157 (Del) that in India we have legislations governing the protection of different nature of rights; (b) insofar as the industrial designs are concerned, the protection is provided under the Designs Act;

(c) the legislative intent is also to be kept in mind which is to provide protection for a certain period of time for commercial exploitation;

(d) thus, nature of protection is quite different for an artistic work under the Copyright Act which is for the lifetime of the author / creator + 60 years; (e) this is not so in the case of commercial exploitation as under the Designs Act and the Patent Act the period is much lesser; (f) if the configuration is made only with the object of putting it to industrial / commercial use then it has to be dealt with under the Designs Act; (g) the exclusion of an 'artistic work' as defined in Section 2(c) of the Copyright Act from the definition of 'design' under Section 2(d) of the Designs Act is only meant to exclude the nature of artistic works like paintings, sculptors and other works of art which are sought to be specifically excluded from the Designs Act; (h) the concept behind excluding certain designs from protection under the Copyright Act is to avoid any hindrance being caused to the manufacturer in sale of industrial articles;

(i) the intention of the Legislature is to protect any artistic work which has to be commercially exploited by the owner of the copyright by not providing the protection under the Copyright Act, but under the Designs Act; (j) that in the context of the Indian Law, it is the Designs Act which would give protection to the plaintiff and not the Copyright Act; (k) even where there is application of mind and skill and the defendant has copied the same, that would still not amount to the work in question being labeled as 'artistic work' within the definition of Section 2(c) of the Copyright Act and the protection under the Copyright Act would not be available;

(l) the object of Copyright law is to protect the original literary, dramatic, musical and artistic works, cinematograph films, sound recordings, broadcasting rights and/or performers' rights;

(m) the object of Design Law on the other hand is protection of the features of shape, configuration, pattern, ornamentation, or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by industrial process or means; (n) the Copyright Act precludes the subsistence of Copyright in the Design which is registered or is capable of being registered as a design; (o) Section 47 (2) (c) of the Designs Act enables the Central Government to frame rules inter alia to facilitate registration thereunder; pursuant thereto the Designs Rules, 2001 were framed and which classify the various articles and one of the entries wherein deals with GAMES AND TOYS and another with OTHER AMUSEMENT AND ENTERTAINMENT ARTICLES - these prima facie cover all games and amusement articles as well as toys; (p) designs in respect of various articles of games and other amusement articles including game boards therefore can prima facie be registered; and, (q) thus the defendants' objection that copyright could not be claimed was prima facie merited and plaintiffs‘ copyright claim could not be granted at the interim stage.

15. The Division Bench in appeal preferred thereagainst and which was clubbed with the appeal preferred by Microfibres Inc. while dismissing the appeal of Microfibres Inc. ordered separate listing of the appeal preferred by Mattel, Inc.. However it appears that the appeal preferred by Mattel, Inc. was adjourned from time to time and is found to have been disposed of vide order dated 23rd April, 2012 finding that the suit was at an advance stage and merely with the clarification that the observations made while dismissing the application for interim relief would not influence the final decision. However I further find through the website of this Court that the said suit has not been disposed of as yet.

16. The fact however remains that though the Division Bench did not render any findings on merits but also did not set aside the judgment of the learned Single Judge which holds good till now. Going by the rule of precedents, the plaintiff herein also cannot be granted any interim relief.

17. Interestingly, the judgment of the Division Bench in Microfibres Inc. is also in FAO(OS) No.326/2007 preferred by Dart Industries Inc. against the order of the Single Judge refusing to grant interim injunction against infringement of its Tupperware Products. Just like FAO(OS) No.447/2008 preferred by Mattel Inc., FAO(OS) No.326/2007 preferred by Dart Industries Inc. was also ordered to be listed separately and judgment wherein is found to have been reserved by a Division Bench comprising of the same learned Judge who had sitting singly pronounced the judgment in Mattel Inc.

18. Be that as it may, the counsel for the plaintiff argued (i) Section 15 being an exception to Section 14 of the Copyright Act has to be construed strictly; (ii) that the Division Bench in Microfibres Inc. in para 20 has held that the definition in Section 2(c) of the Copyright Act of ―artistic work‖ has a very wide connotation and includes a work of architecture or an abstract work such as a few lines or curves arbitrarily drawn; (iii) that the Division Bench in Microfibres Inc. in para 23 has held that there is a clear distinction between an original artistic work and design derived from it for industrial application on an article and that the original artistic work is something different from the design; (iv) that the Division Bench in Microfibres Inc. in para 46(f.) has held that the original artistic work 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) of the Copyright Act and would be entitled to the full period of copyright protection as evident from the definition of design under Section 2(d) of the Designs Act; (v) that a Single Judge of the High Court of Bombay also in Photoquip India Limited Vs. Delhi Photo Store 2014 (60) PTC 563 held that that drawings of the plaintiff therein being skilled diagrams that did not reflect any finished products, let alone a finished product of any 'visual' or aesthetic appeal and serving only a functional purpose were not a design and that the plaintiff herein also is claiming copyright only in the drawings and not in the articles and is thus entitled to interim injunction; (vi) that the defendants in their written statement have admitted the e-mail of the defendant Mr. Darshan Singh Rawat to the defendant Playwell Impex Private Limited forwarding the brochure of the toys of the plaintiff and therefrom it is evident that the defendant Playwell Impex Private Limited is replicating from the brochure of the plaintiff; (vii) that the defence of the defendants in their written statements that identical toys of other brands were also available would not disentitle the plaintiff from interim injunction - reliance in this regard is placed on Pankaj Goel Vs. Dabur India Ltd. 2008 (38) PTC 49 (Del) and Essel Packaging Limited Vs. Sridhar Narra (2002) 98 DLT 565; (viii) that the plaintiff is entitled to interim injunction under the Common Law (on enquiry whether in the face of statutory provisions there can be Common Law to the contrary and whether not intellectual property rights are statutory rights and not Common Law Rights, reliance was placed on Mohan Lal, Proprietor of Mourya Industries vs. Sona Paint & Hardwares AIR 2013 Delhi 143 (FB)). (ix) reliance was placed on Laxmikant V. Patel Vs. Chetanbhai Shah (2002) 3 SCC 65 on the subject of passing off; and, (x) reliance was placed on Escorts Construction Equipment Ltd. Vs. Action Construction Equipment Pvt. Ltd. 1998 Lawsuit (Del) 811 to contend that commercial exigencies require that copyright/patent laws should be viewed in the context of giving protection and exclusive rights for the purpose of encouraging inventive activities and investments in research and development.

19. I had during the hearing enquired from the counsel for the plaintiff, whether not the manufacture by industrial process of any article is to be necessarily preceded by preparation of a drawing, and if it were to be held that the copyright in the said drawing as an art work under Section 14(c) supra is to be distinct from the design of the article manufactured, and to enjoy protection for the lifetime of the author / creator + 60 years and entitle him to injunct others during the said time from replicating that design, protection whereof under the Designs Act is of maximum 15 years only, why would anyone bother to register the design of an article and not chose to be better off having a copyright which will afford the same protection as registration of a design and for a much longer period.

20. The only answer forthcoming was that only that is eligible for registration as a design which is without preceding art work. Attention in this regard was drawn to para 24 of Microfibres Inc. (DB) supra.

21. The Division Bench in the said paragraph though observed that it is not necessary that in every case a design has to be preceded by a artistic work upon which it is founded and gave the example of a craftsman creating a design without first creating a basic artistic work viz. a weaver creating a design while weaving a shawl but without going into the binding nature thereof, that is not the case here. Here it is the specific case of the plaintiff demonstrated as aforesaid from pages 181 and 182 of its documents that the design in the form of prototype precedes the artistic work and the process of manufacture by industrial process is preceded by the said artistic work.

22. The questions posed by me to the counsel for the plaintiff demonstrates the incongruity of the contention of the counsel for the plaintiff. If protection as artistic work having copyright were to be made available to the drawing prepared/got prepared by plaintiff preceding manufacture of its toys, when the drawing of the plaintiff itself is preceded by ―design and colour theme‖, then it will amount to saying that though the toys of the plaintiff have features of shape, configuration, pattern, composition of colours and further though the said features have been applied to the toys manufactured by industrial process and the said features in the finished article i.e. toys appeal to and are judged solely by the eye, all within the meaning of Section 2(d) supra but still do not constitute a design. Such an interpretation would sound the death knell for the Designs Act.

23. I reiterate that the pleading of the plaintiff and argument of counsel for plaintiff itself shows that the plaintiff while conceptualizing a new toy first prepares a design having features of shape, configuration, pattern, ornament, colour to appeal to children to whom such toys are to be marketed and only thereafter prepares a drawing for industrial manufacture of the said design. The same shows that the art work in which the plaintiff is claiming copyright is a step in manufacture of an article as per the design conceived and cannot stand independently from the design.

24. I had yet further enquired from the counsel for the plaintiff whether not Section 15(2) supra referring to ―copyright in any design‖, is itself indicative of a design also qualifying as a copyright and which copyright ceases as soon as the article to which design has been applied has been reproduced more than 50 times.

25. The response of the counsel for the plaintiff was that since from the definition in Section 2(d) of Designs Act artistic work as defined in Section 2(c) of the Copyright Act has been expressly excluded, a design cannot be a copyright.

26. I am unable to agree. The provisions of Sections 2(c), 14 and 15 of the Copyright Act have to be read harmoniously with Section 2(d) of the Designs Act and cannot be read so as to undo what the Designs Act has been enacted to achieve. I reiterate that for a design to be applied to any article to be re-produced more than 50 times by industrial process drawings will necessarily have to be prepared and the preparation of such drawings in application of a design to any article is but a part of the process of application of the design to an article and the said drawings cannot be treated disjunctively from a design so as, to by vesting a copyright therein, extend the protection to which a design is otherwise entitled to under the Designs Act. Section 15(2) expressly ends the said protection. The principles of interpretation of a ‗Proviso‘ as are sought to be invoked, cannot be applied to Section 15(2) which has to be given full effect to.

27. The counsel for the defendants no.1 to 7 has also rightly clarified that the registration of a design is only in the context of an article and the copyright in the drawings ceases only qua that article though may subsist for other purposes.

28. It is also the contention of the counsel for the defendants no.1 to 7 that the judgment of the High Court of Bombay in Photoquip India Limited supra is per incuriam Section 52(w) brought into the Copyright Act by amendment of the year 2012 and that para 25 of the judgment shows that the Court in that case was not concerned with any furnished product. He has also drawn attention to the judgment dated 24th February, 2012 of the Division Bench of this Court in RFA No.750/2010 titled Kiran Shoes Manufacturers Vs. Registrar of Copyrights observing in para 9 thereof that Section 15(2) of the Copyright Act means that even an artistic work which is commercially exploited in relation to goods in the manner provided under the Designs Act ceases to be a work which would get protection under the Copyright Act and proper course of action in such cases is to get the same registered under the Designs Act. (I am not only bound by the said judgment of Division Bench but was also a member thereof.)

29. The counsel for the defendants no.1 to 7 with respect to the claim of the plaintiff for interim injunction on the basis of Common Law Rights contended that no interim injunction on the basis of Common Law Rights which are to be established by evidence can be granted. It was argued that the toys in which the plaintiff is claiming proprietary rights are generic products and are being marketed by a number of other manufacturers also and all these questions cannot be decided at the interim stage.

30. I tend to agree with the counsel for the defendants no.1 to 7 and after having perused the photographs of some of the toys in which the plaintiff is claiming proprietary rights have asked the counsel for the plaintiff the date/year since when the plaintiff has been manufacturing the said toys, as the toys look familiar, which have been available in the market for ages. The counsel for the plaintiff has generally stated that the said toys are being manufactured by the plaintiff since the year 1992.

31. I am of the view that the articles of toys which indisputably have been manufactured more than 50 times by an industrial process and in which the plaintiff is claiming a bundle of intellectual property rights were/are registrable under the Designs Act and the plaintiff having not done so, the plaintiff at least at this interim stage cannot injunct the defendants from manufacturing, selling and marketing identical toys. It is also worth noticing that the protection of a design is for a maximum period of 15 years and which also as per the plaintiff has lapsed. No protection on the basis of copyright can be given to the plaintiff at this stage as I am of the prima facie opinion that the copyright if any of the plaintiff in the drawings prepared in the course of manufacture of the toys by an industrial process was in the design of the toys and which ceased as soon as the toys as per the said design were manufactured more than 50 times by an industrial process. As far as the Common Law Rights asserted by the plaintiff are concerned, there at the moment is nothing to show that there were no toys of the design in which the plaintiff claims the copyright or that the plaintiff is the author/owner thereof. I am also circumspect though bound by the judgment of the full bench whether, inspite of the law having granted protection for a limited time, any protection under the Common Law can be afforded for longer, nullifying the statute.

32. Recently a Division Bench of this Court in Midas Hygiene Industries Pvt. Ltd. Vs. Sudhir Bhatia (2015) 225 DLT 178 concerned with a challenge to the order of the Copyright Board expunging certain registrations of copyright in artistic work inter alia on the ground that the same was capable of design registration and having not been so registered resulted in cessation of copyright, though in the facts of that case set aside the order of the Copyright Board but otherwise inter alia held (i) that copyright protection is to the original expression of an idea; however the right to exclude others from using the idea is restricted to the specific form, to the collocation devised; (ii) that on the other hand trademarks protect the distinctiveness of a mark, a logo, a symbol and its association with product or service and are badges of origin which act as markers for the consumer to identify the source of the goods or services; (iii) in distinction thereto the copyright and trademark, design rights protect novelty of the design elements (shape, presentation, etc) of an article; (iv) it is significantly based on the visual appeal of the product or article; (v) the rationale of the principle that a copyright does not subsist in a registered design is that someone‘s choice of design registration is a conscious decision to use a underlying work for mass production – the design then reaches through the medium of the product or the article, a wider audience; it has a commercial element; this is possible in the cases of designs of products and articles which are sold widely or for a market; (vi) however that is not always so in the case of an artistic work – typically a painting or a drawing or even a sculpture for instance; (vii) the transformation of a work of art into a design results in the possibility of its protection as a design; (viii) Section 15(1) dictates that if this kind of work is registered as a design, there is no copyright protection; (ix) Section 15(2) on the other hand says that if a work is capable of design registration and is not registered but replicated as a product or article through a design more than 50 times through mechanical process, copyright in that work ceases; (x) that a work of art may answer to the description of subject matter capable of both design and copyright protection; (xi) however copyright in such a work of art can only subsist if it has not been registered as a design or while answering to the description of registrable design it has not been registered as such and not been applied to article which has been reproduced more than 50 times by an industrial process by the owner, licencee or any other person; (xii) the copyright in the work can continue to survive independent of the work‘s mere fitness for design protection.

33. My reasoning recorded above is in consonance with the judgment supra of Division Bench.

34. A Single Bench of this court also recently in Ritika Private Limited Vs. Biba Apparels Private Ltd. MANU/DE/0784/2016 finding that the plaintiff was creating dresses or creating articles by industrial means and process by application of the design or drawing or sketch and had not obtained registration under the Designs Act, summarily dismissed the suit as barred by Section 15(2) of the Copyright Act.

35. The application of the plaintiff for interim relief is thus dismissed and the applications of the defendants for vacation of the ex parte order dated 7th August, 2015 are allowed and the order dated 7th August, 2015 is vacated. IA No.18727/2015 of the defendants for return of the goods is also allowed. The goods seized by the Court Commissioner/s be forthwith released to the defendant Playwell Impex Private Limited.

RAJIV SAHAI ENDLAW, J. JULY 15, 2016 ‗pp‘